Diamond v. Diehr

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Diamond v. Diehr

Supreme Court of the United States

Argued October 14, 1980
Decided March 3, 1981


Full case name:	Diamond, Commissioner of Patents and Trademarks v. Diehr, et al.

Citations:	U.S. ; 101 S. Ct. 1048; 67 L. Ed. 2d 155; 1981 U.S. LEXIS 73; 49 U.S.L.W. 4194; 209 U.S.P.Q. (BNA) 1

Prior history:	Certiorari granted [445 U.S. 926]

Holding

A machine controlled by a computer program was patentable.

Court membership

Chief Justice: Warren E. Burger
Associate Justices: William J. Brennan, Potter Stewart, Byron White, Thurgood Marshall, Harry Blackmun, Lewis Franklin Powell, Jr., William Rehnquist, John Paul Stevens

Case opinions

Majority by: Rehnquist
Joined by: Burger, Stewart, White, Powell
Dissent by: Stevens
Joined by: Blackmun, Brennan, Marshall

Laws applied

35 U.S.C. § 101

Diamond v. Diehr, 450 U.S. 175 (1981)^[1], was a U.S. Supreme Court decision which held that the execution of a process, controlled by running a computer program was patentable. This decision did not make a computer program, by itself, patentable, but the use of it.

This case was significant in the extension of patentability in the USA, because, before this ruling, using an existing algorithm on a computer to control an already used process in a better way could not be patented. Afterwards, it was.

It established the general concept that processes where the only novel part lies in the use of a computer program can be patented as long as they produce a useful result.

While, at that time, it was considered that other requirements for patentability like being technical (a word which is not defined in patent laws and which is not a limitation anymore) have also be met, it was essentially the use of the algorithm on a computer for executing this process which was patented. In essence, the computer program which triggers the opening of the press was patented. Even the used algorithm was known before. In that sense, despite that the computer-controlled process had pass a higher technicality critieria, this ruling could be considered as the introduction of the general granting of software patents. The technicality criteria was lowered later, which subsequently allowed also business method patents.

1 Background
2 The opinion
3 The holding
4 Notes
5 External links

[edit] Background

The inventors, respondents, filed a patent application for a "process for molding raw, uncured synthetic rubber into cured precision products." The process of perfectly curing the synthetic rubber depends on a number of factors including time, temperature and thickness of the mold. Using the Arrhenius equation, ln v=CZ+x, it is possible to calculate exactly when to open the press and to remove the cured, molded rubber. The problem was that there was, at the time, no way to obtain an accurate measure of the temperature without opening the press making the use of the equation impossible.

The invention solved this problem by constantly checking the temperature, and feeding all the values of the Arrhenius equation into a computer. When the calculated time equals the actual time, the machine opens the press automatically.

The patent clerk rejected this invention as unpatentable subject matter under 35 U.S.C. 101. The clerk argued that the steps performed by the computer were unpatentable as a computer program under Gottschalk v. Benson, 409 U.S. 63 (1972). The Patent and Trademark Office Board of Appeals affirmed the rejection. The Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, reversed noting that an otherwise patentable invention does not become unpatentable simply because a computer is involved.

The U.S. Supreme Court granted the petition for certiorari by the Commissioner of Patents and Trademarks to resolve this question.

[edit] The opinion

The court held that an invention which implements or uses a mathematical formula is different from an invention which claims the formula in the abstract. Thus, when the invention as a whole meets the requirements of patentability, the invention satisfies the patentable subject matter requirement.