View source for Diamond v. Diehr

{{Use mdy dates|date=September 2023}}
{{Infobox SCOTUS case
  |Litigants=Diamond v. Diehr
  |ArgueDate=October 14
  |ArgueYear=1980
  |DecideDate=March 3
  |DecideYear=1981
  |FullName=Diamond, Commissioner of Patents and Trademarks v. Diehr, et al.
  |USVol=450
  |USPage=175
  |ParallelCitations=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.]] ([[Bloomberg BNA|BNA]]) 1
  |Prior=Certiorari granted, {{ussc|445|926|el=no}}
  |Subsequent=
  |Holding=A machine controlled by a computer program was patentable.
  |Majority=Rehnquist
  |JoinMajority=Burger, Stewart, White, Powell
  |Dissent=Stevens
  |JoinDissent=Brennan, Marshall, Blackmun
  |LawsApplied={{UnitedStatesCode|35|101}}
}}

'''''Diamond v. Diehr''''', 450 U.S. 175 (1981), was a [[Supreme Court of the United States|United States Supreme Court]] decision which held that controlling the execution of a physical process, by running a computer program did not preclude [[patentability]] of the invention as a whole.<ref>{{ussc|name=Diamond v. Diehr|450|175|1981}}.</ref><ref>{{cite web | url=https://scholar.google.com/scholar_case?case=18347506438226183982&q=450+U.S.+175&hl=en&as_sdt=40000003 | title=Diamond v. Diehr }}</ref> The high court reiterated its earlier holdings that mathematical formulas in the abstract could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible. ''Diehr'' was the third member of a trilogy of Supreme Court decisions on the [[Patentable subject matter in the United States|patent-eligibility]] of computer software related inventions.<ref>The other two cases were {{ussc|name=Gottschalk v. Benson|volume=409|page=63|pin=|year=1972}}, and {{ussc|name=Parker v. Flook|volume=437|page=584|pin=|year=1978}}. The Supreme Court's most recent decisions on patent eligibility of software-related inventions are {{ussc|name=Bilski v. Kappos|volume=561|page=593|pin=|year=2010}} and {{ussc|name=Alice v. CLS Bank|volume=573|year=2014|docket=13-298}}, both of which are cases concerning business methods.</ref>

== Background ==

===The problem and its solution===
The [[patent application]] in question US05/602,463<ref>{{cite web | url=https://patents.google.com/patent/US4344142A/en?oq=US4344142 | title=Direct digital control of rubber molding presses }}</ref> was filed on behalf of inventors Diehr and Lutton in 1975. The application claimed a "[process] for molding raw, uncured [[synthetic rubber]] into cured precision products." The process of curing synthetic rubber depends on a number of factors including time, temperature and thickness of the mold.  Using the [[Arrhenius equation]]

<blockquote>
<math> k = A e^{{-E_a}/{RT}}</math><br>
which may be restated as ''ln''(''v'') = ''CZ'' + ''x'' 
</blockquote>

it is possible to calculate when to open the press and to remove the cured, molded rubber.  The problem was that there was, at the time the invention was made, no disclosed way to obtain an accurate measure of the temperature without opening the press. In the traditional method the temperature of the mold press, which was apparently set at a fixed temperature and was controlled by thermostat, fluctuated due to the opening and closing of the press.

The invention solved this problem by using embedded thermocouples to constantly check the temperature, and then feeding the measured values into a computer. The computer then used the Arrhenius equation to calculate when sufficient energy had been absorbed so that the molding machine should open the press.

===The claims===

Independent claim 1 of the allowed patent is representative. It provides:
<blockquote>1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
{{block indent|left=1|text={{Hanging indent |text=providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,}}
{{Hanging indent |text=initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,}}
{{Hanging indent |text=constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,}}
{{Hanging indent |text=constantly providing the computer with the temperature (Z),}}
{{Hanging indent |text=repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is}}
{{Hanging indent |text=ln(v)=CZ+x}}
{{Hanging indent |text=where v is the total required cure time,}}
{{Hanging indent |text=repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and}}
{{Hanging indent |text=opening the press automatically when a said comparison indicates equivalence.<ref>''Diehr'', 450 U.S. at 177, n. 1.</ref><ref name=patent />}}}}</blockquote>

===Proceedings before Office and CCPA===

The [[patent examiner]] rejected this invention as unpatentable subject matter under 35 U.S.C. 101.<ref>{{USC|35|101}}.</ref> He argued that the steps performed by the computer were unpatentable as a computer program under ''[[Gottschalk v. Benson]]''.<ref>{{ussc|name=Gottschalk v. Benson|volume=409|page=63|pin=|year=1972}}</ref>  The [[Board of Patent Appeals and Interferences]] of the [[United States Patent and Trademark Office|USPTO]] affirmed the rejection.  The [[United States Court of Customs and Patent Appeals|Court of Customs and Patent Appeals]] (CCPA), the predecessor to the current [[United States Court of Appeals for the Federal Circuit|Court of Appeals for the Federal Circuit]], reversed, noting that an otherwise patentable invention did not become unpatentable simply because a computer was involved.

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

== The Supreme Court's opinion ==
Source:<ref>{{cite web | url=https://supreme.justia.com/cases/federal/us/450/175/ | title=Diamond v. Diehr, 450 U.S. 175 (1981) }}</ref>

The Court repeated its earlier holding that mathematical formulas in the abstract are not eligible for patent protection. But it also held that a physical machine or process which makes use of a mathematical [[algorithm]] is different from an invention which claims the algorithm, as such, in the abstract.  Thus, if the invention as a whole meets the requirements of patentability&mdash;that is, it involves "transforming or reducing an article to a different state or thing"&mdash;it is patent-eligible, even if it includes a software component.

The CCPA's reversal of the patent rejection was affirmed. But the Court carefully avoided overruling ''Benson'' or ''Flook''. It did criticize the analytic methodology of ''Flook'', however, by challenging its use of [[analytic dissection]], which the ''Flook'' Court based on ''[[Neilson v. Harford]]''. The ''Diehr'' Court cited the Senate Report and the CCPA Decision in In re Bergy, 596 F.2d 952, 961 (CCPA 1979) to hold that (a) claims must be considered "as a whole," just as they are for all other patentability determinations, without extracting a "gist" or "point of novelty" to be considered in isolation, and (b) section 101 governs ''the kind of subject matter'' that can be patented, while concerns for novelty and non-obviousness are considered separately under sections 102 and 103:<ref>''Diehr'', 450 U.S. at 188-189.</ref><ref>Section 103, which concerns obviousness, states that the obviousness or non-obviousness of what is claimed to be an invention must be determined by considering whether "the differences between the subject matter sought to be patented and the prior art are such that the subject matter ''as a whole would'' have been obvious at the time the invention was made." (Emphasis supplied.) No comparable language is found in section 101, which has retained substantially the same form since the first patent act in 1790.</ref>

:In determining the eligibility of respondents' claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.

:It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.”

==The patent==

The patent that issued after the decision was U.S. Patent 4,344,142, "Direct digital control of rubber molding presses."<ref name=patent>{{US patent|4344142}}.</ref> The patent includes 11 method claims, three of which are independent. All method claims relate to molding of physical articles. The only diagrams in the patent are flowcharts. There are no diagrams of machinery. As the dissenting opinion in ''Diehr'' noted, the patent specification "teaches nothing about the chemistry of the synthetic rubber-curing process, nothing about the raw materials to be used in curing synthetic rubber, nothing about the equipment to be used in the process, and nothing about the significance or effect of any process variable such as temperature, curing time, particular compositions of material, or mold configurations."<ref>''Diehr'', 450 U.S. at 206.</ref>

==Subsequent developments==

For many years, it was believed that ''Diehr'' effectively overruled ''Flook'', despite the majority opinion's avoiding any such statement.<ref>''See'' ''Diehr'', 450 U.S. at 209-215 (Stevens, J., dissenting, contending that the fact patterns in both cases are indistinguishable).</ref>

In 2012, in ''[[Mayo v. Prometheus]]'',<ref>{{ussc|name=Mayo v. Prometheus|volume=566|page=66|pin=|year=2012}}.</ref> the unanimous opinion of the Supreme Court interpreted ''Diehr'' so as to harmonize it with ''Flook''. The Court "found the overall process patent eligible because of the way the additional steps of the process [besides the equation] integrated the equation into the process as a whole."<ref>''Mayo'', 132 S. Ct. at 1298.</ref> The Court "nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional."<ref name=Mayo1299>''Mayo'', 132 S. Ct. at 1299.</ref> "These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula."<ref name=Mayo1299/>

The Court interpreted ''Diehr'' slightly differently in ''[[Alice v. CLS Bank]]'', another unanimous opinion, but without taking issue with the ''Mayo'' interpretation. The ''Alice'' Court said:

<blockquote>
In ''Diehr'', by contrast [with ''Flook''], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention in ''Diehr'' used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula." ''Mayo'', ''supra'', at ___, 132 S.Ct., at 1299. In other words, the claims in ''Diehr'' were patent eligible because they improved an existing technological process, not because they were implemented on a computer.<ref>134 S. Ct. at 2358 (citations omitted).</ref></blockquote>

These two opinions state the current Supreme Court interpretation of what the ''Diehr'' case holds.

==See also==
* ''[[Gottschalk v. Benson]]'', 409 U.S. 63 (1972).
* ''[[Parker v. Flook]]'', 437 U.S. 584 (1978).
* ''[[Bilski v. Kappos]]'', 561 U.S. 593 (2010).

==References==
{{BBstyle}}
{{Reflist}}

==External links==
* {{caselaw source
 | case = ''Diamond v. Diehr'', {{Ussc|450|175|1981|el=no}}
 | cornell = https://www.law.cornell.edu/supremecourt/text/450/175
 | courtlistener =https://www.courtlistener.com/opinion/110422/diamond-v-diehr/
 | findlaw = https://caselaw.findlaw.com/us-supreme-court/450/175.html
 | googlescholar = https://scholar.google.com/scholar_case?case=18347506438226183982
 | justia =https://supreme.justia.com/cases/federal/us/450/175/case.html
 | loc =http://cdn.loc.gov/service/ll/usrep/usrep450/usrep450175/usrep450175.pdf
 | oyez =https://www.oyez.org/cases/1980/79-1112
 }}
*[https://www.repository.law.indiana.edu/cgi/viewcontent.cgi?article=2233&context=ilj The Patentability of Computer Programs]

[[Category:Software patent case law]]
[[Category:United States computer case law]]
[[Category:United States patent case law]]
[[Category:United States Supreme Court cases]]
[[Category:United States Supreme Court cases of the Burger Court]]
[[Category:1981 in United States case law]]