Diamond v. Diehr
Encyclopedia
Diamond v. Diehr, , was a 1981 U.S. Supreme Court
decision which held that the execution of a physical process, controlled by running a computer program
was patentable
. 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 un-patentable. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions.
s, filed a patent application
for 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
--
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.
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.
1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
, 409 U.S. 63 (1972). The Board of Patent Appeals and Interferences
of the USPTO
affirmed the rejection. The Court of Customs and Patent Appeals
(CCPA), the predecessor to the current 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.
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—that is, it involves "transforming or reducing an article to a different state or thing"—it is patent-eligible, even if it includes a software component.
The 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
, based on Neilson v. Harford. The Diehr Court said, without citation of any supporting authority, that under section 101 the invention had to be considered as a whole.
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
decision which held that the execution of a physical process, controlled by running a computer program
Computer program
A computer program is a sequence of instructions written to perform a specified task with a computer. A computer requires programs to function, typically executing the program's instructions in a central processor. The program has an executable form that the computer can use directly to execute...
was patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
. 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 un-patentable. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions.
The problem and its solution
The inventors, respondentRespondent
A respondent is a person who is called upon to issue a response to a communication made by another. In legal usage, this specifically refers to the defendant in a legal proceeding commenced by a petition, or to an appellee, or the opposing party, in an appeal of a decision by an initial fact-finder...
s, filed a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
for a "[process] for molding raw, uncured synthetic rubber
Synthetic rubber
Synthetic rubber is is any type of artificial elastomer, invariably a polymer. An elastomer is a material with the mechanical property that it can undergo much more elastic deformation under stress than most materials and still return to its previous size without permanent deformation...
into cured precision products." The process of curing synthetic rubber depends on a number of factors including time
Time
Time is a part of the measuring system used to sequence events, to compare the durations of events and the intervals between them, and to quantify rates of change such as the motions of objects....
, temperature
Temperature
Temperature is a physical property of matter that quantitatively expresses the common notions of hot and cold. Objects of low temperature are cold, while various degrees of higher temperatures are referred to as warm or hot...
and thickness of the mold
Mold
Molds are fungi that grow in the form of multicellular filaments called hyphae. Molds are not considered to be microbes but microscopic fungi that grow as single cells called yeasts...
. Using the Arrhenius equation
Arrhenius equation
The Arrhenius equation is a simple, but remarkably accurate, formula for the temperature dependence of the reaction rate constant, and therefore, rate of a chemical reaction. The equation was first proposed by the Dutch chemist J. H. van 't Hoff in 1884; five years later in 1889, the Swedish...
--
, which may be restated as ln(v)=CZ+x --
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.
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:1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
- 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,
- initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
- constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
- constantly providing the computer with the temperature (Z),
- repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is
-
-
- ln(v)=CZ+x
- where v is the total required cure time,
- repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
- opening the press automatically when a said comparison indicates completion of curing.
-
Proceedings before Office and CCPA
The patent examiner rejected this invention as unpatentable subject matter under 35 U.S.C. 101. He argued that the steps performed by the computer were unpatentable as a computer program under Gottschalk v. BensonGottschalk v. Benson
Gottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
, 409 U.S. 63 (1972). The Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
of the USPTO
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
affirmed the rejection. The Court of Customs and Patent Appeals
United States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
(CCPA), the predecessor to the current Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
, reversed, noting that an otherwise patentable invention did not become unpatentable simply because a computer
Computer
A computer is a programmable machine designed to sequentially and automatically carry out a sequence of arithmetic or logical operations. The particular sequence of operations can be changed readily, allowing the computer to solve more than one kind of problem...
was involved.
The U.S. Supreme Court granted the petition for certiorari
Certiorari
Certiorari is a type of writ seeking judicial review, recognized in U.S., Roman, English, Philippine, and other law. Certiorari is the present passive infinitive of the Latin certiorare...
by the Commissioner of Patents and Trademarks to resolve this question.
The Supreme Court's opinion
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 algorithmAlgorithm
In mathematics and computer science, an algorithm is an effective method expressed as a finite list of well-defined instructions for calculating a function. Algorithms are used for calculation, data processing, and automated reasoning...
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—that is, it involves "transforming or reducing an article to a different state or thing"—it is patent-eligible, even if it includes a software component.
The 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
Analytic dissection
Analytic dissection is a concept in U.S. copyright law analysis of computer software. Analytic dissection is a tool for determining whether a work accused of copyright infringement is substantially similar to a copyright-protected work....
, based on Neilson v. Harford. The Diehr Court said, without citation of any supporting authority, that under section 101 the invention had to be considered as a whole.
The patent
The patent that issued after the decision was , "Direct digital control of rubber molding presses." The patent includes 11 method claims, three of which are independent. All method claims relate to molding of physical articles.See also
- Gottschalk v. BensonGottschalk v. BensonGottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
, 409 U.S. 63 (1972).
- Parker v. FlookParker v. FlookParker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
, 437 U.S. 584 (1978).
- Bilski v. KapposBilski v. KapposBilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 , was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an...
, 561 U.S. ___ (2010).
- Research Corp. Technologies v. Microsoft Corp., No. 2010-1037 (Fed. Cir., Dec. 8, 2010).
External links
- Audio recording of the oral argumentOral argumentOral arguments are spoken presentations to a judge or appellate court by a lawyer of the legal reasons why they should prevail. Oral argument at the appellate level accompanies written briefs, which also advance the argument of each party in the legal dispute...
- Opinion of the Court