Posted on March 2, 2019


DIAMOND v. DIEHR. Opinion of the Court. JusTICE REHNQUIST deliVered the opinion of the Court. We granted certiorari to determine. Engineers James Diehr and Theodore Lutton invented an improved press that cured rubber by controlled heating. The press contained a temperature probe. Citation. Diamond v. Diehr, U.S. , S. Ct. , 67 L. Ed. 2d , U.S. LEXIS 73, U.S.P.Q. (BNA) 1, 49 U.S.L.W. (U.S. Mar. 3, ).

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The starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims. If that method is regarded as an “algorithm” as that term was used in Glottschalk v.

Whether the algorithm was, in fact, daimond or diehd at the time of the claimed invention, as one of the ‘basic tools of scientific and technological work,’ see Gottschalk v. The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate — promptly and repeatedly — the correct curing time in a familiar process. We rejected in Flook the argument that, because all possible uses of the mathematical formula were not preempted, the claim should be eligible for patent protection.

Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas. From the generic formulation, programs may be developed as specific applications.

Following Noll and Chatfield, the Court of Customs and Patent Appeals consistently interpreted Benson to preclude the patenting of a program-related process invention only when the claims, if allowed, would wholly preempt the algorithm itself. In the interval between the two Benson decisions, the Court of Customs and Patent Appeals decided several cases in which it addressed the patentability of computer-related inventions.

The majority acknowledged that the doctrine had originated with decisions of this Court, and that the lower federal courts, including the Court of Customs and Patent Appeals, had consistently adhered to it during the preceding 70 years. Flook, supra, presented a similar situation.

Diamond v. Diehr ruling by US Supreme Court on 3 March – software patents wiki ()

The Court’s decision in this case rests on a misreading of the Diehr and Lutton patent application. Instead, they seek patent protection for a process of curing synthetic rubber. Some of that criticism may stem from a conviction about the merits of the broad underlying policy question; such criticism may be put to one side. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation.

No doubt each may have been motivated by a concern about the ability of the Patent Office to process effectively the flood of applications that would inevitably flow from a decision that computer programs are patentable.


The questions of whether a particular invention meets the “novelty” requirements of 35 U. In my opinion, diamind equally requires rejection of Claim 11, because the pre-solution activity described in that daimond is admittedly a familiar part of the prior art. The method analyzed conventionally obtained data by using well-known equations.

It is noteworthy that the position of the Court of Customs and Patent Appeals in the process patent area had been diiamond with that of the Commissioner of Patents and Trademarks for decades vw to The subject received some scholarly attention prior to All method claims relate to molding of physical articles.

The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. Retrieved from ” http: 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. Respondents filed a patent application claiming invention for a process for molding raw, uncured synthetic rubber into cured precision products.

Deihr order for the dissent idehr reach its conclusion, it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it vx were not novel or “inventive.

All the data is available to the computer upon call, by random access, and the call can be automatic, depending upon the temperature actually involved.

Diamond v. Diehr, 450 U.S. 175 (1981)

Similarly, in Parker v. The claimed invention is a process for molding raw, uncured synthetic rubber into cured precision products. 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. Judge Kirkpatrick, joined by Chief Judge Worley, wrote a vigorous dissent objecting to the majority’s decision to abandon “a rule which is about as solidly established as any rule of the patent law.

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising: A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.

Finally, the Court explained the correct procedure for analyzing a patent claim employing a mathematical algorithm. Benson, supra, Dann v. As I understand the record, however, those issues have already been resolved. It was a decision, and the dissenting opinion was written by Justice Stevensjoined by Justice BrennanJustice Marshalland Justice Blackmun.


For many years, it was believed that Diehr effectively overruled Flookdespite the majority opinion’s avoiding any such statement. Although computer technology seems commonplace today, the first digital computer capable of utilizing stored programs was developed less than 30 years ago. To prospective investors, a patent or the possibility of obtaining one may be the principal element in the decision whether to invest.

Thermometers, spring-loaded doors, and rubber molding presses were all known processes. Gottschalk found that math equations were not patentable.

Thus, the time necessary to raise the deihr temperature to curing temperature is an unpredictable variable.

As we explained when discussing machine patents in Deepsouth Packing Co. Respondents characterized their contribution to the art to reside in the process of constantly measuring the temperature inside the mold and feeding the temperature measurements into a computer that repeatedly recalculates the cure time by use of the mathematical equation and then signals a device to open the press at the proper dieht.

Chakrabarty, supra, at U. He described that standard as “a major and radical shift in this area of the law. Therefore, patent protection could be obtained for new computer programs if the patent claims were drafted in apparatus form.

Diamond v. Diehr

In dissent, Judge Lane, joined by Judge Rich, argued that Benson should diwmond read as a general proscription of the patenting of computer programs regardless of the form of the claims. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result.

In both Benson and Flook, the parties apparently agreed that the inventor’s discovery was properly regarded as an algorithm; the holding that an algorithm was a “law of nature” that could not be. The claims diampnd all uses of the formula in processes “comprising the catalytic chemical conversion of hydrocarbons. For setting off an alarm limit at the appropriate time is surely as important to the safe and efficient operation of a catalytic conversion process as is actuating the mold-opening device in a synthetic rubber curing process.

On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.