Diamond, Commissioner of Patents v. Diehr
United States Supreme Court
450 U.S. 175 (1981)
Justice Rehnquist.
We granted certiorari to determine whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U.S.C. § 101.
The claimed invention is a process for molding raw, uncured synthetic rubber into cured precision products. The process uses a mold for precisely shaping the uncured material under heat and pressure and then curing the synthetic rubber in the mold so that the product will retain its shape and be functionally operative after the molding is completed. (A "cure" is obtained by mixing curing agents into the uncured polymer in advance of molding and then applying heat over a period of time. If the synthetic rubber is cured for the right length of time at the right temperature, it becomes a usable product.)
Respondents claim that their process ensures the production of molded articles which are properly cured. Achieving the perfect cure depends upon several factors including the thickness of the article to be molded, the temperature of the molding process, and the amount of time that the article is allowed to remain in the press. It is possible using well-known time, temperature, and cure relationships to calculate by means of the Arrhenius equation when to open the press and remove the cured product. (The equation is named after its discoverer Svante Arrhenius and has long been used to calculate the cure time in rubber molding presses. The equation is ln v = CZ + x, where ln v is the natural logarithm of v, the total required cure time, Z is the temperature in the mold, and C and x are empirical constants.)
Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time. Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in someinstances to overcuring the rubber, and in other instances to underestimating that time and undercuring the product.
Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measure ments are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation. When the recalculated time equals the actual time that has elapsed since the press was closed, the computer signals a device to open the press. According
to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.
The patent examiner rejected the respondents' claims on the sole ground that they were drawn to nonstatutory subject matter under 35 U.S.C. § 101.* He determined that those steps in respondents' claims that are carried out by a computer under control of a stored program constituted nonstatutory subject matter under this Court's decision in Gottschalk v. Benson. The remaining steps installing rubber in the press and the subsequent closing of the press were "conventional and necessary to the process and cannot be the basis of patentability." The examiner concluded that respondents' claims defined and sought protection of a computer program for operating a rubber-molding press.
| * Claim 1 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 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 calculating in the computer at frequent intervals during each cure, 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 said frequent intervals during the cure each said calculation of the total required cure time and said elapsed time; and opening the press automatically when a said comparison indicates equivalence. Claim 11 is similar, but the preamble is directed to a method of manufacturing precision molded articles from rubber compounds in an openable rubber molding press having a heated mold. |
The PTO Board of Appeals agreed with the examiner, but the CCPA reversed. The court noted that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondent's claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had risen in the molding of rubber products.
The Commissioner of Patents and Trademarks sought certiorari, arguing that the decision of the CCPA was inconsistent with prior decisions of this Court. Because of the importance of the question presented, we granted the writ.
Last Term in Diamond v. Chakrabarty, 447 U.S. 303 (1980), this Court discussed the historical purposes of the patent laws and in particular 35 U.S.C. § 101. As in Chakrabarty, we must here construe 35 U.S.C. § 101 which provides:
Whoever, invents or discovers any new and useful process, machine manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
In cases of statutory construction, we begin with the language of the statute. Unless otherwise defined, "words will be interpreted as taking their ordinary, contemporary, common meaning," and, in dealing with the patent laws, we have more than once cautioned that courts should not read into the patent laws limitations and conditions which the legislature has not expressed.
The Patent Act of 1793 defined statutory subject matter as "any new and useful art, machine, manufacture or composition of matter, or any new or useful improvement [thereof]." [Ed. Note: The 1790 Act, 1 Stat. 109, similarly defined statutory subject matter with the exception of compositions of matter.] Not until the patent laws were recodified in 1952 did Congress replace the word "art" with the word "process." It is that latter word which we confront today, and in order to determine its meaning we may not be unmindful of the Committee Reports accompanying the 1952 Act which inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man."
Although the term "process" was not added to 35 U.S.C. § 101 until 1952 a process has historically enjoyed patent protection because it was considered a form of "art" as that term was used in the 1793 Act. In defining the nature of a patentable process, the Court stated:
That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suita ble 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. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence. [Cochrane v. Deener, 94 U.S. 780 (1877).]
Analysis of the eligibility of a claim of patent protection for a "process" did not change with the addition of that term to § 101. Recently, in Gottschalk v. Benson, we repeated the above definition recited in Cochrane v. Deener, adding: "Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."
Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter. That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents' claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.
Our conclusion regarding respondents' claims is not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer are used. This Court has undoubtedly recognized limits to § 101 and every discovery is not embraced within the statutory terms. Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas. "An idea of itself is not patentable," Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498 (1874). "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." LeRoy v. Tatham, 14 How. 156 (1853). Only last Term, we explained:
A new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E = mc2; nor could Newton have patented the law of gravity. Such discoveries are "manifestations of... nature, free to all men and reserved exclusively to none." [Diamond v. Chakrabarty.]
Our recent holdings in Gottschalk v. Benson, and Parker v. Flook, both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary-coded decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a general purpose digital computer. We defined "algorithm" as a "procedure for solving a given type of mathematical problem," and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.*
| * The term "algorithm" is subject to a variety of definitions. The petitioner defines the term to mean:
1. A fixed step-by-step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps. 2. A defined process of set of rules that leads [sic] and assures development of a desired output from a given input. A sequence of formulas and/or algebraic/logical steps to calculate or determine a given task; processing rules. This definition is significantly broader than the definition this Court employed in Benson and Flook. Our previous decisions regarding the patentability of "algorithms" are necessarily limited to the more narrow definition employed by the Court, and we do not pass judgment on whether a process falling outside the definition previously used by this Court, but within the definition offered by the petitioner, would be patentable subject matter. |
Flook presented a similar situation. The claims were drawn to a method for computing an "alarm limit." An "alarm limit" is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, nor did it purport "to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit."
In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a "computer" to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of "overcuring" or "undercuring," the process as a whole does not thereby become unpatentable subject matter.
Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Benson, we noted: "It is said that the decision precludes a patent for any program servicing a computer. We do not so hold." Similarly, in Flook, we stated that "a process is not unpatentable simply because it
contains a law of nature or a mathematical algorithm." It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. As Justice Stone explained four decades ago: "While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." Mackay Radio & Telegraph Co. v. Radio of America, 306 U.S. 86 (1939).
We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by § 101.
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. § 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 legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report stated:
§ 101 sets forth the subject matter that can be patented, "subject to the conditions and requirements of this title." The conditions under which a patent may be obtained follow, and § 102 covers the conditions relating to novelty.
It is later stated in the same Report:
§ 102, in general, may be said to describe the statutory novelty required for patentability, and includes, in effect, an amplification and definition of "new" in § 101.
Finally, it is stated in the "Revision Notes":
The corresponding section of [the] existing statute is split into two sections, § 101 relating to the subject matter for which patents may be obtained, and § 102 defining statutory novelty and stating other conditions for patentability.
In this case, it may later be determined that the respondents' process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under § 102 or nonobviousness under § 103. A rejection on either of these grounds does not affect the determination that respondents' claims recited subject matter which was eligible for patent protection under § 101.
We have before us today only the question of whether respondents' claims fall within the § 101 categories of possibly patentable subject matter. We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Benson, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Flook. Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.
On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents' claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the CCPA.
Justice Stevens, with whom Justice Brennan, Justice Marshall, and Justice Blackmun join, dissenting.
The starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered. The Court's decision in this case rests on a misreading of the patent application. Moreover, the Court has compounded its error by ignoring the critical distinction between the character of the subject matter that the inventor claims to be novel the § 101 issue -- and the question whether that subject matter is in fact novel -- the § 102 issue.
[§ I of the dissent is a review of the decisions of the CCPA following the Supreme Court's reversals of the CCPA's decisions in Benson and Flook. The dissent's point is that the CCPA persistently refused to pay any attention to the decisions of the Supreme Court, distinguishing them on flimsy grounds and indicating a view that the Supreme Court simply could not understand the applicable patent law. The dissent's review concludes:]
In general, Flook was not enthusiastically received by the CCPA. In In re Bergy, 596 F.2d 952 (CCPA 1979), the majority engaged in an extensive criticism of Flook, concluding that this Court had erroneously commingled "distinct statutory provisions which are conceptually unrelated."* In subsequent cases, the court construed Flook as resting on nothing more than the way in which the patent claims had been drafted, and it expressly declined to use the method of claim analysis spelled out in that decision. The CCPA has taken the position that, if an application is drafted in a way that discloses an entire process as [if] novel, it defines patentable subject matter even if the only novel element that the inventor claims to have discovered is a new computer program.
The court interpreted Flook in this manner in its opinion in this case. In my judgment, this reading of Flook although entirely consistent with the lower court's expansive approach to § 101 during the past 12 years trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions.
| * The CCPA suggested that the cause of this Court's error was the argument presented by the Solicitor General. According to the majority, the Solicitor General's briefs "badly, and with a seeming sense of purpose" confused the statutory requirements [of §§ 101 and 103]. The CCPA went on to describe part of the Solicitor General's argument in Flook as "subversive nonsense." |
As I stated at the outset, the starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered. Indeed, the outcome of such litigation is often determined by the judge's understanding of the patent application. This is such a case.
In the first sentence of its opinion, the Court states the question presented as "whether a process for curing synthetic rubber...is patentable subject matter." Of course, that question was effectively answered many years ago when Charles Goodyear obtained his patent on the vulcanization process. This patent application, however, 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. In short, Diehr does not claim to have discovered anything new about the process for curing synthetic rubber.
As the Court reads the claims in the patent application, the inventors' discovery is a method of constantly measuring the actual temperature inside a rubber molding press. As I read the claims, their discovery is an improved method of calculating the time that the mold should remain closed during the curing process. If the Court's reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.
There are three reasons why I cannot accept the Court's conclusion that Diehr claims to have discovered a new method of constantly measuring the temperature inside a mold.
First, there is not a word in the patent application that suggests that there is anything unusual about the temperature reading devices used in this process or indeed that any particular species of temperature-reading device should be used in it.
Second, since devices for constantly measuring actual temperatures -- on a back porch, for example -- have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a "process of constantly measuring the actual temperature" had just been discovered.
Finally, the PTO Board of Appeals expressly found that "the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical formula used to control the mold heater and the automatic opening of the press." This finding was not disturbed by the CCPA and is clearly correct.
A fair reading of the entire patent application, as well as the specific claims, makes it perfectly clear that what Diehr claims to have discovered is a method of using a digital computer to determine the amount of time that a rubber molding press should remain closed during the synthetic rubber-curing process. There is no suggestion that there is any thing novel in the instrumentation of the mold, in actuating a timer when the press is closed, or in automatically opening the press when the computed time expires. Nor does the application suggest that Diehr has discovered anything about the temperatures in the mold or the amount of curing time that will produce the best cure. What Diehr claims to have discovered, in essence, is a method of updating the original estimated curing time by repetitively recalculating that time pursuant to a well-known mathematical formula in response to variations in temperature within the mold. Their method of updating the curing time calculation is strikingly reminiscent of the method of updating alarm limits that Flook sought to patent.
Flook involved the use of a digital computer in connection with a catalytic conversion process. During the conversion process, variables such as temperature, pressure, and flow rates were constantly monitored and fed into the computer; in this case, temperature in the mold is the variable that is monitored and fed into the computer. In Flook, the digital computer repetitively recalculated the "alarm limit" a number that might signal the need to terminate or modify the catalytic conversion process; in this case, the digital computer repetitively recalculates the correct curing time a number that signals the time when the synthetic rubber molding press should open.
The essence of the claimed discovery in both cases was an algorithm that could be programmed on a digital computer. In Flook, the algorithm made use of multiple process variables; in this case, it makes use of only one. In Flook, the algorithm was expressed in a newly developed mathematical formula; in this case, the algorithm makes use of a well-known mathematical formula. Manifestly, neither of these differences can explain today's holding. What I believe does explain today's holding is a misunderstanding of the applicants' claimed invention and a failure to recognize the critical difference between the "discovery" requirement in § 101 and the "novelty" requirement in § 102.
The Court misapplies Flook because, like the CCPA, it fails to understand or completely disregards the distinction between the subject matter of what the inventor claims to have discovered the § 101 issue and the question whether that claimed discovery is in fact novel -- the § 102 issue. If there is not even a claim that anything constituting patentable subject matter has been discovered, there is no occasion to address the novelty issue. Or, as was true in Flook, if the only concept that the inventor claims to have discovered is not patentable subject matter, § 101 requires that the application be rejected without reaching any issue under § 102; for it is irrelevant that unpatentable subject matter in that case a formula for updating alarm limits may in fact be novel.
Proper analysis, therefore, must start with an understanding of what the inventor claims to have discovered or phrased somewhat differently what he considers his inventive concept to be. It seems clear to me that Diehr claims 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. In the § 101 analysis, we must assume that the sequence of steps in
this programming method is novel, unobvious, and useful. The threshold question of whether such a method is patentable subject matter remains.
If that method is regarded as an "algorithm" as that term was used in Benson and in Flook, and if no other inventive concept is disclosed in the patent application, the question must be answered in the negative. 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 patented therefore determined that those discoveries were not patentable processes within the meaning of § 101.
As the Court recognizes today, Flook also rejected the argument that patent protection was available if the inventor did not claim a monopoly on every conceivable use of the algorithm but instead limited his claims by describing a specific post solution activity -- in that case, setting off an alarm in a catalytic conversion process. In its effort to distinguish Flook from the instant case, the Court characterizes that post solution activity as "insignificant," or as merely "token" activity. As a practical matter, however, the post solution activity described in the Flook application was no less significant than the automatic opening of the curing mold involved in this case. For setting off [sic] 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. In both cases, the post solution activity is a significant part of the industrial process. But in neither case should that activity have any legal significance because it does not constitute a part of the inventive concept that the applicants claimed to have discovered.
In Benson, we held that a program for the solution by a digital computer of a mathematical problem was not a patentable process within the meaning of § 101. In Flook, we further held that such a computer program could not be transformed into a patentable process by the addition of post solution activity that was not claimed to be novel. That holding plainly requires the rejection of claims 1 and 2 of the Diehr application. In my opinion, it equally requires rejection of claim 11 because the pre-solution activity described in that claim is admittedly a familiar part of the prior art. Even the Court does not suggest that the computer program developed by Diehr is a patentable discovery.
Accordingly, if we treat the program as though it were a familiar part of the prior art as well-established precedent requires it is absolutely clear that their application contains no claim of patentable invention. The application was therefore properly rejected under § 101 by the Patent Office and the Board of Appeals.
The broad question whether computer programs should be given patent protection involves policy considerations that this Court is not authorized to address. As the numerous briefs amicus curiae filed in Benson, Johnston, and Flook, and this case demonstrate, that question is not only difficult and important, but apparently also one that may be affected by institutional bias. In each of those cases, the spokesmen for the
organized patent bar have uniformly favored patentability and industry representatives have taken positions properly motivated by their economic self-interest. Notwithstanding fervent argument that patent protection is essential for the growth of the software industry, commentators have noted that "this industry is growing by leaps and bounds without it." In addition, even some commentators who believe that legal protection for computer programs is
desirable have expressed doubts that the present patent system can provide the needed protection.
Within the Federal Government, patterns of decision have also emerged. Gottschalk, Dann, Parker, and Diamond were not ordinary litigants each was serving as Commissioner of Patents and Trademarks when he opposed the availability of patent protection for a program-related invention. No doubt each may have been motivated by a concern about the ability of the PTO to process effectively the flood of applications that would inevitably flow from a decision that computer programs are patentable. The consistent concern evidenced by the Commissioner of the PTO and by the Board of Appeals of the PTO has not been shared by the CCPA, which reversed the Board in Benson, Johnston, and Flook, and was in turn reversed by this Court in each of those cases.
Scholars have been critical of the work of both tribunals. 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. Other criticism, however, identifies two concerns to which federal judges have a duty to respond. First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an "algorithm" within the "law of nature" category of unpatentable subject matter has given rise to the concern that almost any process might be so described and therefore held unpatentable.
In my judgment, today's decision will aggravate the first concern and will not adequately allay the second. I believe both concerns would be better addressed by (1) an unequivocal holding that no program-related invention is a patentable process under § 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term "algorithm" as used in this case, as in Benson and Flook, is synonymous with the term "computer program." Because the invention claimed in the patent application at issue in this case makes no contribution to the art that is not entirely dependent upon the utilization of a computer in a familiar process, I would reverse the decision of the CCPA.
Notes
| Supreme Court Oral Argument |
1. How do the legal tests that the Court prescribes in
Flook and Diehr differ from one another? Does the Diehr dissent's emphasis on what the inventor claims or purports to have invented (essentially, a § 112 ¶ 2 issue) have a parallel in the Flook majority opinion. Does the Diehr majority opinion meet head-on this argument of the dissent?
2. Compare the approach to analytic dissection taken in patent and copyright law. Explain why analytic dissection is proper in avoiding protection of ideas under copyright law and inappropriate in avoiding protection of ideas under patent law.
Now, compare these comparisons: Altai:Bando = Flook:Diehr, where Altai means the opinion of the Second Circuit in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992); Bando means the opinion of the Tenth Circuit in Gates Rubber Co. v. Bando Chem. Indus. Ltd., 9 F.3d 823 (10th Cir. 1993); and Flook and Diehr mean those opinions of the Supreme Court. Compare as to the issue of dissection out of nonstatutory subject matter before (versus after) doing the evaluation of infringement or patentability. Is there a common deep structure?
3. Diehr concededly did not invent the Arrhenius equation. Apparently, Diehr did not invent putting thermocouples inside rubber molds to measure the temperature. According to the Court, Diehr characterized the contribution he made to the useful arts as constantly measuring the temperature inside the mold, feeding the measurements to a computer, having the computer repeatedly recalculate the cure time by use of the Arrhenius equation, and having the computer signal a device to open the mold when elapsed time equals calculated time. Presumably, this is the rubber industry's high-tech version of putting a temperature probe (i.e., meat thermometer) into a slab of beef, putting the slab into the oven, and taking the roast beef out of the oven when the probe says it is medium rare.
In the Case of the Meat Slab, if you dissect the algorithm out would what remains be a patentable invention?
4. As a matter of statutory construction of § 101, the Flook Court said that you must dissect algorithms out of the claim and then apply one version of the McFunky test. Three years later, the Diehr Court says that you must not dissect algorithms out of the claim; you must leave them in and apply a slightly different version of what it says is the McFunky test. On the facts of the Diehr case, the two approaches lead to diametrically opposite results. Among the Justices, who flipped? What happened to the jurisprudential rule that on matters of statutory construction you follow stare decisis and leave it up to Congress to change the statute if it doesn't like the interpretation?
5. Who is missing the other's point on whether, in considering the patentability of algorithm-related inventions, one should consider the novelty of the applicant's addition to the prior art? The majority? The dissent? Both? Neither?
6. At one point, Justice Stevens says that it seems clear to him that the applicants (collectively "Diehr") claim "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." Should we take that statement literally? Do you suppose that Diehr said that in so many words somewhere in the record? Do you suppose that Diehr even personally addressed the programming (coding) needed, as distinguished from conceiving the systems-level features or even just the overall concept of implementing the idea of continually feeding mold-thermocouple information to a computer and using the Arrhenius equation to permit a comparison of proper cure time and actual elapsed time?
Elsewhere, Justice Stevens says:
As the Court reads the claims in the patent application, the inventors' discovery is a method of constantly measuring the actual temperature inside a rubber molding press. As I read the claims, their discovery is an improved method of calculating the time that the mold should remain closed during the curing process. If the Court's reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.
Which of the above alternatives is really the inventors' discovery? Could the discovery be both? Neither? Consider my assertion that I have in this bag a fruit whose identity I will not disclose to you for the moment. I can appropriately characterize it in any of the following ways: a fruit, a citrus fruit, a round fruit, an orange-colored fruit, seeded edible vegetable matter. Can this case present such a situation?
7. Perhaps the foregoing approach is unrealistic. What do you suppose happened here? If we travel in our time machine to observe Diehr in the act of inventing whatever was invented here, what do we see? Consider this scenario:
Diehr is thinking about the uncertain yield from curing rubber. He knows of Arrhenius; he knows about putting thermocouples inside the rubber mold and reading them from time to time; he knows how to use such a temperature reading together with the Arrhenius equation and a pocket watch; he knows how to throw a switch to open a mold. He also knows about computers.
"Aha!," he says to himself. "Why not let the computer do that?" Diehr's idea is to computerize the inefficient method in which the Arrhenius equation was formerly used in the rubber industry. From there on, it is a lead-pipe cinch. Inexplicably, nobody ever got to there before; so nobody ever got to the lead-pipe cinch part before, either. Is that an invention? Stranger acts of "Aha!" have been held inventions before. See Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) (inventor recognized bottleneck problem in paper-pulp slurry flow and then tilted feed trough to make paper slurry in it feed faster at bottleneck point; held inventive).
8. Suppose Diehr did not have a computer. Let us use the time machine. It is 1935, and this notional Diehr has all of the above-described knowledge except for the as-yet uninvented digital computer. He also has a girl friend who has an idiot savant brother. The brother can simultaneously solve a dozen integral or exponential equations in his head at one time, in a second or two; he is also able to read temperatures from dial thermometers; but he cannot tie his shoe laces properly, let alone hold down a job.
Diehr's girl friend is unwilling to marry Diehr, because she is devoted to her idiot savant brother, feels that she must take care of him (she promised that to her dear, departed mother on her mother's death bed), and feels that she cannot impose this burden on Diehr, although he swears that he will cheerfully assume it, Depression in United States notwithstanding. If only Diehr could think of a way to get the brother gainfully employed (in the depths of the Depression) in a way that would satisfy the sister!
Aha! You have guessed it, and so did Diehr, who shortly after that married the sister and lived happily for a time thereafter. Does Diehr get a patent on the method of operating rubber molds by having an idiot savant simultaneously read the temperature dials, solve the necessary equations, and throw the right switches to open the molds at the right time?
How is a real computer different from the notional girl's notional idiot savant brother?
9. If a given invention is the idea of using a computer to do something hitherto done less efficiently by other means, in what circumstances should it be honored (or more important, legally protected against competition) with a patent? In some fields of art, nowadays, it is almost malpractice not to use a computer to do the work. To be sure, there may be islands of low-tech in which deciding that a process should be computerized amounts to a flash of genius. How do you factor that in?
10. Some cases involve computerization using a known process and an algorithm or trivial variation on it that is already used in that process. Computerization is the entire invention; that may be a fair way to characterize the Diehr case. Other times, the invention involves using a known algorithm in a different context, along with computerization; Flook may be such a case. Rarely, the invention is computerization with a new, hitherto unknown algorithm, where the remainder of the process is known. A new algorithm (such as Karmarkar's) for solving linear programming problems may illustrate this situation. If Einstein had promptly thought up some machines or industrial processes exploiting E = mc2, that, too, might have illustrated this kind of case. Should the patent law address these different cases differently?
Link to section B of chapter 8
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