Diamond v. Diehr - Case Brief
Diamond v. Diehr, 450 U.S. 175 (1981).
Argued October 14, 1980. Decided March 3, 1981.
Facts: The PTO rejected claims in Diehr’s patent directed to a process for curing rubber. The Patent Office contended that steps that are performed by a computer by means of a stored program do not constitute statutory subject matter under 35 USC 101. On appeal, the PTO Board of Appeals upheld the examiner’s rejection. On appeal to the Court of Customs and Patent Appeals, the Court reversed, finding in favor of Diehr.
Issue:Are otherwise valid claims rendered invalid by including mathematical formulas?
Holding: Claims that include mathematical formulae are not necessarily invalid. A process 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. . . . The machinery pointed out as suitable to perform the process may or may not be new or patentable.”
The mere use of a mathematical formula, computer program, or digital computer does not render a process unpatentable. The claims must be considered as a whole; if the structure or process, when considered as a whole, is otherwise patentable subject matter, the utility requirements of 35 USC 101 are satisfied.
Disposition: Affirmed.
Notes:
Diamond v. Diehr was instrumental in paving the way for State Street v. Signature Financial and the patentability of business methods.
Diamond v. Chakrabarty was also instrumental in establishing the Court of Appeals for the Federal Circuit’s expansive approach to patentable subject matter: “the Supreme Court has acknowledged that Congress intended § 101 to extend to anything under the sun that is made by man.”
Tags: case, Cases, computer, law, Patent, patentability, process, Software, utility