Diehr and Lutton came up with
a math equation to determine how long to cure rubber. They developed a
computer program that they installed on a rubber molding press so that it
could better make precision molded rubber products.
Basically, Diehr and Lutton
came up with an equation for how long to cure the rubber to get various
characteristics, and then wrote a computer program where you type in what
you want and it calculates how long the curing process should be. Like a
toaster oven, at the right time, the door to the molding press pops open
and the piece is ready.
Diehr and Lutton applied for a
patent on their process for curing
rubber. The USPTO denied the patent. Diehr and Lutton appealed.
The USPTO found that the process was unpatentable subject matter under 35 U.S.C. §101.
The USPTO found that the
steps performed by the computer were unpatentable as a computer program
under Gottschalk v. Benson (409
U.S. 63 (1972)).
The Court of Customs and
Patent Appeals reversed. The USPTO appealed.
The Court of Customs and
Appealed found that at an otherwise patentable invention did not become
unpatentable simply because a computer was involved.
The US Supreme Court affirmed
and granted the patent.
The US Supreme Court found
that the execution of a physical process, controlled by running a
computer program was patentable.
The Court noted that software
algorithms could not be patented. However, the Court found that the mere
presence of a software element did not make an otherwise patent-eligible
machine or process un-patentable.
The Court found that under §101, the invention must be considered "as a
whole." In this case the invention was comprised not just of a
software algorithm, but also some physical items like a molding press.
It also results in a specific, quantifiable result (cured rubber).
The Court found that §101 should be read as broadly as possible.
Truthfully, Diehr's invention
was mostly just a math equation. The physical parts consisted of a
thermometer and spring-loaded door. Thermometers, spring-loaded doors,
and rubber molding presses were all known processes. The only novel part of Diehr's invention was the math
equation.
Gottschalk found that math equations were not
patentable. How is this case distinguishable?
Gottschalk's computer
program was just a program, he didn't specify a use for it. Diehr was
only making a claim for making rubber. Does the fact that the math is
connected to the machinery make the difference?
The Court specifically
rejected the idea of breaking down an invention into component parts and
subjecting each part to a novelty
and statutory subject matter
review.
