Diamond v. Diehr and Lutton, 1981

In the History of Software Patents, this was a sensible decision.  By this time, the U.S. Patent and Trademark Office was still highly reluctant to allow patent applications covering to software based inventions. In the Diamond v. Diehr case, the Supreme Court forced the USPTO to grant a patent on an invention even though computer software was utilized. The USPTO had been fairly strictly refusing to allow applications for inventions reciting algorithms. In these years, an applicant’s best shot at gaining an allowance was to disguise software as hardware; e.g., instead of reciting a comparison step, show a comparator in a block diagram for a digital machine.

This case related to a patent application for molding raw, uncured, synthetic rubber into cured precision products. The invention used measurement of actual temperature inside the mold during the curing process and used a computer calculate and control heating times. The patent examiner rejected the claims on the sole ground that they were drawn to nonstatutory subject matter under 35 U.S.C. §101 because steps in respondents’ claims that are carried out by a computer under control of a stored program constituted nonstatutory subject matter under the Supreme Court’s decision in Gottschalk v. Benson. The examiner also took the position that the remainder of the steps were already known in the industry. The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed, noting that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondents 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 arisen in the molding of rubber products. The Government sought certiorari arguing that the decision of the Court of Customs and Patent Appeals was inconsistent with prior decisions of the Supreme Court.

The invention, as defined by the claims, included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court found that the invention was not merely a mathematical algorithm, but was a process for molding rubber, and thus was patentable, even though the only novel feature was the timing process controlled by the computer.

More particularly, the Court stated that they viewed respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. 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, Gottschalk v. Benson, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. 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 the Court did not view the claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, the Supreme Court affirmed the judgment of the Court of Customs and Patent Appeals.

The dissent stated that the claimed invention made no contribution to the art that was not entirely dependent upon the utilization of a computer in a familiar process, and they would have reversed the decision of the Court of Customs and Patent Appeals.

In re Freeman, 1978

In the History of Software Patents, this is an important case.  The subject matter of Freeman’s invention was a system for typesetting alphanumeric information, using a computer-based control system in conjunction with a phototypesetter of conventional design. The claims included claims directed to methods of controlling a computer display system, as well as claims to a hierarchical “tree structure” computer storage arrangement. U.S. Patent and Trademark Office had rejected the patent application on the basis that the Benson case precluded patentability of an invention where the only novel part was the computer program.

The U.S. Court of Customs and Patent Appeals noted that with no reference to the nature of the algorithm involved, the U.S. Patent and Trademark Office’s Board of Appeals board merely stated that the coverage sought “in practical effect would be a patent on the algorithm itself.” Though the board gave no clear reasons for so concluding, its approach would appear to be that every implementation with a programmed computer equals “algorithm” in the Benson sense. If that rubric was the law, every claimed method that can be so implemented would equal nonstatutory subject matter under 35 USC 101.

The Court noted that a claim expressed in “means for” terms, though said to be an apparatus claim, may be indistinguishable from that of a method claim drawn to the steps performed by the “means.” The court agreed with the solicitor’s contention that if allowance of a method claim is proscribed by Benson, it would be anomalous to grant a claim to apparatus encompassing any and every “means for” practicing that very method.

The court held that because neither the apparatus claims nor the present method claims recite or preempt a mathematical algorithm as forbidden by Benson, both sets of claims are immune from a rejection based solely on the opinion in that case. The court then reversed the decision of the board rejecting claims 1-10 under 35 USC 101.

This case has been cited for laying out a two part test:

First, it must be determined whether the claim directly or indirectly recites an ” algorithm” in the Benson sense of that term, for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm.

Second, the claim must be further analyzed to ascertain whether in its entirety it wholly preempts that algorithm.