Digital Law Online: Chakrabary and Diehr

Two years after the Supreme Court decided Flook, it decided Diamond v. Chakrabarty, {FN27: 447 U.S. 303, 206 USPQ 193 (1980)} another statutory subject matter case, but dealing with man-made, genetically-engineered bacteria capable of breaking down crude oil and having significant value in the treatment of oil spills. The Patent Office allowed method claims for producing the bacteria and for a combination of a floating carrier and the bacteria, but it rejected claims for the new bacteria itself. The examiner found that as living things, they were not statutory subject matter under Section 101. The Board upheld the examiner’s decision, and the CCPA reversed.

In contrast to its decisions in Benson and Flook,in Chakrabarty the Supreme Court (by a five-to-four majority) took a broader view of Section 101:

In cases of statutory construction we begin, of course, with the language of the statute. And “unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning.” We have also cautioned that courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.” {FN28: 447 U.S. at 308, 206 USPQ at 196 (citations omitted)}

It then went on to consider whether the bacterium was a manufacture or composition of matter, and noted that Congress has purposely chosen broad and expansive terms to indicate what was statutory subject matter. “Congress plainly contemplated that the patent laws would be given wide scope.”

The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.”

This is not to suggest that Section 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. {FN29: 447 U.S. at 309, 206 USPQ at 197 (citations omitted)}

Finding that the bacterium did not occur naturally, the Court ruled that the bacterium was either a manufacture or composition of matter and was statutory subject matter.

I.F. Diehr’s Rubber Molding

Given that Chakrabarty apparently held that “anything under the sun that is made by man,” with the exception of “laws of nature, physical phenomena, and abstract ideas,” was patentable, it’s not surprising that a year later the next (and last) software patent case before the Supreme Court produced a different result from Benson and Flook.

James Diehr and Theodore Lutton had invented a method for operating the molding presses used in the manufacture of rubber articles such as tires. Their method produced properly cured rubber articles by ensuring that the articles remained in the press for the proper time so they were not either overprocessed or underprocessed. It did this by continually monitoring the actual temperature in the mold and repeatedly calculating the cure time using a well-known formula, the Arrhenius equation. They claimed

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 said 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 calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates equivalence.

The examiner rejected the claims because he felt Diehr and Lutton were claiming a computer program, “subject matter to which the Supreme Court has declined to extend patent protection absent a considered action by Congress” and the Board agreed with the examiner. The CCPA reversed. {FN30: In re Diehr and Lutton, 602 F.2d 982, 203 USPQ 44 (1979)}

A claim drawn to a process or method does not depend for its validity under 35 USC 101 on whether a computer is involved. If the claim is drawn to subject matter, which is otherwise statutory, it does not become nonstatutory merely because a computer is involved in its execution. . . . Therefore, any rejection which is based solely on the determination that a computer or computer program is involved is insupportable because it is overly broad and must be reversed as being without basis in the law. {FN31: 602 F.2d at 985, 203 USPQ at 48-49 (citations omitted)} . . .

This, as we perceive it, is the direction which has been given us by the Supreme Court. Until the Court directs us otherwise, we continue to disagree with the notion that a claim may be rejected as nonstatutory merely because it involves a computer program or is computer related. As far as we are concerned, claims may be rejected under Section 101 because they attempt to embrace only a mathematical formula, mathematical algorithm, or method of calculation, but not merely because they define inventions having something to do with a computer. {FN32: 602 F.2d at 986-987, 203 USPQ at 50}

Not surprisingly, the Patent Office appealed again to the Supreme Court, but this time the outcome was different. The Court, in its five-to-four Diamond v. Diehr {FN33: 450 U.S. 175, 209 USPQ 1 (1981)} decision, affirmed the decision of the CCPA.

In Diehr, the Court viewed the claimed invention as a conventional process, one that transforms rubber to a different state of thing. Were it not for the presence of a formula, or implementation using a computer, the claims would clearly be statutory. The Court then addressed this aspect of the claimed invention.

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 Section 101 and every discovery is not embraced within the statutory terms. Excluded from such patent protection are laws of nature, physical phenomena and abstract ideas. . . .

Our recent holdings in Benson and Flook,both of which are computer-related, stand for no more than these long established principles. . . .

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 pre-empt 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. . . . 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, “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 Mr. 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.”

We think this statement . . . 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 Section 101.

In determining the eligibility of respondents’ claimed process for patent protection under Section 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 Section 101 categories of possibly patentable subject matter.

It has been urged that novelty is an appropriate consideration under Section 101. Presumably, this argument results from the language in Section 101 referring to any “new and useful” process, machine, etc. Section 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 Section 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “fully apart from whether the invention falls into a category of statutory subject matter.” {FN34: 450 U.S. at 185-190, 209 USPQ at 7-9 (citations omitted)}

Diehr clearly answers a number of questions but leaves many unanswered. An otherwise statutory process, particularly one involving a change in state or composition of a physical object, is statutory subject matter even though it involves a law of nature, mathematical formula, or digital computer. But is a process that does not change a physical object also statutory subject matter?

Laws of nature, physical phenomena, and abstract ideas are excluded from patent protection. But are there other things that are excluded, or are those three the complete list? In Chakrabarty, the Court has indicated that one “should not read into the patent laws limitations and conditions which the legislature has not expressed.”

What about hardware implementing an algorithm? Is that a machine, as that term is used in Section 101? What if the hardware is a general-purpose digital computer, programmed to implement the algorithm? The Court cautioned against allowing “a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.”

But we do know that there is at least one patent application for a computer-based invention that the Supreme Court believes claims statutory subject matter.

Next section: Drawing the Line