Diamond v. Diehr

Most people reading this will probably recall that Diamond v. Diehr was the last time that the United States Supreme Court issued a substantive opinion on 35 USC section 101.  The case involved method claims and the use of a computer to control a rubber curing process. 

I had always assumed that the counsel for the inventor in Diamond v. Diehr was a champion of broad subject matter protection and had argued valiantly for a broad scope of protectable subject matter under section 101, including protection for computer software. Therefore, I was surprised when I listened to the oral argument in Diamond v. Diehr that such was not the case:  [Listen] and [Listen].

It’s no surprise that the Solicitor General also argued against the patentability of software during the oral argument.  Previously, the government had argued for a narrow scope of protection under section 101 in Diamond v. Chakrabarty, Parker v. Flook, and Gottschalk v. Benson.  The Solicitor General’s argument in Diamond v. Diehr was no different — although it took some prodding from Justice White for him to address the issue directly: [Listen].

While the Solicitor General in Diamond v. Diehr admitted that computer programs could be novel and non-obvious, the Solicitor General quoted the President’s Commission on the Patent System from the 1970’s in arguing that computer programs should not be patentable — whether claimed purely as a software program or as a process or as a  programmed machine — because searching would be too difficult due to the sheer volume of prior art.    [Listen]

It is interesting to note the position of the Solicitor General’s office now in Bilski v. Kappos.  In the goverment’s brief, the Solicitor General’s office now states:

 This Court has long recognized that the distinguishing feature of a technological process is that it concerns a particular machine or apparatus or effects a transformation of matter to a different state or thing. See, e.g., Diehr, 450 U.S. at 184; Cochrane v. Deener, 94 U.S. 780 (1877). That understanding of the term “process” in Section 101 continues to provide an appropriate framework for distinguishing methods that involve technology—including claims concerning software and other modern technologies—from those that do not. 

See page 9 of Respondent’s Brief in Bilski v. Kappos.


In any event, the machine-or-transformation test contemplates that many forms of “software” inventions are patent-eligible. As with many types of technology, the patent-eligibility of software cannot be resolved as a categorical matter. Rather, the eligibility of a claimed software invention depends on the content of that  invention and the form in which it is sought to be patented. 

As the Board noted below, the machine-or-transformation definition may readily encompass most software claims because such claims could be said to concern the use of a machine ( i.e. , the computer itself ) or involve a transformation of matter ( i.e., the writing and re-writing of data, represented by magnetic changes in the substrate of a hard disk or the altered energy state of transistors in a memory chip). Pet. App. 177a-178a. This conception of the machine-or-transformation test is reflected in non-binding interim examination instructions issued by the PTO in August 2009. See United States PTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101  (Aug. 24, 2009) ( Interim Instructions).17  The Interim Instructions state that “computer implemented processes” are often disclosed as connected to a machine, i.e., a general purpose computer. Id. at 6. Such a computer, “when programmed to perform the process steps” so that it performs the specific function  contemplated by the process, “may be sufficiently ‘particular’ ” for purposes of the machine-or-transformation test. Ibid.; cf. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)(“[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”). In addition, “transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use.”


 See Respondent’s Brief at pages 38-39 in Bilski v. Kappos. 

 You can listen to the entire oral argument in Diamond v. Diehr here:   [Listen].
 You can read the Supreme Court’s opinion in Diamond v. Diehr here:  [Read].

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