DIAMOND v DIEHR, Et Al.
US SUPREME COURT
450 US. 175 | October 14, 1980
NOTES FOR RECIT
Mark: Diamond v Diehr
Product: Improved press that cured rubber by controlled heating.
Ruling: The court held that a machine which transforms materials physically under the control
of a programmed computer is patentable. In addition, and without overruling the earlier
Gottschalk v. Benson decision holding that a mathematical procedure cannot be patented, the
majority in Diehr said the Benson decision did not render all computer programs unpatentable,
contrary to what Justice John Paul Stevens argued in his strong dissenting opinion in Diehr.
The Diehr court left undecided the question of whether computer programs standing by
themselves could ever be patentable.
Who won the case?
Rationale of SC ruling: Based on these distinctions, the High Tribunal declared that wines
and cigarettes are non-competing and totally unrelated products which are not likely to cause
confusion vis-à-vis the goods or business of Gallo Winery and Mighty Corporation, et al.
Thus, even though similar marks are used, there is no trademark infringement if the public
does not expect the plaintiff to make or sell the same class of goods as those made or sold by
the defendant.
FACTS:
Engineers James Diehr and Theodore Lutton invented an improved press that cured
rubber by controlled heating. The press contained a temperature probe which measured
the temperature rise of the rubber from within the press.
By repeatedly calculating the rubber cure time from this temperature measurement and
comparing this computed cure time to the actual elapsed time, the computer was able to
determine precisely when to open the press and eject the cured rubber, which then
emerged perfectly cured.
The patent examiner, viewing all computer programs as unpatentable because of the earlier
Supreme Court decision Gottschalk v. Benson (1972), rejected their patent application because,
he argued, the inventors had simply combined an unpatentable program with a conventional
rubber curing press.
An appellate court reversed the Examiner and ordered a patent to issue. The
Commissioner of Patents then petitioned successfully to have the Supreme Court review
this decision. Before the Supreme Court, the inventors' attorney argued that the steps of
continuously measuring temperature and repeatedly recalculating the rubber cure time
and comparing it to the elapsed time were new steps that were worthy of patent
protection.
ISSUE: Can one patent a machine that transforms materials physically under the control of a
programmed computer?
RULING: The court ruled in the affirmative. In a 5-to-4 decision, the court held that a machine
which transforms materials physically under the control of a programmed computer is
patentable. In addition, and without overruling the earlier Gottschalk v. Benson decision holding
that a mathematical procedure cannot be patented, the majority in Diehr said the Benson decision
did not render all computer programs unpatentable, contrary to what Justice John Paul Stevens
argued in his strong dissenting opinion in Diehr. The Diehr court left undecided the question of
whether computer programs standing by themselves could ever be patentable. Immediately
following the Diehr ruling, software patent applications began flowing into the Patent Office in a
steady stream that remains undiminished today. (Thirteen years later, the Court of Appeals for
the Federal Circuit, in In re Alappat, ruled that virtually all computer programs are patentable.)
