The Oyez Project: Economic Activity Issues - Patentability of Computer Processes Decisions

Dann v. Johnston

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Diamond v. Bradley

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Diamond v. Diehr

Can one patent a machine that transforms materials physically under the control of a programmed computer?

Yes. 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.)

eBay v. MercExchange

Under the Patent Act, should a permanent injunction always be issued when a patent has been violated, absent exceptional circumstances?

No. Justice Clarence Thomas, writing for a unanimous Court, held that the appeals court's general rule was an unwarranted departure from the traditional four-part test applied to determine whether an injunction is necessary. That test requires the plaintiff to prove (1) that it has suffered an irreparable injury; (2) that the law does not provide other adequate ways to compensate it; (3) that considering the balance of hardships between the plaintiff and defendant, an injunction is warranted; and (4) that the public interest would not be harmed by a permanent injunction. The Court found no reason to make decisions on injunctions under the Patent Act different from other decisions on injunctions, and so the appeals court's general rule was rejected and the decision reversed.

Gottschalk v. Benson

Is a computer program patentable? More specifically, is a mathematical procedure such as long division patentable?

No and no. The Supreme Court held that a patent cannot cover all possible uses of a mathematical procedure or equation within a computer. That would be tantamount to granting the inventor a patent on the mathematical procedure itself, and this was no more acceptable than granting Samuel Morse a patent covering all possible uses of magnetism to communicate, rather than a narrower patent covering only the specific way in which Morse actually used magnetism to communicate in his telegraph. The court then said that "[i]f these programs are to be patentable, considerable problems are raised which only committees of Congress can manage ...." This decision was accepted as a final determination that computer programs were not patentable, and the Patent Office immediately ceased examining all computer program inventions. Very few patent applications directed to computer programs were filed until after the Supreme Court readdressed this issue in Diamond v. Diehr some nine years later. During these nine years, alternative ways of protecting computer programs were developed under the laws of copyright and trade secret which remain part of our law today.

Lotus Development Corporation v. Borland International, Inc.

Is a computer program's menu command hierarchy a "method of operation" under 17 U.S.C.102(b), and therefore uncopyrightable?

Yes. The Supreme Court affirmed the First Circuit without opinion in an equally divided, per curiam decision. Justice John Paul Stevens did not take part in the case.

Parker v. Flook

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