Cases by Issue - Patentability of Computer Processes

eBay v. MercExchange

Mon, 05 Jan 2009 17:45:28 +0000

Case Basics

Docket No.

05-130

Petitioner

eBay Inc., et al.

Petitioner Type

Petitioner

Respondent

MercExchange, L.L.C.

Respondent Type

Respondent

Heard By

Roberts Court (2006-2009)

Decided By

Roberts Court (2006-2009)

Opinion

547 U.S. ___ (2006)

Granted

Monday, November 28, 2005

Argued

Wednesday, March 29, 2006

Decided

Monday, May 15, 2006

Advocates

Jeffrey P. Minear (argued the cause for Respondent)

Carter G. Phillips (argued the cause for Petitioner)

Seth P. Waxman (argued the cause for Respondent)

Facts of the Case

MercExchange patented a design for an online marketplace in which a single company provides the trustworthy framework within which buyers and sellers can negotiate for goods. After negotiations with eBay and Half.com to license the patent failed, MercExchange brought suit in federal district court alleging patent violation under the Patent Act. The jury sided with MercExchange, ruling that its patent had been violated, but the district court judge refused to issue a permanent injunction. The injunction would have forced eBay and Half.com to stop using the contested framework, but the judge applied the traditional four-part test to determine whether an injunction was necessary and found that it was not. That decision was reversed, however, by the U.S. Circuit Court of Appeals for the Federal Circuit, which applied a "general rule that courts will issue permanent injunctions against patent infringements absent exceptional circumstances."

Question

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

Conclusion

Decision: 9 votes for eBay, 0 vote(s) against
Legal provision: 25 U.S.C. 1

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.

Lotus Development Corporation v. Borland International, Inc.

Mon, 05 Jan 2009 16:24:49 +0000

Case Basics

Docket No.

94-2003

Petitioner

Lotus Development Corporation

Petitioner Type

Petitioner

Respondent

Borland International, Inc.

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

516 U.S. 233 (1996)

Argued

Monday, January 8, 1996

Decided

Tuesday, January 16, 1996

Advocates

Gary L. Reback (on behalf of the Respondent)

Henry B. Gutman (on behalf of the Petitioner)

Facts of the Case

Lotus Development Corporation (Lotus) copyrighted a computer spreadsheet program called Lotus 1-2-3. The program's menu options were arranged in a specific menu command hierarchy. Lotus 1-2-3 also allowed users to write "macros," which designate a certain series of commands to be executed with a single keystroke. Competing software-company Borland International, Inc. (Borland) released a similar program called Quattro that contained a program called "Key Reader." Lotus claimed that Key Reader infringed on its copyright because it copied Lotus 1-2-3 macros and arranged them according to the Lotus 1-2-3 menu command hierarchy. Borland explained that it did this to allow users already familiar with Lotus 1-2-3 to also operate Quattro and argued that the Lotus menu command hierarchy did not constitute copyright-protected material.

After the District Court ruled in favor of Lotus, Borland appealed to the U.S. Court of Appeals for the First Circuit. The First Circuit reversed, holding that the command menu hierarchy was a "method of operation" - a category excluded from copyright protection under 17 U.S.C.102(b).

Question

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

Conclusion

Decision: 4 votes for Borland International, Inc., 4 vote(s) against
Legal provision:

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.

Diamond v. Bradley

Mon, 05 Jan 2009 17:28:40 +0000

Case Basics

Docket No.

79-855

Appellee

Bradley

Petitioner Type

Appellee

Appellant

Diamond

Respondent Type

Appellant

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

450 U.S. 381 (1981)

Argued

Tuesday, October 14, 1980

Decided

Monday, March 9, 1981

Advocates

Nicholas Prasinos (on behalf of the Respondents)

Lawrence G. Wallace (on behalf of the Petitioner)

Facts of the Case

None

Question

None

Conclusion

Decision: 4 votes for Bradley, 4 vote(s) against
Legal provision:

None

Diamond v. Diehr

Mon, 05 Jan 2009 17:28:54 +0000

Case Basics

Docket No.

79-1112

Petitioner

Diamond

Petitioner Type

Petitioner

Respondent

Diehr

Respondent Type

Respondent

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

450 U.S. 175 (1981)

Argued

Tuesday, October 14, 1980

Decided

Tuesday, March 3, 1981

Advocates

Robert E. Wichersham (on behalf of the Respondents)

Robert E. Wickersham (Argued the cause for the petitioner)

Lawrence G. Wallace ()

Facts of the Case

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.

Question

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

Conclusion

Decision: 5 votes for Diehr, 4 vote(s) against
Legal provision: 35 U.S.C. 101

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.)

Parker v. Flook

Mon, 05 Jan 2009 16:34:04 +0000

Case Basics

Docket No.

77-642

Petitioner

Parker

Petitioner Type

Petitioner

Respondent

Flook

Respondent Type

Respondent

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

437 U.S. 584 (1978)

Argued

Tuesday, April 25, 1978

Decided

Thursday, June 22, 1978

Advocates

Lawrence G. Wallace (argued the cause for petitioner)

Facts of the Case

None

Question

None

Conclusion

Decision: 6 votes for Parker, 3 vote(s) against
Legal provision: 35 U.S.C. 101

None

Dann v. Johnston

Mon, 05 Jan 2009 17:18:29 +0000

Case Basics

Docket No.

74-1033

Petitioner

Dann

Petitioner Type

Petitioner

Respondent

Johnston

Respondent Type

Respondent

Heard By

Burger Court (1975)

Decided By

Burger Court (1975-1981)

Opinion

425 U.S. 219 (1976)

Argued

Tuesday, December 9, 1975

Decided

Wednesday, March 31, 1976

Facts of the Case

None

Question

None

Conclusion

Decision: 7 votes for Dann, 0 vote(s) against
Legal provision: 35 U.S.C. 103

None

Gottschalk v. Benson

Mon, 05 Jan 2009 17:19:30 +0000

Case Basics

Docket No.

71-485

Petitioner

Gottschalk

Petitioner Type

Petitioner

Respondent

Benson

Respondent Type

Respondent

Heard By

Burger Court (1972-1975)

Decided By

Burger Court (1972-1975)

Opinion

409 U.S. 63 (1972)

Argued

Monday, October 16, 1972

Decided

Monday, November 20, 1972

Advocates

Hugh B. Cox ()

Richard B. Stone ()

Facts of the Case

Engineers Gary Benson and Arthur Tabbot invented a faster and more efficient mathematical procedure for transforming the normal "decimal" type of numbers (base 10) into true "binary" numbers (base 2) which are simpler to process within computers. Their mathematical procedure was somewhat akin to long division, albeit with different steps. Their attorney argued before the patent examiner that the inventors were entitled to a broad patent covering any use of their new mathematical procedure, even use of it by a human using pencil and paper. The examiner rejected their invention. An appellate court overruled 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 backed down from his earlier position and argued that the inventors were entitled to a patent covering all uses of their new mathematical procedure in computers, but not necessarily to its use by humans using pencil and paper. (The members of the Supreme Court at that time knew very little about computers.)

Question

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

Conclusion

Decision: 6 votes for Gottschalk, 0 vote(s) against
Legal provision: 35 U.S.C. 100

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.