Diamond v. Chakrabarty

PETITIONER: Diamond
RESPONDENT: Chakrabarty
LOCATION: Elkhart, Indiana

DOCKET NO.: 79-136
DECIDED BY: Burger Court (1975-1981)
LOWER COURT:

CITATION: 447 US 303 (1980)
ARGUED: Mar 17, 1980
DECIDED: Jun 16, 1980

ADVOCATES:
Edward F. McKie, Jr. - Argued the cause for the respondent
Lawrence G. Wallace - Argued the cause for the petitioner

Facts of the case

After genetically engineering a bacterium capable of breaking down crude oil, Ananda Chakrabarty sought to patent his creation under Title 35 U.S.C. Section 101, providing patents for people who invent or discover "any" new and useful "manufacture" or "composition of matter." On appeal from an application rejection by a patent examiner the Patent Office Board of Appeals affirmed, stating that living things are not patentable under Section 101. When this decision was reversed by the Court of Customs and Patent Appeals, Diamond appealed and the Supreme Court granted certiorari.

Question

Is the creation of a live, human-made organism patentable under Title 35 U.S.C. Section 101?

Media for Diamond v. Chakrabarty

Audio Transcription for Oral Argument - March 17, 1980 in Diamond v. Chakrabarty

Warren E. Burger:

We will hear arguments next in Diamond, Commissioner of Patents v. Chakrabarty.

Mr. Wallace, I think you may proceed whenever you are ready.

Lawrence G. Wallace:

Mr. Chief Justice, and may it please the Court.

The question before the Court in this case is whether a living organism is patentable subject matter under Section 101 of the present patent law.

This is a relatively narrow question of statutory interpretation and congressional intent, a question which does not, in our view, require the Court to resolve any of the much mooted current controversies about desirable public policies in the field of so-called genetic engineering.

William H. Rehnquist:

We are pretty well bound by the statute in that area, aren't we, anyway?

Lawrence G. Wallace:

That is our view, Mr. Justice.

But the question before the Court is a question of interpreting the statute.

The claims at issue were rejected by the Examiner and by the Board of Appeals but were upheld by the Court of Customs and Patent Appeals.

They are claims drafted in various forms to a living microorganism to what amounts to a laboratory-induced hybrid strain of bacteria combining in a single organism plasmids which are genetic units that are plasmids that are found in nature to exist only separately in separate strains of these bacteria.

And the combination of these plasmids in the new strain enable that strain to degrade several components of crude oil simultaneously.

The Examiner allowed numerous related claims by the Respondent to the process for producing the new strain and claims to an inoculum combining the new strain with certain carrier material.

Some of the rejected claims are also inoculum claims but in those claims the only essential element of the inoculum claimed is the new strain of bacteria itself without any carrier or mixture being specified and those are treated by everyone in the case as essentially claims on the bacteria, just variance of the basic claim for the bacteria.

Byron R. White:

I didn't understand the word you used, Mr. Wallace.

Lawrence G. Wallace:

Inoculum -- i-n-o-c-u-l-u-m.

Byron R. White:

Not "innocuous"?

Lawrence G. Wallace:

No.

Inoculum, something to be inoculated; in this case not in a person but on an oil spill would be the idea of the claim.

Now, perhaps an examiner informed by this Court's analysis in Parker v. Flook would have disallowed some of the claims that were allowed but none of those claims are at issue before this Court.

There is no mechanism for administrative review of claims allowed by an examiner.

The Board of Appeals in CCPA did not pass on the validity of those claims.

But the fact that the process claims were allowed here points up for us what no one really disputes here, that the patent law does apply to new technology, the whole purpose of the patent law is to encourage the development of new technology and to grant rights to inventors who discover new technologies but the claims involving those new technologies in order to be patentable have to be claims that come within the statutory categories established by Congress as the Examiner held the process claims did in this case, as well as the inoculum claims combined bacteria with specified carrier materials.

And our basic contention here is that claims on living organisms themselves are not within the statutory categories established by Congress and therefore were properly rejected by the Examiner and the Board of Appeals here.

And that is all that is at issue.

We start our brief -- the argument in our brief with a quotation from this Court's recent decision in Parker v. Flook that the Judiciary must proceed cautiously when asked to extend patent rights into areas wholly unforeseen by Congress.

This case --

William H. Rehnquist:

Mr. Wallace, do you think that when Congress passed the patent statute in the 1790's it foresaw telephone, radio, television and that sort of thing?

Lawrence G. Wallace:

Not at all, Mr. Justice, and as I just said we do think the patent law applies to claims involving new technology so long as the claims are within the statutory category.

William H. Rehnquist:

I mean it was to reward inventors who saw things that Congress didn't see --

Lawrence G. Wallace:

Well --