On February 13, 2025, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision reversing the International Trade Commission finding that US Synthetic’s composition of matter claim was not patent-eligible under 35 U.S.C. §101.
Background of the Case
At issue were claims in U.S. Patent No. 10,508,502 (‘502 patent) for a polycrystalline diamond compact (PDC) that include a polycrystalline diamond table (diamond table) bonded to a substrate. The claims include physical characteristics of the diamond table, which may be determined by measuring the magnetic properties of the PDC.
ITC’s Finding of Patent-Ineligibility
U.S. Synthetic Corp. filed a complaint with the International Trade Commission (ITC) against several entities alleging infringement of the claims of the ‘502 patent. In applying the U.S. Supreme Court’s two-step framework in Alice Corp. v. CLS Bank International, the ITC’s administrative law judge (ALJ) concluded that, although the respondents infringed the claims of the ‘502 patent, the claims were directed to a patent-ineligible natural phenomenon. The ALJ reasoned that, although the claimed PDC is not found in nature, its magnetic properties were merely unintended results or effects of the manufacturing process. The ALJ thus deemed the claims to be directed to an abstract idea.
Federal Circuit’s Reversal
The Federal Circuit disagreed, holding that the claims were not directed to an abstract idea but rather to a specific, non-abstract composition of matter – a PDC – that is defined by its constituent elements, particular dimensional information and quantified material properties.
The Federal Circuit examined the specification of the ‘502 patent and determined that it sufficiently explains how the claimed magnetic properties correlate to structural aspects of the PDC such that it informs a skilled artisan about the physical characteristics of the PDC.
The Federal Circuit rejected the ITC’s characterization that the relationship between the claimed magnetic properties and the structure of the PDC is “loose and generalized,” stating that the ITC’s apparent expectations for precision are too exacting for §101 purposes. The Federal Circuit clarified that “no perfect proxy” is required between the recited material properties and the structure of the PDC.
Additionally, the Federal Circuit noted that the ITC’s reliance on cases primarily relating to generic computing functionality was inappropriate for the claimed physical composition of matter.
Key Takeaways
This decision is a notable contrast to the Federal Circuit’s decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, which we wrote about here, where claims for manufacturing drive shafts were found patent ineligible.
While this decision offers some clarity for composition-of-matter claims, patent eligibility jurisprudence under §101 remains complex and nuanced. This decision underscores the ongoing importance of drafting precise and robust patent specifications.
For composition-of-matter claims, a specification that includes meaningful and sufficient correlations between the claimed properties of a composition of matter and its physical structure may provide important support for a finding of patent eligibility.
