Claims Reciting Material Properties of a Claimed Composition Withstand § 101 Scrutiny

Written by:Geetha Durairaj, Ph.D. and Justin J. Gillett

US SYNTHETIC CORP. v. INTERNATIONAL TRADE COMMISSION

Before Dyk, Chen, and Stoll.  Appeal from the U.S. International Trade Commission.

Summary: The Federal Circuit found claims reciting magnetic properties of a claimed composition were not directed to an abstract idea where the specification expressly correlated the recited magnetic properties to physical characteristics of the claimed composition.

US Synthetic Corp. (USS) filed a complaint with the U.S. International Trade Commission (Commission) alleging several entities violated § 337 of the Tariff Act by importing products that infringed U.S. Patent No. 10,508,502 (the ’502 patent) and four other USS patents.  The ’502 patent claims a composition known as a polycrystalline diamond compact (PDC), which is used in drilling tools and machining equipment.  Representative claims recite the claimed PDC’s constituent elements such as diamond, its dimensional information such as grain size, and its magnetic properties.  The Commission instituted an investigation.  In a final initial determination, an administrative law judge determined the asserted claims of the ’502 patent were patent ineligible under 35 U.S.C. § 101 as directed to an abstract idea.  The Commission reviewed and affirmed that determination.  USS appealed.

The Federal Circuit reversed the Commission’s patent ineligibility ruling and remanded.  According to the court, the parties’ dispute centered around the magnetic properties recited in the ’502 patent.  It found the patent’s specification expressly correlated the recited magnetic properties to physical characteristics of the claimed PDC composition.  The Federal Circuit held the disclosed correlation was “sufficient for § 101, where we are trying to ascertain as a matter of law whether a patent claim is directed to a specific implementation of an idea or merely just the idea itself.”  The court explained that “no perfect proxy is required between the recited material properties and the structure of the PDC.”  It found the described correlations to be “concrete and meaningful, rather than something that is merely speculative.”  The Federal Circuit therefore concluded that the asserted claims of the ’502 patent are not directed to an abstract idea under Alice step one.

Editor: Sean Murray