The Federal Circuit has reversed the U.S. International Trade Commission’s (ITC) finding that claims of U.S. Patent No. 10,508,502 were invalid under 35 U.S.C. § 101 in US Synthetic Corp. v. ITC, Appeal No. 2023-1217 (February 13, 2025) from ITC Investigation No. 337-TA-1236.
The claims were directed to a polycrystalline diamond compact (PDC) comprising a polycrystalline diamond table having a specific lateral dimension and comprising diamond grains and a catalyst comprising cobalt, and a substrate bonding to the table, wherein a portion of the table exhibited a certain coercivity and specific permeability.
The ITC found that, although the claims described a product, the claimed properties (i.e., coercivity, permeability and magnetic saturation) where side effects of the manufacturing process and did not define structural elements. As such, the ITC determined that the claims were directed to an abstract idea – unintended results or effects of the manufacturing process.
The Federal Circuit disagreed, finding that the claims described a specific, non-abstract composition of matter, and that the recited properties further defined the structure characteristics of the claimed product. In rejecting an analogy to Section 101 cases involving generic computer components, the Federal Circuit stated: “[t]he claimed PDC is not an abstract result of generic computer functionality, but instead is a physical composition of matter defined by its constituent elements, dimensional information, and inherent material properties.”
This case is important for patentees seeking protection for their innovative compositions of matter which may be described based on their properties as well as their physical structure and/or ingredients. It provides some security against an expansion of the abstract idea concept associated with Section 101 to this claimed subject matter.