IP Law Daily, PATENT—Fed. Cir.: Reversal of ITC’s patent ineligibility ruling revives US Synthetic’s polycrystalline diamond compact patent, (Feb 13, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

ITC’s patent ineligibility ruling reversed as the claims recited a specific composition of matter; enablement finding affirmed as the specification provided sufficient guidance for skilled artisans.

The U.S. Court of Appeals for the Federal Circuit reversed in part, affirmed in part, and remanded the US International Trade Commission's (ITC) ruling in a patent dispute concerning US Synthetic Corp.'s (USS) polycrystalline diamond compact (PDC) patent. The court overturned the ITC's determination that USS's asserted patent was ineligible under 35 U.S.C. § 101, finding that the claimed invention recited a specific composition of matter rather than an abstract idea. However, the Federal Circuit affirmed the ITC’s enablement ruling, rejecting arguments that the patent required undue experimentation to practice the claimed invention. Thus, the case was remanded for further proceedings consistent with the appellate court’s opinion (US Synthetic Corp. v. ITC, No. 23-1217 (Fed. Cir. Feb. 13, 2025)).

Background. The appellant, USS, is a leading manufacturer of synthetic diamond products used in drilling applications. The company specializes in polycrystalline diamond compacts (PDCs), which are widely utilized in oil and gas drilling, mining, and industrial cutting tools for their durability and wear resistance. The appellee, ITC, is an independent federal agency responsible for adjudicating trade disputes and enforcing intellectual property rights under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337). The intervenors are manufacturers of synthetic diamond products used in industrial applications, including SF Diamond Co., Ltd. and ILJIN Diamond Co., Ltd., among others.

The patent at issue on appeal, US Patent No. 10,508,502 (the '502 patent), is owned by USS and describes PDCs used in drilling applications. The patent claims specific structural and compositional attributes, including diamond grain size, metal catalyst content, and magnetic properties that reflect diamond-to-diamond bonding. These properties contribute to the durability, wear resistance, and performance of PDCs in extreme drilling conditions.

USS filed a Section 337 complaint with the ITC, alleging that SF Diamond, ILJIN Diamond, and other intervenors unlawfully imported and sold PDCs that infringed its patents. The administrative law judge (ALJ) initially determined that the asserted claims were valid, infringed, and met the enablement requirement under 35 U.S.C. § 112. However, the ALJ ultimately held that the claims were ineligible under 35 U.S.C. § 101, concluding that the patent was directed to the abstract idea of achieving desired magnetic properties rather than a specific composition of matter.

On review, the ITC affirmed the ALJ’s patent ineligibility ruling but upheld the enablement determination, agreeing that the claims were directed to an abstract idea rather than patentable subject matter but were sufficiently described to enable a skilled artisan to practice the full scope of the invention without undue experimentation.

USS subsequently appealed to the Federal Circuit, arguing that the ITC misapplied the Alice test and that the patent claims recited a specific composition of matter, not an abstract idea. Additionally, intervenors cross-appealed, challenging the ITC’s finding that the asserted claims were enabled under § 112, contending that the patent failed to provide sufficient detail for a skilled artisan to reproduce the claimed invention without undue experimentation.

Patent eligibility. The Federal Circuit reversed the ITC’s conclusion that the asserted claims were directed to an abstract idea, holding that the claims recited a concrete and defined composition of matter. It applied the two-step framework for determining patent eligibility established in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 US 208 (2014).

At Alice step one, the Federal Circuit disagreed with the ITC’s determination that the claims were directed to achieving desired magnetic properties. The court emphasized that the patent explicitly defined the claimed PDC through its constituent elements (diamond grains, metal catalyst, and substrate), structural parameters (grain size and diamond table dimensions), and measurable material properties (coercivity, specific permeability, and specific magnetic saturation). These characteristics, the court noted, were intrinsic to the physical structure of the PDC and not abstract concepts.

The court found the ITC’s reasoning flawed, as the ITC had dismissed the claimed magnetic properties as mere "side effects" of the manufacturing process rather than structural features. Relying on McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the Federal Circuit reiterated that claims should not be improperly reduced to a single feature, particularly when they specify physical attributes that define a composition of matter.

At Alice step two, the court found no need to assess whether the claims contained an inventive concept, as it had already determined that they were not directed to an abstract idea.

Enablement. Intervenors argued that the claims were not enabled because the patent did not sufficiently describe how to achieve the claimed magnetic properties without undue experimentation. The ITC, however, had found that the asserted claims were enabled, determining that the specification provided adequate detail regarding the manufacturing process and the relationship between sintering conditions and the resulting PDC characteristics.

The Federal Circuit affirmed the ITC’s enablement conclusion, rejecting intervenors’ contentions that the patent required undue experimentation. Citing Amgen Inc. v. Sanofi, 598 US 594 (2023), the court reiterated that a patent must enable a skilled artisan to practice the full scope of the claimed invention without excessive experimentation. The court found that the patent met this requirement, noting that the specification provided detailed manufacturing parameters and working examples sufficient to guide a skilled artisan.

The court also dismissed the intervenors' argument that the term "unleached portion" rendered the claims non-enabled. It held that the patent specification adequately distinguished leached and unleached portions of the PDC and that the claims did not require an undue level of experimentation to implement.

Conclusion. Thus, the Federal Circuit overturned the ITC's ruling on patent eligibility, reinstating the validity of USS's PDC patent. However, the court upheld the ITC's finding that the asserted claims were enabled. The case was remanded for further proceedings consistent with the Federal Circuit's ruling.

The Case is No. 23-1217.

Judge: Chen, R.

Attorneys: Daniel Cooley (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for US Synthetic Corp. Cathy Chen, U.S. International Trade Commission, for International Trade Commission.

Companies: US Synthetic Corp.

Cases: Patent TechnologyInternet FedCirNews GCNNews