Federal Circuit IP

US Synthetic Corp. v. International Trade Commission

By Ziyu Ma Published March 19, 2025

CAFC No. 2023-1217, Decided Feb. 13, 2025

(DYK, Chen, Stoll)

Background:

1. USS filed a complaint with the ITC, alleging various diamond material companies were importing and selling polycrystalline diamond compact (PDC) products that infringed five USS patents, including the ‘502 patent.
2. The Administrative Law Judge (ALJ) found infringement but ruled the claims ineligible under § 101.
3. During Commission Review, the ITC affirmed patent ineligibility but upheld enablement under § 112, rejecting the intervenors’ lack of enablement arguments.
4. USS appealed the § 101 ruling; Intervenors challenged enablement.

Issue: whether a claim that recites material properties to define structural characteristics of the claimed composition is patent ineligible under § 101.

Holding: Under Alice step one, the asserted claims—reciting material properties to define structural characteristics of the claimed composition—are not directed to an abstract idea and are patent-eligible under § 101. Remanded.

Federal Circuit Analysis:

1. Standard of review: “We review the Commission’s factual findings for substantial evidence and its legal determinations de novo.” Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 1358 (Fed. Cir. 2019). Alice step one: de novo.
2. Alice step one: Not directed to an abstract idea. The magnetic properties are not merely side effects. The spec. explains how the magnetic properties correlate to structural aspects of the claimed PDC.
3. No perfect proxy is required between the recited material properties and the structure of the PDC. The spec. provided sufficient clarification and working examples.
4. ITC relied on inapplicable Fed. Cir. decision in software functionality computer cases. The claimed magnetic properties here are not merely result-focused, functional, or side effects of the manufacturing process.

Takeaways:

1. Prosecutors:
   1. Draft claims that explicitly tie measured properties to structural features to avoid § 101 challenges.
   2. Use Experimental Data and Examples to Support Enablement.
2. Patent challenger:
   1. No perfect proxy is required.
   2. When possible, rely on cases in the same technical field.