CAFC reverses ITC’s Section 101 invalidity finding on Composition of matter claims
“The dispute in this matter centers around the recited magnet properties… and their relation to the claimed [polycrystalline diamond compound].” – CAFC
Today the U.S. Court of Appeals of the Federal Circuit (CAFC), reversed the ITC’s determination that US Synthetic’s composition of material patent claims were directed at an abstract idea that was not patentable under 35 U.S.C. The Federal Circuit faulted the ITC for applying Step 1 of Alice/Mayo too narrowly in finding that the disclosed magnetic properties of the compound are side effects of unclaimed manufacturing process and not physical characteristics. The Federal Circuit faulted the ITC for applying Step 1 of Alice/Mayo too narrowly in finding that the disclosed magnetic properties of the compound are side effects of the unclaimed manufacturing process and not physical characteristics of the compound itself.
Magnetic Properties Recited in Specification Relate to Claimed Compound
The ITC instituted a Section 337 investigation into US Synthetic’s patent infringement claims back in December 2020 against a series of Chinese entities allegedly infringing claims of U.S. Patent No. Polycrystalline Diamond Compound, 10508502, is a compound that has magnetic properties. The PDC of ‘502 is bonded to substrates and used as abrasive surfaces for rotary drills, while exhibiting reduced metal catalyst leaching into the PDC. The ITC’s administrative law judge (ALJ) overseeing the Section 337 proceeding concluded that, while respondents infringed claims of the ‘502 patent, and the claims were not directed to a patent-ineligible natural phenomenon, the magnetic behavior of the PDC disclosed by the patent’s specification had only a loose causal connection to the claimed diamond grain size and catalyst concentration and thus the claims were directed to the abstract idea of that relationship.
The background of the Federal Circuit’s decision details several aspects of the claimed PDC relevant to the present appeal, including that “[m]any physical characteristics of the [diamond table] may be determined by measuring certain magnetic properties of the [diamond table].” The PDC serves as a diamond table for the hard metal composite substrate and several physical parameters of the compound are disclosed by the ‘502 patent, including magnetic saturation and coercivity. These parameters indicate the amount of metal catalyst in the diamond table made from PDC. Further, the ‘502 patent discloses that the claimed PCD compound exhibits “a higher coercivity, a lower specific magnetic saturation, or a lower specific permeability… than [diamond tables] formed at a lower sintering pressure.”
The Federal Circuit distinguished the present appeal from the Section 101 issues in Diamond v. Chakrabarty (1980), which apply to patents claiming laws of nature and not composition of matter claims. The Federal Circuit, applying Step 1 of Alice/Mayo to the ‘502 claims, found that they were directed at a specific and non-abstract matter composition. The Federal Circuit found that the recited properties… and their relation to the claimed PDC are the main issue in this case. Reading the claims as a whole and in light of their specification, the Federal Circuit found that the recited magnetic properties informs a skilled artisan about the PDC’s physical characteristics.
Constituent Elements of Claimed Compound Not Analogous to Generic Computers
The Federal Circuit faulted both the ITC’s Section 101 approach as well as the agency’s characterization of the claims and specification of the ‘502 patent. The disclosed magnetic properties satisfy Section 101 because “no perfect proxy is required between the recited material properties and the structure of the PDC.” Although the specification says that the physical characteristics “may” be determined by measuring magnetic properties, the appellate court reasoned that the described correlations are concrete and meaningful, not merely speculative.
The ITC found that US Synthetic did not prove that the recited magnetic properties are indicative of a specific microstructure during Section 337 proceedings, but the Federal Circuit determined that this violated the presumption of patent validity codified at 35 U.S.C. The Federal Circuit determined that this violated the presumption of patent validity codified at 35 U.S.C. The appellate court found that the claimed PDC of the ‘502 patent is “a physical composition defined by its constituent elements, dimensional information and inherent material properties”, unlike generic computer functionality. The appellate court found that unlike generic computer functionality, claimed PDCs of the ’502 patent were “a physical composition defined as a result of its constituent elements, dimension information, and inherent material characteristics.” This lack of enablement was rejected by the ITC as it relied solely on attorney arguments that the ‘502 claims required undue experimentation. The agency’s decision noted that respondents did not cite or discuss the undue experimental factors under the Federal Circuit 1980 In re Wands case. The Federal Circuit determined that the “unleached part” argument was not presented at the ITC, and forfeited. It also found that “loose and generic” language used in the ITC’s Section 101 assessment wasn’t enough to overturn the enablement ruling. Finding remaining arguments unpersuasive, the Federal Circuit remanded to the ITC for further proceedings.
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Author: almoond
Steve Brachmann
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
