In this important precedent decision, the Federal Circuit reversed the U.S. International Trade Commission’s (ITC) finding that composition-of-matter claims of U.S. Patent No. 10,508,502 ('502 Patent) were directed to an abstract idea under Section 101. This case received much attention from the biopharmaceutical and life sciences industries where composition-of-matter claims are vital to protecting their innovations defined by measurable material properties.

US Synthetic Corp. (USS) filed a complaint alleging infringement of its five patents including the '502 Patent.  The administrative law judge (ALJ) at the ITC determined that asserted claims of the'502 patent were infringed, but found them patent ineligible under § 101.

The representative Claim 1 of the '502 patent recites as follows:

A polycrystalline diamond compact, comprising:
a polycrystalline diamond table, at least an un-leached portion of the polycrystalline diamond table including:
a plurality of diamond grains bonded together via diamond-to-diamond bonding to define interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or less; and
a catalyst including cobalt, the catalyst occupying at least a portion of the interstitial regions;
wherein the un-leached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe to about 250 Oe;
wherein the un-leached portion of the polycrystalline diamond table exhibits a specific permeability less than about 0.10 G∙cm3/g∙Oe; and
a substrate bonded to the polycrystalline diamond table along an interfacial surface, the interfacial surface exhibiting a substantially planar topography;
wherein a lateral dimension of the polycrystalline diamond table is about 0.8 cm to about 1.9 cm.

The ALJ applied Alice's two-step test and concluded that the asserted claims are directed to an abstract idea.  Specifically, at Alice step one, the ALJ determined that the claims “recite certain structural and design features,” such as “a particular grain size and catalyst” but determined that the recited magnetic properties, in the ALJ’s view, are merely “results or effects [of the manufacturing process] and thus abstract.”  A divided Commission affirmed, rejecting USS’s argument that magnetic properties are structural or indicative of structure, and instead agreeing with the ALJ that the claimed properties were not a sufficiently concrete structure.

In an opinion authored by Judge Chen, the Federal Circuit found that quantified material properties (i.e., coercivity and specific permeability) recited in the claim are sufficient enough to structurally define the claimed product polycrystalline diamond compact (PDC), along with its constituent elements such as diamond table and a substrate and particular dimensional information (i.e., grain size, lateral dimension of the diamond table).  The Court rejected the ITC’s position that the magnetic properties were merely side effects of a manufacturing process, and noted that the patent specification sufficiently discloses a correlation between the magnetic properties and the structure of the such that the claimed magnetic properties further define the structural characteristics of the claimed product.

This decision provides that composition-of-matter claims are unlikely to be found ineligible under § 101 as abstract ideas as long as the specification provides some causal connection between the claimed composition and the measured properties.  Ultimately, this decision provides a clear guidance on establishing eligibility of composition-of-matter patents.