Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in US Synthetic Corp. (“USS”) v. International Trade Commission, No. 2023-1217 (Feb. 13, 2025), holding that certain claims of U.S. Patent No. 10,508,502 (‘the ’502 patent”) are not directed to an abstract idea and are therefore patentable under 35 U.S.C. § 101. The Federal Circuit also found that the asserted claims complied with Section 112’s requirement for enablement as to the entire claim scope.
USS accused the Intervenors of violating 19 U.S.C. § 1337 by importing and selling products that infringe the ’502 patent. The ’502 patent covers a polycrystalline diamond compact used in drilling and mechanical applications. The Commission determined that the asserted claims were infringed and not invalid under 35 U.S.C. §§ 102, 103, or 112, but are patent ineligible under 35 U.S.C. § 101 as directed to an abstract idea. USS appealed the Commission’s § 101 ruling and the Intervenors argued as an alternative basis for invalidity that the asserted claims are not enabled under § 112.
The Federal Circuit reversed the Commission’s patent ineligibility determination, affirmed the Commission’s enablement conclusion, and remanded. In reversing the § 101 ineligibility determination, the Court held that the patent claims were not directed to an abstract idea, thus ending the inquiry at step one of the Court’s two-part patent eligibility test. Reading the claims in view of the specification, the Court concluded that the claims are directed to a specific, non-abstract composition of matter—specifically, a polycrystalline diamond compact (PDC)—"defined by its constituent elements, dimensional information, and inherent materials properties.” While the Commission had characterized the magnetic properties set forth in the claims as insufficiently tethered to structure, the Court explained that “the specification of the ’502 patent expressly provides the correlation between the claimed magnetic properties and the physical characteristics of the PDC composition.” As for the Intervenors’ enablement argument, the Court held the Commission did not err in rejecting it. Specifically, the Court noted that the Supreme Court’s decision in Amgen reinforced that a patent “specification may call for a reasonable amount of experimentation to make and use a patented invention.” The Court concluded that the Commission’s determination that the Intervenors failed to prove a lack of enablement applied the proper legal standard and reflected dutiful consideration of the evidence and arguments.
