Holding: A claim that recites material properties to define structural characteristics of the claimed composition is not directed to an abstract idea that is patent ineligible under Section 101 when the specification clearly explains the correlation between the claimed properties and the structural characteristics.
US Synthetic filed a complaint with the International Trade Commission (ITC) after importation of certain products that they alleged to infringe U.S. Patent No. 10,508,502. An administrative law judge (ALJ) determined that claims 1, 2, 11, 15, and 21 of the ‘502 Patent were infringed, but found the asserted claims to be patent ineligible because they violate the abstract idea exception of 35 U.S.C. § 101. The ITC affirmed the finding of patent ineligibility under Section 101, and also affirmed the ALJ’s finding that the asserted claims were enabled under Section 112.
The ‘502 Patent claims a type of composition known as a polycrystalline diamond compact (PDC). A PDC is made from a polycrystalline diamond table bonded to a substrate. The diamond table is very abrasive, allowing PDCs to be used for drilling tools and machining equipment. The diamond table is bound to the substrate under conditions of high temperature and high pressure, and typically in the presence of a metal-solvent catalyst. The amount catalyst that is left in the PDC is typically reduced by a process called leaching, where the diamond table is submerged in an acid bath. However, the ’502 Patent claims a composition that is formed by a process that does not require leaching. This claimed composition is described in terms of several different parameters. In particular, the ’502 Patent claims a composition in terms of certain magnetic properties such as coercivity, specific magnetic saturation and specific permeability.
Under step one of the Alice analysis, the ALJ found that the structural and design features recited in the claims, such as the particular grain size and catalyst do not cause any issues under Alice in the Section 101 analysis. However, the ALJ found the magnetic properties recited in the claim to be merely unintended results or effects of the manufacturing process, and therefore, the claims of the ‘502 Patent are directed to an abstract idea. The ALJ further found the claims to lack an inventive concept under step two of the Alice analysis.
The Federal Circuit reversed the finding of the ITC, holding that the asserted claims of the ‘502 Patent are not directed to an abstract idea. The specification of the ‘502 Patent explicitly ties the claimed magnetic properties to the structural aspects of the claimed PDC. For example, the specification discloses that the coercivity of the PDC describes the mean free path between the diamond table’s neighboring diamond grains. The specific magnetic saturation correlates to the amount of metal-solvent catalyst present in the diamond table.
The Federal Circuit found the ITC’s standard for the relationship between a recited property and the claimed structure to be too strict for Section 101 analysis. This relationship does not require that the claimed property be a perfect proxy for structure which it describes, particularly when the specification expressly provides the correlation between the claimed property and the physical characteristics of the claimed composition. The ‘502 Patent claims a PDC that is not an abstract idea, but a physical composition of matter, that is defined by its constituent elements, dimensional information, and inherent material properties. These quantified material properties correlate to the structure of the diamond table of the PDC and inform a skilled artisan of the structural characteristics of the claimed PDC.
As to Section 112, the Federal Circuit affirmed the ITC’s decision that the ‘502 Patent is enabled. It is the burden of proof of the alleged infringer to show that the asserted claims are invalid for lack of enablement by clear and convincing evidence. Typically, the Wands factors are used to analyze enablement. However, the alleged infringers did not discuss or cite to the Wands factors in this case. Instead, the alleged infringers only used the testimony of US Synthetic’s experts to support their argument for lack of enablement. Instead, the ‘502 Patent includes detailed manufacturing information with working examples that would allow a person skilled in the art to make the claimed PDC.
Federal Circuit Precedential 
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