As we have highlighted this week, three cases scheduled to be argued in October at the Federal Circuit attracted amicus briefs. One of those cases is US Synthetic Corp. v. International Trade Commission. In this case, US Synthetic appeals a judgment of the International Trade Commission, which found patent claims invalid for being directed to a patent-ineligible abstract idea. This is our argument preview.
In its opening brief, US Synthetic argues that, “[u]nder step one” of Alice Corp. v. CLS Bank International, “the Commission creates an arbitrary structure/nonstructural distinction, improperly labeling measurements of [polycrystalline diamond compact or] PDC properties as ‘side effects’ and ‘desired results’ in a way that misunderstands the underlying technology.” It notes the “Final Determination also errs under Alice step two, failing to analyze each Asserted Claim in its ordered combination as directed by the Supreme Court, effectively collapsing the two-step Alice test into a one-step test.”
In its response brief, the International Trade Commission argues “the Commission properly applied the Supreme Court’s and this Court’s [35 U.S.C.] § 101 precedent to the asserted claims.”
A corrected brief of intervenors was filed by SF Diamond Co. SF Diamond USA, Inc., Iljin Diamond Co., Ltd., Iljin Holdings Co., Ltd., Iljin USA Inc., Iljin Europe GmBh, Iljin Japan Co., Ltd., Iljin China Co., Ltd., International Diamond Services, Inc., Zhengzhou New Asia Superhard Material Composite Co., Ltd., Shenzhen Haimingrun Super Hard Materials Co., Ltd., and Guandong Juxin New Material Technology Co., Ltd. in support of the Commission and its affirmance. They argue the “Commission’s finding of no violation is supported by substantial evidence and should be affirmed.” In particular, they contend, the Commision’s “finding that the asserted claims are invalid—whether for claiming ineligible subject matter or, alternatively, because the patent specification fails to enable the full claim scope—should be affirmed because the claims do not include limitations on ‘how’ claimed functions are achieved.”
In its reply brief, US Synthetic argues the claims “are directed” to a “composition of matter; they are not directed to an ‘abstract idea.'” Regarding the first step of Alice, it maintains the government and the intervenors “do not cite any case holding that a nonnaturally occurring composition of matter with different characteristics from those found in nature—like the PDC at issue here—is ineligible subject matter.” Regarding the second step, US Synthetic contends that, while the government and intervenors “allege that the products are ‘conventional,'” they “can only show conventionality by discarding multiple claimed features as ‘side effects’ and analyzing the remaining features independent of one another.” In short, its “invention is not nature’s handiwork.”
This case attracted an amicus brief from Pharmaceutical Research and Manufacturers of America in support of US Synthetic and reversal.
Oral argument is scheduled to be heard on Tuesday, October 8. We will keep track of this case and report on any developments.