US Synthetic Corp. v. International Trade Commission

 
APPEAL NO.
23-1217
OP. BELOW
ITC
SUBJECT
Patent
AUTHOR
Chen

Issue(s) Presented

1. “Did the International Trade Commission (‘Commission’) err when it found that claims 1, 2, 11, 15, and 21 of U.S. Patent No. 10,508,502 (‘the ‘502 patent’) are directed to an abstract idea and therefore ineligible under 35 U.S.C. § 101?”

2. “In light of the Commission’s findings of fact supported by substantial evidence, . . . are the asserted claims invalid for failing to comply with Section 112’s requirement for enablement to the entire claim scope?”

Holding

1. “Applying Alice step one, we conclude that the asserted claims of the ’502 patent are not directed to an abstract idea. Rather, the claims are directed to a specific, non-abstract composition of matter—[polycrystalline diamond compact]—that is defined by its constituent elements (i.e., diamond, cobalt catalyst, substrate), particular dimensional information (i.e., grain size, lateral dimension of the diamond table), and quantified material properties (i.e., coercivity, specific permeability, and specific magnetic saturation), whereby the material properties correlate to the diamond table’s structure and thereby further inform a skilled artisan about what the claimed PDC is.”

2. “We . . . affirm the Commission’s conclusion that Respondents failed to prove the asserted claims are not enabled, and remand.”