The Federal Circuit has issued a significant ruling in US Synthetic Corp. v. Int’l Trade Comm’n, reversing the ITC’s controversial decision that had invalidated composition of matter claims as abstract ideas. This case provides an important clarification on patent eligibility under Section 101 and limits the expansive application of the abstract idea doctrine in composition claims.
The Case at a Glance
US Synthetic Corp. (USS) had patented polycrystalline diamond compacts (PDCs) used in drill bits, with claims defining the PDCs by their material properties, such as coercivity and thermal stability. The ITC had determined that these claims were abstract because they described the PDCs through their functional properties rather than specific manufacturing steps. This decision faced criticism from industry groups, including PhRMA, for expanding the abstract idea analysis into composition claims, a move that could have undermined long-standing patent protections.
The Federal Circuit’s Reversal
Writing for a unanimous panel, Judge Chen rejected the ITC’s reasoning, affirming that the claimed material properties were concrete and measurable rather than abstract. The court emphasized that these properties are inherently tied to the PDC’s physical structure, stating that they are “integrally and necessarily intertwined” with the composition itself. In contrast to the ITC’s position that these characteristics were mere “side effects” of manufacturing, the Federal Circuit ruled that they meaningfully define the PDC’s structure and composition.
A key takeaway from the decision is that defining a composition of matter by its properties is distinct from claiming an abstract idea. While functional limitations alone may be problematic in software patents, in the realm of chemistry and materials science, such properties often provide crucial insights into the nature of the invention.
Implications for Patent Law
This decision preserves decades of precedent allowing composition claims to be defined by their physical and material properties. The ruling clarifies that:
- Material properties can be valid claim limitations: When properties correlate with structure, they can serve as legitimate definitional elements rather than abstract concepts.
- A perfect correlation is not required: The court acknowledged that while no property is a perfect proxy for a composition’s structure, a reasonable correlation is sufficient to support eligibility.
- Patent validity includes eligibility: The court reaffirmed that issued patents are presumed valid, including under Section 101, and criticized the ITC for imposing an incorrect burden of proof on USS.
A Narrow but Important Ruling
While this ruling provides reassurance for those in chemical and material sciences, it does not offer much relief for software-related patent eligibility. The court explicitly distinguished this case from software claims, noting that software’s functional limitations are often untethered to physical structures.
Additionally, the decision leaves open the broader question of when, if ever, a composition of matter claim could be considered an abstract idea. The court provided guidance by example rather than establishing a strict test, maintaining flexibility in future cases.
Final Thoughts
The Federal Circuit’s reversal of the ITC decision is a win for those who rely on composition of matter patents, particularly in the pharmaceutical and material sciences industries. By reinforcing that material properties can define a composition’s structure, the ruling ensures that such patents remain valid and enforceable. For patent practitioners, this case highlights the importance of clearly explaining how claimed properties relate to structure within the patent specification—a practice that is now more crucial than ever.