Federal Circuit Affirms That Composition of Matter Claims are Directed to Patentable Subject Matter

The U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the U.S. International Trade Commission (ITC) that certain “composition of matter” claims granted to US Synthetic were directed to a patent ineligible abstract idea under 35 U.S.C. § 101. US Synthetic Corp. v. International Trade Commission, No. 23-1217 (Fed. Cir. February 13, 2025). This case provides further support for the patentability of certain claims directed to compositions of matter.

Defining an “abstract idea” for purposes of patentable subject matter eligibility within the Alice/Mayo framework continues to be one of the more challenging aspects of U.S. patent prosecution. While such patentable subject matter issues have become routine in certain technology areas (software, business methods, diagnostic methods, etc.), composition of matter claims have generally been regarded as safely directed to patentable subject matter. In its 2022 decision, however, the U.S. International Trade Commission (ITC), turned this assumption on its head, deciding that the composition of matter claims of US Patent No. 10,508,502 (the ‘502 patent) are directed to an abstract idea, and thus are directed to patent ineligible subject matter. On appeal, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed this decision. Accordingly, U.S. patent practitioners now have increased certainty that their composition of matter claims are directed to patent eligible subject matter and have another tool to counter arguments to the contrary.

Specifically, in U.S. Synthetic Corp. (USS) v. International Trade Commission ITC), No. 23-1217 (Fed. Cir. February 13, 2025), the CAFC reversed the ITC’s determination in a Section 337 proceeding that the composition of matter claims of the ‘502 patent are directed to an “abstract idea” and, therefore, are invalid under 35 U.S.C. § 101. Even though the ITC concluded that the ‘502 patent claims are not per se directed to a patent-ineligible “natural phenomenon”, the magnetic behavior disclosed in the ‘502 patent for the claimed PDC was seen as having only a loose causal connection to the claimed diamond grain size and catalyst concentration, and thus the claims were directed to the abstract idea of this causal relationship.

In this regard, the ‘502 patent claims at issue are directed to a polycrystalline diamond complex (PDC) and recite structural elements of the PDC.  As claimed in the ‘502 patent, the PDC includes a polycrystalline diamond table bonded to a substrate.  At least an “unleached portion” of the polycrystalline diamond table is recited in the claims, in part, as a “plurality of diamond grains bonded together via diamond-to-diamond bonding to define interstitial regions.”

In addition to these structural elements of the PDC, the ‘502 patent claims recite physical parameters of the diamond table, including specified levels of coercivity, permeability, and magnetic saturation.  Essentially, a relatively larger coercivity indicates a smaller mean free path which means “more diamond-to-diamond bonding” in the diamond table.  Additionally, “a relatively larger magnetic saturation” indicates “relatively more metal solvent catalyst” in the diamond table.  The ‘502 patent further provides examples demonstrating that the diamond table of the claimed PDC exhibits less catalyst and a lower mean free path than the prior art.

Initially, the ITC determined that the relationship between the recited magnetic properties and the structure of the PDC is “loose and generalized” and that the recited magnetic properties are just “side effects” of the manufacturing process used to make the PDC.  Accordingly, the ITC determined that the ‘502 patent claims failed Step 1 of the Alice/Mayo test and are thus directed to an abstract idea, based almost entirely on this characterization of the recited magnetic properties.

The CAFC disagreed with the ITC and overturned their decision, specifically faulting the ITC for applying Step 1 of the Alice/Mayo test too narrowly in characterizing the magnetic properties of the PDC as “side effects” of the unclaimed manufacturing process for obtaining the PDC. Instead, the CAFC asserted the proper focus should have been on the physical characteristics of the claimed PDC itself. It was viewed as important by the CAFC that the structural features of the ’502 patent claims were explicitly tied to measured magnetic properties, demonstrating their criticality.

In reaching this decision, the CAFC focused on the fact that the ‘502 patent claims are directed to the PDC “composition of matter itself – not the method of manufacturing the PDC.” Accordingly, the CAFC held that the correlations are “concrete and meaningful” and that the properties define structural aspects of the PDC. Reading the claims as a whole, and in light of the specification, the CAFC found that the recited magnetic properties merely inform a skilled artisan about the PDC’s physical characteristics. Accordingly, the CAFC viewed the ‘502 patent’s claims as directed to a specific, non-abstract composition of matter, and thus in compliance with 35 U.S.C. § 101. The CAFC stated that the disclosed relationship between the magnetic properties and the structure of the PDC was sufficient for purposes of determining patentable subject matter. As such, the CAFC remanded the case to the ITC for further proceedings.

Importantly, however, the CAFC distinguished the present case from prior CAFC cases related to methods or systems held to be abstract ideas, particularly distinguishing the claims at issue from generic computers.  Specifically, the CAFC stated that “the claimed PDC is not an abstract result of generic computer functionality but instead is a physical composition of matter defined by its constituent elements, dimensional information, and inherent material properties.”

Accordingly, the holding in this case reinforces the general understanding that claims reciting new compositions of matter are not directed to an “abstract idea” and constitute patent eligible subject matter.