by Dennis Crouch
US Synthetic Corp. v. ITC, Docket No. 23-01217 (Fed. Cir., pending appeal)
The United States International Trade Commission (ITC) is often seen as a pro-patentee venue -- but not for US Synthetics and its attempts to enforce its patents covering drill bit diamond tips.
In its October 2022 decision, the ITC found the asserted claims of USS's US10508502 invalid under 35 U.S.C. § 101 even though the patent claims polycrystalline diamond compacts ("PDCs") used in drill bits and other applications. The ITC's decision is now on appeal to the Federal Circuit, with oral arguments set for October 8, 2024. PhRMA provided amicus support for the patentee, arguing that the ITC's decision represents an unprecedented expansion of abstract idea analysis to invalidate composition of matter claims. PhRMA contends such claims should be deemed inherently non-abstract and tangible, unlike computer programs that may rightfully be seen as mental processes or mathematical concepts.
Professor Jeffrey Lefstin (UC SF Law) provided an earlier blog post on the original ITC decision that included a detailed historical perspective on this case. Lefstin traced the evolution of functional claim language in patent law, from its initial rejection in cases like General Electric v. Wabash Appliance (1938) to its acceptance in In re Swinehart (1971). He argued that the ITC's decision in the PDC case, following the Federal Circuit's reasoning in American Axle, represents a dramatic shift away from decades of established patent jurisprudence. His analysis underscores the potential far-reaching implications of applying the American Axle framework to composition claims, suggesting it could invalidate many biotechnology patents and upend well-established enablement doctrines.
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