by Dennis Crouch
The Federal Circuit has reversed a controversial ITC decision that had invalidated composition of matter claims as abstract ideas. US Synthetic Corp. v. Int'l Trade Comm'n, No. 23-1217 (Fed. Cir. Feb. 13, 2025). This case marks an important limitation on the seemingly ever-expanding realm of patent ineligibility under Section 101. Writing for a unanimous panel, Judge Chen wrote that US Synthetic's patent claims covering polycrystalline diamond compacts (PDCs) used in drill bits are patent eligible, rejecting the ITC's determination that claims defining a composition by its material properties could be deemed abstract ideas.
As I wrote in an October 2024 post, this case raised fundamental questions about whether composition of matter claims could ever be considered abstract ideas simply because they included functional limitations or defined the composition through its properties rather than manufacturing steps. The ITC's decision had drawn criticism from PhRMA and others as an unprecedented expansion of abstract idea analysis.
At oral arguments, Judge Dyk explained that the court was taking the case seriously:
This case is breaking new territory. If we were to affirm, then this very crude tool of patentability, known as patent eligibility, start running random through composition of matter claims, just as it has through computer software and diagnostic claims.
Oral args at 15:10.