Creating 35 U.S.C. § 101 precedent at the Federal Circuit for US Synthetic  

Finnegan secured a significant victory for client US Synthetic Corp. (USS) after the U.S. Court of Appeals for the Federal Circuit overturned an unfavorable 35 U.S.C. § 101 eligibility ruling from the International Trade Commission (ITC). USS is a leading manufacturer of synthetic diamond products used in drilling applications. The company specializes in polycrystalline diamond compacts (PDCs), which are widely utilized in oil and gas drilling, mining, and industrial cutting tools for their durability and wear resistance.

USS filed a Section 337 complaint at the ITC alleging patent infringement based on patents covering PDCs and their material properties. The administrative law judge (ALJ) initially found the asserted claims valid, infringed, and enabled, but ultimately concluded they were ineligible under 35 U.S.C. § 101. The ALJ ruled that the patent was directed to an abstract idea rather than a specific composition of matter, suggesting that the claimed material properties were merely side effects rather than structural characteristics of the compound. The ITC upheld the § 101 eligibility ruling. USS appealed the ITC’s decision to the U.S. Court of Appeals for the Federal Circuit, arguing that the case appeared to be the first time a composition of matter had been deemed an ineligible abstract idea.

In a precedential opinion, the Federal Circuit reversed the ITC’s decision. The Court concluded that the claims are directed to a specific, non-abstract composition of matter and not an abstract idea, explaining that the claimed material properties further define the structural characteristics of the claimed product. This precedential decision remanded the case back to the ITC, where the asserted claims had already been found to have been infringed.