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US Synthetic secures ITC exclusion order barring polycrystalline diamond compacts (PDCs)

US Synthetic Corporation

SF Diamond Co., Ltd. of China et al

Finnegan secured a decisive victory for client US Synthetic Corp. (USS) at the U.S. International Trade Commission in Investigation No. 337-TA-1236, a Section 337 case involving polycrystalline diamond compacts (PDCs) and articles containing the same. In the merits phase, the ALJ found that claims 1, 2, 11, 15, and 21 of U.S. Patent No. 10,508,502 were infringed, not invalid under 35 U.S.C. §§ 102, 103, or 112, and supported by the economic prong of the domestic-industry requirement. As the Federal Circuit later recognized, only the Commission’s initial § 101 ruling prevented a Section 337 violation finding on the ’502 patent.

 

Finnegan then secured a landmark precedential Federal Circuit win for USS that cleared the path to final relief. The Court reversed the Commission’s § 101 ruling and held that the ’502 claims are directed to a specific, non-abstract composition of matter—not an abstract idea—while also affirming the Commission’s rejection of respondents’ enablement challenge and remanding for further proceedings. Finnegan then successfully defeated Respondents’ efforts to obtain rehearing and a stay of the mandate, and returned the case to the Commission for completion of the ITC relief phase.

 

On remand, the Commission found a violation of Section 337. It held that respondents Iljin, SF Diamond, New Asia, IDS, Haimingrun, Juxin, CR Gems, Jingrui, and Wanlong imported or sold infringing products covered by claims 1, 2, 11, 15, and 21 of the ’502 patent, affirmed that USS satisfied the economic prong of domestic industry, and issued a limited exclusion order barring infringing PDCs and articles containing the same—including PDC cutters, drill bits including PDC cutters, and PDC bearings and bearing elements—from entering the United States. The result protects USS’s patented technology and blocks infringing products from the U.S. market.

Certain Polycrystalline Diamond Compacts and Articles Containing Same, 337-TA-1236, ITC, Judge Elliot

Related Professionals

Daniel C. Cooley
Partner
Reston, VA
+1 571 203 2778
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James R. Barney
Partner
Washington, DC
+1 202 408 4412
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Smith R. Brittingham IV
Partner
Washington, DC
+1 202 408 4158
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Mareesa A. Frederick
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+1 202 408 4383
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J. Derek McCorquindale
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+1 571 203 2768
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Brandon T. Andersen
Associate
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+1 571 203 2713
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Alexander E. Harding
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+1 202 408 4324
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Christina Ji-Hye Yang
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+1 202 408 4465
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Kelly S. Horn
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Related Practices

Global IP Enforcement, Litigation, and Trials

Patent Litigation and Trials

ITC Section 337 Investigations and Trials

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Manufacturing

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