A product defined by measured properties that the specification ties to its structure is not an abstract idea

2025-02-13Fed. Cir.

US Synthetic Corp. v. International Trade Commission, 128 F.4th 1272 (Fed. Cir. Feb. 13, 2025) (precedential) (Chen, J., joined by Dyk and Stoll, JJ.), No. 2023-1217, reversing in part the Commission's determination in Certain Polycrystalline Diamond Compacts and Articles Containing Same, Inv. No. 337-TA-1236

United States Patent No. 10,508,502 claims a polycrystalline diamond compact: a diamond table whose unleached portion has bonded grains averaging about 50 micrometers or less with cobalt catalyst between them, a coercivity of about 115 to about 250 oersteds, a specific permeability below about 0.10 G·cm3/g·Oe, a substrate bonded along a substantially planar interface, and a lateral dimension of about 0.8 to 1.9 centimeters. The administrative law judge found the claims infringed but held them directed to an abstract idea under Section 101 of Title 35 of the United States Code, and a divided Commission affirmed, treating the magnetic properties as side effects of an unclaimed manufacturing process. The Federal Circuit reversed in an opinion by Judge Chen, joined by Judges Dyk and Stoll. The specification explains that coercivity indicates the mean free path between diamond grains, and so the extent of diamond-to-diamond bonding, and that specific magnetic saturation indicates catalyst content, with working examples measured under ASTM standards against prior art samples. Reading the claims in that light, the court held them directed to a specific composition of matter, not an abstract idea. The Commission's demand for precision between the properties and the structure was "too exacting for § 101 purposes," and "no perfect proxy is required." The court distinguished the Commission's computer cases, declined to rule broadly on functional limitations, affirmed on enablement, and remanded.

What it changesThe decision concerns a material, and its rule carries to the hardware that artificial intelligence runs on. A claim to a physical thing, an accelerator, a memory arrangement, a photonic device, a sensor, may define it in part by measured properties rather than by every structural detail, provided the specification explains what structure each property indicates and supports the correlation with working examples measured by a stated method. That is what the Commission said was missing and the court found in the specification: statements that each property indicates a structural feature, a named test standard, and comparative data against the prior art. The court set the computer-implemented cases aside as having nothing to say about a physical composition, so a claim to a trained model defined by its accuracy or latency is unlikely to benefit; for a model the property is usually the result, not evidence of structure. Draft hardware claims with property limits tied to measured examples, and keep the measurement protocol in the specification.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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