Authored by: Jeremy J. Gustrowsky
In a significant decision for the materials science and drilling industries, the Federal Circuit has reversed a prior ruling by the International Trade Commission (ITC) and found that US Synthetic Corp.’s patent on polycrystalline diamond compacts (PDCs), U.S. Patent No. 10,508,502, is patent-eligible under U.S. law. The case centered on whether the claims of this patent, which define a specific composition of matter using both structural features and measurable magnetic properties, were too abstract to qualify for patent protection.
The ITC had previously ruled that the patent’s claims were ineligible, arguing that the magnetic properties described—such as coercivity and specific magnetic saturation—were merely side effects of the manufacturing process and not concrete structural features. However, the Federal Circuit disagreed, emphasizing that these magnetic properties are not just incidental results but are directly tied to the physical structure of the diamond compact. The court noted that the patent’s specification clearly explains how these properties correlate with the diamond table’s microstructure, providing meaningful, objective measurements that define the invention.
Additionally, the court addressed arguments that the patent was not sufficiently “enabled”—meaning that a person skilled in the art could not make or use the invention without undue experimentation. The Federal Circuit affirmed the ITC’s finding that the challengers had not proven this by clear and convincing evidence. The patent’s detailed examples and manufacturing information were found to be adequate for someone in the field to reproduce the claimed PDCs.
This decision is important because it clarifies that patents claiming new materials can use measurable properties, like magnetic characteristics, to define what is new and inventive about their products. As long as these properties are meaningfully connected to the structure of the invention and are clearly described, such claims are not considered abstract ideas and can be eligible for patent protection.