In US Synthetic Corp. v. ITC, the Federal Circuit issued a precedential decision providing useful guidance on the application of 35 U.S.C. § 101, which governs patent eligibility. Specifically, the court addressed whether the claims of U.S. Patent No. 10,508,502 (the ’502 patent) were directed to an abstract idea and thus ineligible for patent protection. The case offers valuable clarification on how to assess claims involving physical compositions of matter under the two-step framework established by the Supreme Court in Alice Corp. v. CLS Bank International.

Section 101 of the Patent Act allows patents for any new and useful process, machine, manufacture, or composition of matter. However, the Supreme Court has long recognized exceptions for laws of nature, natural phenomena, and abstract ideas. The Alice test provides a two-step analysis for determining patent eligibility. First, the court must determine whether the claims are directed to a patent-ineligible concept, such as an abstract idea. If the answer is yes, the second step requires determining whether the claims contain additional elements that transform the idea into a patent-eligible invention.

In this case, the court concluded at step one that the asserted claims of the ’502 patent were not directed to an abstract idea at all, making it unnecessary to proceed to step two. The claims described a polycrystalline diamond compact (PDC) with specific, measurable physical properties, including grain size, coercivity, specific magnetic saturation, and specific permeability. These properties correlate with the structure of the PDC and help define its physical characteristics. The court emphasized that these were not abstract concepts but rather well-defined aspects of a concrete physical product.

The U.S. International Trade Commission (ITC) had previously ruled that the claimed magnetic properties were merely side effects of the manufacturing process and thus did not sufficiently define the structure of the PDC. The Federal Circuit disagreed, explaining that the patent specification clearly established how the claimed properties related to the PDC’s physical structure. For example, the specification showed that coercivity correlates with the mean free path between diamond grains, which in turn indicates the extent of diamond-to-diamond bonding in the diamond table.

“Here, the ’502 patent demonstrates that the described correlations are concrete and meaningful, rather than something that is merely speculative.”

— US Synthetic Corp. v. ITC

The court also highlighted an important principle not frequently mentioned in § 101 analysis, namely, that issued patents are presumed valid, and it is not the patent owner’s burden to prove eligibility. Rather, the burden rests on the challenger to establish invalidity. The ITC’s failure to recognize this presumption of validity contributed to its erroneous conclusion.

This decision has significant implications for patent holders, particularly those with claims involving physical compositions of matter. It reinforces that claims tied to specific, measurable physical properties are less likely to be deemed abstract under § 101. Moving forward, patent applicants should ensure that their claims clearly define how measurable characteristics correlate with the claimed invention’s structure or function. The ruling also serves as a reminder that eligibility inquiries must be grounded in the context of the entire patent and not rely on rigid or overly narrow interpretations of claim language. By clarifying the scope of the Alice test for physical compositions, this decision offers valuable predictability for inventors seeking to protect material innovations.

The full decision can be found at the link below:

https://www.cafc.uscourts.gov/opinions-orders/23-1217.OPINION.2-13-2025_2467516.pdf

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