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IP Alert: ITC Determines Claims to Diamond Drill Bits with Certain Physical Measures Are Not Patent-Eligible Under § 101

March 16, 2023

On October 26, 2022, in In the Matter of Certain Polycrystalline Diamond Compacts, the International Trade Commission (ITC) affirmed in part an Initial Determination (ID) that various respondents did not violate § 337 of the Tariff Act of 1930 after finding the asserted claims not patent-eligible under 35 U.S.C. § 101. The ID was part of the ITC’s investigation relating to US Synthetic Corporation’s complaint alleging that certain respondents violated § 337 by selling and importing products that infringed claims in US Synthetic’s patents. In the ID, the Administrative Law Judge found that at least one accused product infringed all asserted claims, but, because the claims were directed at non-patent-eligible subject matter, inter alia, § 337 was not violated.

US Synthetic’s patents relate to polycrystalline diamond compacts (PDCs) for use in various mechanical applications, including as an abrasive element in drill bits. In particular, the patents relate to enhanced PDCs that are made using specific manufacturing techniques and result in more durable drill bits. As the ID explained, although the claims recite compositions of matter not found in nature, they also define the invention in terms of structural and design features (e.g., specified grain size and a catalyst), performance measures (e.g., wear parameters and thermal stability), and side effects (e.g., various electrical and magnetic parameters). Claim 1 of U.S. Patent No. 10,507,565 listed below is representative:

1. A polycrystalline diamond compact, comprising:

a polycrystalline diamond table, at least an unleached portion of the polycrystalline diamond table including:

a plurality of diamond grains directly bonded together via diamond-to-diamond bonding to define interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or less;

a catalyst occupying at least a portion of the interstitial regions;

wherein the unleached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe or more;

wherein the unleached portion of the polycrystalline diamond table exhibits an average electrical conductivity of less than about 1200 S/m; and

wherein the unleached portion of the polycrystalline diamond table exhibits a Gratio of at least about 4.0×106; and

a substrate bonded to the polycrystalline diamond table.

As is customary under a § 101 analysis, the ITC applied the Alice test to determine patentable subject matter eligibility. At step one, the ITC considered whether the claims at issue were directed to a patent-ineligible concept. The respondents had initially alleged that the claimed properties were ineligible natural phenomena, and later argued they were abstract ideas. The ITC found no issue with the swap and, citing to American Axle—reported in a previous IP Alert here—explained that “[t]here is no indication in the case law that different principles or modes of analysis apply to the judicially recognized exceptions.”

To determine whether the claims were directed to the abstract idea, the ITC considered the patents’ specifications, in particular, the problem the inventors faced. The ITC found that the problem was the premature failure of PDCs, and the invention was focused on creating stronger PDCs by enhancing diamond-to-diamond bonding between the individual polycrystalline diamonds in the PDCs. The ITC then found the claims to be directed to the concept of PDCs that achieve certain performance measures, which it found to be an abstract idea under Alice step one. In support of its position, the ITC noted how the claimed PDC’s properties—for example, Gratio, thermal stability, electrical and magnetic properties—were not structural elements of the PDCs or indicative of specific microstructures, but resulted from the conditions and input materials that went into manufacturing the PDCs. Regarding the electric and magnetic properties specifically, the ITC noted that while these were indirect measures of other design choices and manufacturing variables, given the tenuous connection between the variables, such properties were “little more than side effects.”

The Final Determination by the ITC was not unanimous, however. In a dissent, Commissioner Schmidtlein expressed how she considered the claims to be directed to PDCs that were defined by specific, objective measurements, and were thus a patent-eligible composition of matter and not abstract under Alice. She noted how the patents’ specifications related the claimed properties with the PDC structure and that labeling and distinguishing certain claim elements as “performance standards” or “side effects” failed to appreciate the concreteness and objectivity of the properties for defining the invention. Commissioner Schmidtlein also disagreed with the majority’s application of the judicial exception doctrine for abstract ideas to claims it viewed as reciting compositions of matter, noting the lack of any precedential case law in which a claim to a composition of matter was deemed ineligible as an abstract idea.

This Final Determination represents a significant development in patentable subject matter doctrine, at least in the ITC, wherein the Commission applied the judicial exception doctrine for abstract ideas to claims that it viewed as being directed to compositions of matter. Commissioner Schmidtlein’s dissent evinces the tension existing between § 101 theory and application as courts continue to grapple with applying the Alice test to novel situations and inventions.

For more information on this holding, please contact Fitch Even associate Alvaro Cure Dominguez, author of this alert.


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