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Composition-of-matter patents - Can claims drafting involve abstract ideas?
The life sciences and pharmaceuticals industries recently received some reassurance that properly drafted composition-of-matter patents can withstand subject-matter eligibility challenges. In upholding the validity of one such patent, the U.S. Court of Appeals for the Federal Circuit criticized the International Trade Commission’s (ITC’s) analysis as “too exacting.”
ITC digs in
US Synthetic Corporation (USS) filed a complaint with the ITC alleging that several other companies violated the Tariff Act by importing and selling products in the United States that infringe its patent. The patent is for a polycrystalline diamond compact (PDC) used in rotary drill bits for drilling and mining equipment. The ITC determined that the challenged patent claims were infringed.
However, it also found that the claims were patent ineligible under Section 101 of the Patent Act because they related to abstract ideas. The ineligibility ruling was the only thing preventing a Tariff Act violation based on infringement. USS appealed the invalidity ruling to the Federal Circuit.
Court drills down
Like the ITC, the Federal Circuit applied the two-part Alice test (named for the case where it originated) for patent eligibility. In step one, the court determines whether a claim is for a patent-ineligible concept, such as an abstract idea. If not, the inquiry ends. If so, the court then reviews whether the claim includes elements that transform it into a patent-eligible application of the concept.
The Federal Circuit parted ways with the ITC at the first step. It concluded that the challenged claims didn’t cover an abstract idea. Rather, they were directed to a specific composition of matter, a PDC, that was defined by its:
- Constituent elements (for example, diamond and cobalt catalyst),
- Particular dimensional information (for example, grain size), and
- Quantified material properties (certain magnetic properties).
The court explained that it reached its conclusion by reading the patent claims as a whole and in light of the specification. Noting that the dispute in the case revolved around the magnetic properties and their relationship to the PDC, it found that the specification described how the properties correlated to structural aspects of the PDC.
The ITC, however, had found that the relationship between the claimed magnetic properties and the PDC structure was “so loose and generalized that the claimed limitations appear to be little more than side effects” of a manufacturing process that wasn’t part of the claimed invention. The Federal Circuit rejected this characterization of the claims and specification.
Additional criticisms
The appeals court also criticized the ITC’s apparent expectations for precision between the recited properties and structural details of the claimed composition. The specification expressly provided the correlation between the claimed magnetic properties and the physical characteristics of the PDC composition. This was sufficient for the Sec. 101 analysis, where the goal is to determine whether a patent claim covers a specific implementation of an idea or just the idea itself. The court emphasized that a “perfect proxy” isn’t required between the recited material properties and the PDC’s structure.
Further, the Federal Circuit dismissed the ITC’s reliance on the specification’s use of the word “may” to support its position that the disclosed correlation between the structural and magnetic properties was too weak and equivocal. The commission, it said, overlooked the patent’s broader context — including several working examples demonstrating that the correlation was “concrete and meaningful,” not merely speculative.
The Federal Circuit took issue, as well, with the ITC’s reliance on several of the court’s earlier decisions in cases that primarily related to methods or systems found directed to abstract ideas because they performed functions using generic computer components. The court found these cases inapplicable because they didn’t relate to a physical composition of matter, like this case.
Mining the meaning
While this ruling is particularly welcome news for life sciences and pharmaceuticals patentees, its relevance extends to others, too. It drives home the importance of carefully crafting patents — especially specifications.
Sidebar: Enablement argument unable to invalidate patent
The other companies involved in US Synthetic (see main article) alternatively argued that the patent claims were invalid because they didn’t satisfy the enablement requirement. This mandates that the patent specification describe the claimed invention in such terms that a person skilled in the relevant field can make and use it.
A patent is “enabling” if, when the application is filed, such a person could read the specification and make and use the invention without “undue experimentation.” The International Trade Commission (ITC) found that the other companies hadn’t proven that undue experimentation would be necessary to do so.
The Federal Circuit affirmed the ITC on this point. It found that the commission adhered to the long-standing principle that a specification can require a reasonable amount of experimentation to enable a patented invention — with what’s reasonable in any case depending on the nature of the invention and the underlying art.
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