Key Points

  • Claims encompassing scientifically impossible embodiments are not necessarily indefinite if a skilled artisan understands what the claims cover.
  • Indefiniteness under Section 112(b) concerns clarity of scope, not operability of the claimed invention.
  • The Federal Circuit distinguished Synchronoss, where impossible claims were indefinite because the specification showed the claims did not reflect the inventor's actual invention.
  • Claims that explicitly recite a scientific impossibility fail enablement under Section 112(a) because the specification cannot teach how to make or use something that violates physical laws.
  • The court reached enablement as a pure question of law despite the district court's refusal to rule on it below.

The Federal Circuit ruled Thursday that patent claims covering a scientific impossibility are not necessarily indefinite, but affirmed that such claims fail the separate requirement of enablement, handing Samsung a win in a long-running wireless patent dispute.

In Satius Holding, LLC v. Samsung Electronics Co., a unanimous panel reversed the district court's conclusion that three claims of U.S. Patent No. 6,711,385 were indefinite because they encompassed transmitting electric signals over air, which the parties agreed was physically impossible. Chief Judge Moore, writing for the court, held that indefiniteness concerns clarity of scope, not whether a claimed invention can actually work.

"We conclude the claims are definite notwithstanding their recitation of a scientific impossibility," Moore wrote. But the panel then reached an issue the district court had declined to decide, holding that the same claims failed for lack of enablement because the patent specification cannot teach skilled artisans to make or use something that violates the laws of physics.

The ruling draws a doctrinal line: whether claims covering inoperable embodiments are indefinite under Nautilus, Inc. v. Biosig Instruments, Inc., requiring that claims inform skilled artisans about their scope with reasonable certainty. The Federal Circuit rejected that framing.

"Indefiniteness is not the same as impossibility," Moore wrote. She cited the court's 1993 decision in Miles Laboratories, Inc. v. Shandon Inc., which held that "an invention's operability may say nothing about a skilled artisan's understanding of the bounds of the claim."

The patent at issue, owned by Satius, covers a communications apparatus including a coupler for matching the impedance of air with that of a wireless transmitter and receiver. Claim 1 recites an apparatus "for transmitting electric or electromagnetic signals over air." The parties did not dispute that electromagnetic signals can be transmitted wirelessly, but agreed that transmitting electric signals over air is scientifically impossible.

Satius had sued Samsung in the District of Delaware in 2018, alleging infringement of claims 1, 11, and 18. After the Patent and Trademark Office rejected independent claim 1 but upheld the dependent claims during reexamination, the district court lifted a stay and proceeded to claim construction. Magistrate Judge Christopher J. Burke concluded all three claims were indefinite and entered final judgment for Samsung.

On appeal, Satius argued that the claim language should be construed to avoid the impossibility by reading "transmitting electric signals over air" to describe an internal signal that is converted to electromagnetic form before transmission. The Federal Circuit declined, holding that such a construction would impermissibly rewrite the claim.

"While we generally avoid construing claims in a manner that would create a nonsensical result, we 'may not redraft claims . . . to make them operable or to sustain their validity,'" Moore wrote, quoting the court's 2004 decision in Chef America, Inc. v. Lamb-Weston, Inc.

But the court rejected the district court's conclusion that this impossibility rendered the claims indefinite. The panel distinguished Synchronoss Technologies, Inc. v. Dropbox, Inc., a 2021 Federal Circuit case where the court held impossible claims indefinite because they were "nonsensical" and a skilled artisan would understand from the specification that the claims did not set forth what the inventor regarded as his invention.

Here, Moore wrote, both the claims and the written description included the scientifically impossible language. The court noted that Samsung itself had argued below that the claim "unmistakably" covered a physical impossibility, undermining any argument that the scope was unclear. "The definiteness requirement . . . mandates clarity, while recognizing that absolute precision is unattainable," Moore wrote, quoting Nautilus.

In a footnote, the court rejected expert testimony from Samsung's witness, Dr. Wells, who had stated that transmitting non-electromagnetic signals over air "does not have any meaning" to a skilled artisan. Moore called this "conclusory extrinsic evidence" that contradicted Samsung's own litigation position. "There is no such per se rule" that impossibility equals indefiniteness, the court held.

Having reversed on indefiniteness, the panel turned to enablement, an issue the district court had flagged but declined to reach. Under 35 U.S.C. Section 112(a), a patent specification must enable skilled artisans to make and use the full scope of the claimed invention. The Supreme Court reinforced this requirement in its 2023 Amgen Inc. v. Sanofi decision.

The Federal Circuit concluded that the claims could not satisfy this standard. "The more one claims, the more one must enable," Moore wrote, quoting Amgen. "Because the claims explicitly cover a scientific impossibility that cannot be made or used by a skilled artisan, we conclude they are invalid for lack of enablement under 35 U.S.C. Section 112(a)."

The court cited its 2007 decision in Liebel-Flarsheim Co. v. Medrad, Inc., which held that where claims lack an express limitation, the full scope must be enabled even if certain embodiments within that scope are difficult or impossible to practice. Here, the court applied the principle in reverse: where claims expressly include inoperable alternatives, enablement fails because the specification cannot teach what physics forbids.

The panel affirmed the district court's final judgment of invalidity and awarded costs to Samsung. Judges Lourie and Hughes joined the opinion.