Overview
On October 1, 2026, the Court of Appeals for the Federal Circuit clarified the interplay between the indefiniteness and enablement requirements on review of a judgment of invalidity due to an “impossible” claim limitation. In Satius Holding v. Samsung Electronics, the Court concluded that a claim that includes a scientific impossibility may still be definite if it informs with reasonable certainty the scope of the invention. But such a claim would necessarily lack enablement on the grounds that the scientific impossibility cannot be made or used by a skilled artisan.
Background
In 2018, Satius Holding (Satius) sued Samsung Electronics (Samsung), in the U.S. District Court for the District of Delaware (the District Court), for allegedly infringing claims 1, 11 and 18 of U.S. Patent No. 6,711,385 (the ‘385 Patent). The claims of the ‘385 patent were generally directed to a “communication apparatus for transmitting electric or electromagnetic signals over air” that includes a coupler with a transformer for “communicating the electric or electromagnetic signals to the air”. See ‘385 Patent, Claim 1 (emphasis added).
During claim construction, Samsung argued that the claims were indefinite on the ground that the transmission of electric signals over air is “scientifically impossible.” The allegedly impossible language had apparently been copied from a previous patent application in which the signals were transmitted over electric lines, which would not be an impossibility. See Satius Holding, Inc. v. Samsung Elecs. Co., No. 1:18-cv-850-CJB, 2024 WL 5090284, at n. 6 (D. Del. Dec. 12, 2024) (Decision). While Satius argued that the claimed transmission of electric signals could, in some circumstances, be possible, the court ultimately sided with Samsung and held the asserted claim indefinite on the ground that one of its alternative embodiments was impossible to perform. Decision at *20 (relying on Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348 (Fed. Cir. 2020)).
The Federal Circuit Decision
On appeal, Satius argued that the claim preamble reciting “transmitting electric . . . signals over air” was not impossible but could instead refer to transforming the electric signal into an electromagnetic signal to be transmitted over air, consistent with subsequent recitations of “communicating the electric . . . signals to the air” in the body of the claim. See Satius Holding, Inc. v. Samsung Elecs. Co., Appeal No. 2025-1446, at *4 (Fed. Cir. Oct. 1, 2026). The Federal Circuit, however, was unconvinced, finding that Satius’s proposed interpretation would contradict the general assumption that “different terms have different meanings” and would “require rewriting claim 1 to provide for an electric-to-electromagnetic transformation step” that does not exist in the claim language. See id. at *5.
Turning to indefiniteness, the Court departed from the reasoning of the district court, finding that there was no disagreement among the parties as to the scope of the claimed language. Acknowledging that it “had previously held some impossible claims indefinite,” the Court stated that “there is no per se rule that a claim covering inoperable embodiments is necessarily indefinite.” See id. at *6. The Court thus concluded that the claims are definite. See id. at *6–7.
The Federal Circuit then exercised its discretion to consider the issue of enablement, though the district court had declined to rule on enablement as part of claim construction. See id. at *9. Finding that the claims recited a scientific impossibility, the Court concluded that the specification could not possibly “enable the full scope of the invention as defined by its claims” because the claims add “inoperable (and thus non-enabled) alternative embodiments to the scope of the invention.” See id. (emphasis in original).
Practical Implications
The background of Satius highlights the importance of careful and clear claim drafting, particularly in the context of incorporating claim language from related applications. The recitation of numerous alternatives, including those that, when combined, could lead to nonsensical or impossible results, may lead to a judgment of invalidity for lack of enabling the full scope of the claim. Claim drafters cannot rely on claim construction, as Satius did here, to try and redraft claims to make them operable or sustain their validity.
Satius also provides insight for patent litigants exploring strategies for waging early attacks on patent validity. While parties to patent litigation regularly contest the definiteness of claim limitations as part of claim construction under 35 U.S.C. § 112(b), the Court’s reasoning here demonstrates that parties should provide equal attention to potential invalidity arguments under 35 U.S.C. § 112(a). Using claim construction to establish that certain claim limitations or alternatives would lead to an impossible or inoperable result may provide a basis for an early motion to invalidate the claims under the Federal Circuit’s reasoning in Satius.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
