Scientifically Impossible Claims – Not Indefinite, But Not Enabled
In Satius Holding, LLC v. Samsung Electronics Co. Ltd., Appeal No. 25-1446, the Federal Circuit held that scientifically impossible-to-perform claims were not indefinite but were invalid for lack of enablement.
Satius sued Samsung, alleging infringement of a patent claiming “a communications apparatus for transmitting electric or electromagnetic signals over air.” In its claim construction order, the district court found the asserted claims were indefinite. The district court thus entered final judgement of invalidity, and Satius appealed.
The Federal Circuit held the district court’s indefiniteness finding was erroneous. The Federal Circuit noted that the asserted claims encompassed “transmitting electric or electromagnetic signals over the air,” and it was an “undisputed scientific impossibility” to transmit electric signals over the air. However, the court emphasized that impossibility is not the same as indefiniteness, and “there is no per se rule that a claim covering inoperable embodiments is necessarily indefinite.” Because the claims were “clear about what they cover,” the Federal Circuit concluded the claims were not indefinite.
Despite finding the claims were not indefinite, the Federal Circuit affirmed the judgment of invalidity for a different reason—lack of enablement. The court explained that the specification cannot enable the full scope of an invention where the claims encompass a scientific impossibility. Therefore, because the claims covered something impossible for a skilled artisan to make or use, the Federal Circuit concluded they were invalid for lack of enablement.
Metadata Matters: Microsoft Word Metadata Can Corroborate Conception
In Google LLC v. Valtrus Innovations Ltd., Appeal No. 24-1945, the Federal Circuit held that inventor testimony regarding conception date can be corroborated by the metadata of the inventor’s own files.
Google argued in an IPR that Valtrus’ patent was obvious in view of a patent application filed five weeks before Valtrus’ application. Valtrus argued the reference was not prior art under pre-AIA § 102(e) because Valtrus’ patent’s conception predated the reference’s filing. Valtrus supported its conception date with electronic files related to the invention’s disclosure and the metadata from those files. The PTAB concluded the reference was not prior art and held none of the patent’s claims were unpatentable. Google appealed.
The Federal Circuit affirmed. The Federal Circuit held that the Microsoft Word metadata accompanying the invention-disclosure files was independently generated rather than authored by the inventor. Thus, the file metadata could independently corroborate the inventor’s testimony about the conception date. The Federal Circuit also held that substantial evidence showed reasonably continuous diligence between just before the reference’s filing date and the filing of the patent’s application. The disputed 11 business day period included an inventor’s execution and mailing of an inventor declaration and the law firm’s preparation and filing of the application.
In Law360 Article, Sean Murray and Jeremiah Helm Explore Unanswered Questions in Federal Circuit Patent Marking Decision
In their latest Law360 column examining noteworthy IP decisions at the Federal Circuit, Knobbe Martens partners Sean Murray and Jeremiah Helm discuss VDPP LLC v. Volkswagen Group of America Inc.
The case focused on patent marking, a practice that can determine whether a patentee can recover presuit damages during patent infringement litigation. The Federal Circuit examined what happens if a patentee has licensed their patented technology, and how the licensee’s products are treated when determining whether the patentee complied with the marking requirement. The court ultimately affirmed the dismissal of VDPP’s infringement because it had not shown it made reasonable efforts to ensure its licensees marked the licensed products.
“The VDPP decision leaves several questions unanswered,” Murray and Helm write, including uncertainties around the extent of a patentee’s responsibility to enforce licensees’ contractual obligations to mark their products. The decision also has implications for the false marking statute, which subjects patentees to potentially substantial damages and penalties for marking a product that is not covered by the patent. The authors maintain: “If the patentee is not entirely certain a licensee’s product is covered, it must weigh the risk of falsely marking an unpatented product against the risk of failing to mark a patented product and forfeiting past damages in future lawsuits.” However, Murray and Helm conclude, “A patentee that performs a reasonable, good faith infringement analysis and documents it, will greatly reduce its risk of running afoul of either [the patent marking or false marking statute].”
Read the full Law360 article, “The Patent Circuit: Marking Duties For Licensed Tech,” here.
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