SATIUS HOLDING, LLC v. SAMSUNG ELECTRONICS CO. LTD.
Before Moore, Lourie, and Hughes. Appeal from the United States District Court for the District of Delaware.
Summary: 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.
Editor: Sean Murray
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