Satius Holding, LLC v. Samsung Electronics Co. (Fed. Cir. Oct. 1, 2026)

10.7.26

Background

In 2018, Satius sued Samsung in the District of Delaware for infringing U.S. Patent No. 6,711,385, which claimed a communications apparatus that matched a transmitter’s output impedance to the characteristic impedance of the air. Claim 1’s preamble recited an apparatus “for transmitting electric or electromagnetic signals over air.” The district court held all three claims indefinite due to the preamble’s recitation of transmitting electric signals over air, which the parties agreed was a scientific impossibility.

Issues

The Federal Circuit first reviewed whether a claim that covered a scientifically impossible embodiment was indefinite under § 112(b). The Cour also reviewed Samsung’s alternative ground for affirmance that the claims failed the enablement requirement of § 112(a).

Holding

The Federal Circuit held that impossibility was not indefiniteness. To reach that holding, it had to deal with Synchronoss Technologies v. Dropbox (Fed. Cir. 2021), which held claims indefinite because they required an impossibility. The Federal Circuit distinguished Synchronous noting that the claims in that case were also nonsensical. The mismatch between claims and disclosure was the real defect. The Satius court found no such mismatch in the ‘385 patent. The patent’s specification repeated the impossible language, whose scope the parties and the court agreed was clear, just impossible. Because the claim’s boundaries were knowable, the court concluded that it satisfied § 112(b).

On enablement, however, the court exercised its discretion to decide the issue for the first time on appeal. The court held this course proper because the issue was fully briefed, no facts were in dispute, and a remand would have been pointless. Applying Amgen, the court held that the specification had to enable the claim’s full scope, and that an inoperable alternative embodiment could never be enabled. The claim was therefore invalid.

Takeaways

This case refines the Court’s precedent regarding impossible inventions. A claim that recites an impossibility is indefinite when the impossibility makes its scope unclear or departs from the disclosed invention. Otherwise, the impossibility challenge belongs under enablement. For the patentee, this was a doctrinal win with no practical benefit: the claim still died, only under a different doctrine. This case also serves as a drafting warning about disjunctive claim language. Prosecutors should carefully evaluate each “or” alternative to determine if it is operable and enabled. Even a single impossible alternative can invalidate the entire claim.

Andrew T. Ball | Associate Attorney