Satius Holding, LLC v. Samsung Electronics Co., Ltd.

Satius Holding, LLC v. Samsung Electronics Co., Ltd. The Federal Circuit held that the claims were not indefinite because their scope was reasonably certain even though they covered a scientifically impossible embodiment. The court nevertheless affirmed invalidity because the claims were not enabled under § 112(a): the full claim scope included an inoperable alternative that a skilled artisan could not make or use. The decision draws a sharp line between unclear claim scope and impossible claim scope: impossibility may defeat enablement even when it does not make the claim indefinite. Affirmed the district court’s final judgment of invalidity, but on lack-of-enablement grounds rather than indefiniteness. Costs awarded to Samsung. The court construed “transmitting electric . . . signals over air” to mean transmitting signals over air in electric form, rejecting Satius’s attempt to read in an electric-to-electromagnetic transformation step. Although that construction covered a scientific impossibility, the claims were definite because the bounds of the claim were clear; there is no per se rule that inoperable embodiments make a claim indefinite. The court distinguished cases where impossible or nonsensical language made it unclear what the inventor regarded as the invention. The Federal Circuit reached enablement despite the district court’s waiver concern because the issue was briefed, reviewed de novo, involved no factual dispute, and remand would serve no purpose. Because the claims expressly covered an impossible alternative embodiment, the specification could not enable the full scope of the claimed invention under § 112(a). § 112(a) § 112(b) claim construction precedential remand waiver / forfeiture § 112(a) § 112(b) claim construction waiver / forfeiture precedential remand § 112(a) § 112(b) claim construction precedential