Federal Circuit Affirms Invalidity Challenge to Scientifically Impossible Claim Language on Enablement Grounds

In Satius Holding, LLC v. Samsung Electronics Co., Ltd., No. 25-1446 (Fed. Cir. Oct. 1, 2026), the Federal Circuit affirmed an invalidity finding for Satius’ U.S. Patent No. 6,711,385 but did so on enablement grounds rather than the indefiniteness grounds relied on by the district court. 

Satius sued Samsung for infringement of the ’385 patent, which claims a communications apparatus capable of transmitting electric (along with electromagnetic) signals over air—a feat that both parties agreed is scientifically impossible. As a result, the district court held the asserted claims indefinite and entered a final judgment of invalidity in favor of Samsung. Satius appealed, challenging the finding of indefiniteness. In reply, Samsung argued that the claims were invalid for lack of enablement even if found to be definite.

On appeal, the Federal Circuit rejected the district court's indefiniteness ruling, holding that, despite the scientific impossibility of transmitting electric signals over air, the claims still allow a skilled artisan to understand the scope of the invention with reasonable certainty, thus satisfying the definiteness requirement. The Court nevertheless affirmed invalidity on enablement grounds, exercising its discretion to reach the issue because it had been fully briefed on appeal. Emphasizing that § 112(a) requires the specification to enable the full scope of the claims, the Court held that claims encompassing a scientifically impossible embodiment are inoperable and therefore not enabled.