Clearly Impossible: Federal Circuit Issues Precedential Ruling in Patent Claim Interpretation

I. Summary:

In a recent precedential decision that came out on October 1, 2026 (Satius Holding v. Samsung Electronics), the Federal Circuit held that a claim covering a scientifically impossible alternative embodiment may be clear, i.e., definite in its scope, but because an impossible alternative embodiment cannot be made or used, its inclusion may render the claim invalid for lack of enablement. The Federal Circuit therefore rejected the district court’s indefiniteness analysis but affirmed the judgment of invalidity on enablement grounds. Patent claim drafters should pay attention to this ruling to avoid facing hidden risks later at a litigation stage even if the patent is granted by the USPTO and is valuable on its face based on the apparent breadth of claim scope.

II. District Court:

In 2018, Satius Holding (Satius) sued Samsung Electronics (Samsung) in the district court of Delaware, alleging infringement of claims 1, 11, and 18 of U.S. Patent No. 6,711,385, which concerns a coupler for wireless communications. At issue was language in claim 1 describing “a communications apparatus for transmitting electric or electromagnetic signals over air” and a coupler that includes “a transformer communicating the electric or electromagnetic signals to the air.” (Emphasis added.) The use of “or” made the claim broad enough to encompass both electric and electromagnetic signals transmitted over air, setting up the dispute over the scientifically impossible electric-signal alternative.

Samsung argued that the claims were indefinite, i.e., claim scope is not clear, because transmitting electric signals “over air” is scientifically impossible. In Samsung’s view, the phrase “communicating electric signals to the air” merely indicates that electric signals can pass through the communications apparatus. The phrase does not mean electric signals can propagate through the air, as the phrase “over air” would otherwise suggest. See Satius Holding, Inc. v. Samsung Elecs. Co., No. 1:18-cv-850-CJB, D.I. 254, at 6 n.4 (D. Del. Dec. 12, 2024) (Decision).

Samsung therefore argued that the phrase “transmitting electric . . . signals over air” describes a scientific impossibility because “only electromagnetic signals can propagate in air, electric signals cannot.” Id. at 9. Electric signals, Samsung maintained, must instead be transmitted “by voltage or through a conductive medium, like a wire.” Id.

The district court sided with Samsung and concluded that the phrase “transmitting electric or electromagnetic signals over air” recites two alternatives, one of which is scientifically impossible. Id. at 18. Relying on Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, 958 F.3d 1348 (Fed. Cir. 2020), the court held claims 1, 11, and 18 indefinite (i.e., unclear) and therefore invalid. Id. at 19–21. The issue of lack of enablement was waived at the district court level.

III. Federal Circuit[1]:

On appeal, Satius argued that the district court erred in holding claims 1, 11, and 18 indefinite. Samsung defended the indefiniteness ruling. In the alternative, Samsung argued that the claims were invalid for lack of enablement. See Satius Holding, LLC, FKA Satius Holding, Inc. v. Samsung Elecs. Co., No. 2025-1446, slip op. at 3 (Fed. Cir. Oct. 1, 2026).

a. Indefiniteness:

Like the district court, the Federal Circuit concluded that claim 1 covers communications apparatuses that transmit over air either electric signals or electromagnetic signals. The parties did not dispute that transmitting electric signals over air is scientifically impossible. Id. at 4.

The Federal Circuit emphasized that “[i]ndefiniteness is not the same as impossibility.” Although a claim may be indefinite if it is so nonsensical that a skilled artisan may struggle to discern its scope, there is no categorical rule that a claim covering inoperable embodiments is necessarily indefinite or unclear. Id. at 5–6.

The Federal Circuit held the claims, though impossible, were definite because their scope was clear. The claim language and written description expressly included the scientifically impossible alternative, leaving no basis to construe the claims to exclude it. Id. at 6.

b. Enablement:

The Federal Circuit, however, affirmed the judgment of invalidity for lack of enablement. Because the claims expressly covered a scientifically impossible alternative that could not be made or used by a skilled artisan, the specification, irrespective of clarity, could not enable the claims’ full scope. Id. at 9.

IV. Practical Takeaways for Claim Drafting Practitioners and Portfolio Strategists:

Draft claims with the full scope in mind. Overambitious efforts to broaden a claim by adding alternatives may create enablement problems if the specification does not enable every alternative or if any alternative is impossible.

• Here, the word “or” materially broadened the claim by adding a scientifically impossible alternative. The broad scope of the claims probably encouraged Satius to file an infringement lawsuit in the first place, and the possibility of collecting past damages probably influenced their decision to continue the fight at the Federal Circuit level. However, the overbreadth eventually rendered the claim invalid as lacking enablement.
• If alternative embodiments are to be covered, it is better to draft separate sets of claims, so that one set of claims can be deleted if needed to preserve the validity of the rest of the claims. This approach may trigger restriction issues, but is safer in the long run.

Keep indefiniteness and enablement distinct. Indefiniteness asks whether a skilled artisan can determine a claim’s scope with reasonable certainty. Enablement asks whether the specification teaches a skilled artisan to make and use the full scope of the claimed invention.

Evidence that a claimed alternative is impossible or inoperable may support an enablement challenge, but it does not necessarily render the claim unclear or indefinite.

[1] The ’385 patent was filed in 2000 and had an adjusted expiration date (including 448 days of patent term extension) of September 27, 2021. Patent owner Satius filed the suit in Delaware district court when the patent was still active. However, the patent had expired by the time of the appeal. It is to be noted that patent expiration bars recovery for post-expiration activity but does not preclude past damages, i.e., damages for infringement occurring before expiration, subject to the six-year limitation in 35 U.S.C. § 286.

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