‘Indefiniteness is Not the Same as Impossibility,’ Says CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday issued a precedential decision affirming a finding of invalidity of certain claims of Satius Holding, LLC’s wireless communications patent, but holding that the district court’s reasoning, which focused on indefiniteness, was erroneous. Chief Judge Moore authored the opinion, joined by Judges Hughes and Lourie.

Satius owns U.S. Patent No. 6,711,385, which is titled “Coupler for wireless communications.” Satius sued Samsung Electronics America, Inc. for infringement of claims 1, 11, and 18 of the patent. Claims 11 and 18 were upheld as valid by the U.S. Patent and Trademark Office (USPTO) in reexamination, while indpenednet claim 1 was rejected. Following the reexam, the district court lifted a stay and ultimately concluded that all three claims were invalid as indefinite due to the language of claim 1, which recites “[a] communications apparatus for transmitting electric or electromagnetic signals over air.”

According to the district court, “it is an undisputed scientific impossibility to transmit electric signals over air” and therefore the claims must be found indefinite. The CAFC agreed that “there is no dispute between the parties that transmitting [an electric] signal over air is scientifically impossible,” but said that “[w]hile this impossibility raises serious concerns about claim 1’s validity,…we do not agree that it renders the claims indefinite.”

Satius argued that “transmitting electric . . . signals over air” is not impossible because the proper construction of the claim refers “to the fact that the electric signal [transmitted within the device] will be transformed into an electromagnetic signal, and then that electromagnetic signal is what will go out over the air and to its destination.” Claim 1 covers the transmission of signals in electric or electromagnetic form and a subsequent paragraph recites “a coupler connected to the transmitter, said coupler comprising a transformer having a non-magnetic core, said transformer communicating the electric or electromagnetic signals to the air…”

But the CAFC said that “[t]ransmitting signals over the air is not the same as transmitting signals to the air.” Furthermore, the claim’s preamble does not recite transforming an electric signal to an electromagnetic one that is then transmitted over the air, and construing it as such would require rewriting the claim to include a step that does not exist, said the CAFC.

Turning to whether the impossibility of the claim language renders the claim indefinite, the CAFC said it does not. “We conclude the claims are not indefinite because, although they encompass inoperable embodiments, the claims are clear about what they cover,” wrote the court.

Adding that “indefiniteness is not the same as impossibility,” Moore explained that “there is no per se rule that a claim covering inoperable embodiments is necessarily indefinite.” While the CAFC has held some inoperable claims to be indefinite, as in Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358 (Fed. Cir. 2021), here, “it would not be evident to a skilled artisan based on the specification that the claims do not set forth what the inventor regards as his invention because, in this case, both the claims and written description include the scientifically impossible language,” the opinion said.

Instead, whereas the district court declined to rule on enablement, determining it waived, the CAFC concluded it was appropriate to reach the issue here and found that the standard for enablement “cannot possibly be met when, as here, the claims include an express limitation that adds inoperable (and thus non-enabled) alternative embodiments to the scope of the invention.” In fact, said the court, ” it is so evident that the claims are not enabled based on reciting this scientific impossibility that it would serve no purpose to remand this case only for the district court to reach the same conclusion.”

Citing Amgen v. Sanofi, the opinion noted that “‘[t]he more one claims, the more one must enable’…and in this case, the claims fall woefully short of this burden.” The district court’s decision was thus affirmed