A claim that covers something that cannot work is definite, and it is invalid for lack of enablement

2026-10-01Fed. Cir.

Satius Holding, LLC v. Samsung Electronics Co., Ltd., No. 2025-1446 (Fed. Cir. Oct. 1, 2026) (precedential) (Moore, C.J., joined by Lourie and Hughes, JJ.), affirming on other grounds a judgment of the United States District Court for the District of Delaware; see also Pioneer Hi-Bred International, Inc. v. Inari Agriculture, Inc., No. 2025-1287 (Fed. Cir. Oct. 2, 2026) (nonprecedential)

United States Patent No. 6,711,385 claims a communications apparatus "for transmitting electric or electromagnetic signals over air," with a transmitter and a coupler whose non-magnetic core transformer matches the transmitter's output impedance to the characteristic impedance of the air. Both sides agreed that an electric signal cannot be transmitted over air, and the district court held the claims indefinite under Section 112(b) of Title 35 of the United States Code on that basis. The Federal Circuit disagreed on indefiniteness, holding that indefiniteness is not the same as impossibility and that claims which encompass inoperable embodiments can still be clear about what they cover, but affirmed the judgment of invalidity on a ground the district court had declined to reach: the specification must enable the full scope of the claims, and a claim that explicitly covers something a skilled artisan cannot make or use is not enabled, citing Amgen Inc. v. Sanofi and EMI Group North America, Inc. v. Cypress Semiconductor Corp. The court refused Satius's proposed construction, under which the electric signal would be converted to an electromagnetic one before reaching the air, because that step is not in the claim and a court may not redraft claims to make them operable. The following day, in Pioneer Hi-Bred, a different panel affirmed a post-grant review decision holding claims to a genus of dual-function herbicide-degrading enzymes not enabled by two working examples, and held that experimental data generated after the priority date may be used to show that the genus did not behave as the specification predicted.

What it changesThe exposure in machine learning claims is the list of alternatives: a claim that recites a model that is "a neural network, a decision tree, a support vector machine or a rule-based classifier," or training "on labeled or unlabeled data," covers every alternative, and under this decision every alternative has to work for the claimed purpose as described, because the court will not read the failing one out of the claim later. Review each alternative in the independent claims against the specification and ask whether it is shown to work; move the ones included only for breadth into dependent claims or leave them in the specification. Pioneer Hi-Bred is the second edge of the same rule for claims that recite a model trained to produce a result: two worked examples do not enable the genus, and the opponent may run the untested configurations after the fact and put the failures in evidence, so an application on a training method should report results across the range of architectures, data regimes and tasks the claims cover, and the claims should stop where the results do.

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