Judge Burke issued an interesting claim construction opinion on Thursday of last week, invalidating a claim where one of two ways to infringe was scientifically impossible.
One claim limitation was set forth in the alternative:
A communications apparatus for transmitting electric or electromagnetic signals over air
Satius Holding, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 18-850-CJB (D. Del. Dec. 12, 2024).
The parties agreed the it is "scientifically possible" to transmit "electromagnetic signals" over air, but the defendant argued that it was impossible to transmit "electric" signals over the air:
Defendants assert that one of those two options—“transmitting electric . . . signals over air”—amounts to a scientific impossibility, since it is “a matter of basic science that only electromagnetic signals can propagate in air, electric signals cannot.” . . .
The Court found that it was more or less undisputed that transmitting "electric" signals over air was scientifically impossible:
In light of Defendants’ argument, the first question for the Court is: “Is transmitting electric signals over air a scientific impossibility?” On this point, there is no real dispute. Defendants’ expert, Dr. Jonathan Wells, explains that “[a]n electromagnetic wave or signal cannot propagate through any transmission medium (e.g., air or vacuum) without an electric field component and a magnetic field component.” . . . And, “[a] wireless signal cannot exist as only an electric field or only as a magnetic field; a wireless signal can only exist as a combined electric and magnetic (i.e., electromagnetic) field.” . . . This means that “[a]ny signal that propagates wirelessly must be an electromagnetic wave[.]” (Id.) So, “the only signals that can travel in air are electromagnetic signals[, and i]f an electric signal is not an electromagnetic signal, it cannot be transmitted over air.” . . . Plaintiff does not ever directly contest Dr. Wells’ testimony on these points.
. . .
[T]he Court goes forward with the understanding that: (1) it is a scientific impossibility to transmit an electric signal over air; but (2) term 1 facially requires that one permutation of the claimed apparatus be able to do this.
After the Court determined that one of the two ways of meeting the claim elements was impossible, the plaintiff argued that the other way—electromagnetic signals—was sufficient to save the claim. Not so, according the the Court:
Defendants say that by reciting a scientific impossibility, the term must be indefinite. Plaintiff responds by arguing that even if Defendants are correct that it is impossible to transmit electric signals over air, since term 1 provides an alternative that is possible (i.e., transmitting electromagnetic signals over air), then the term is not indefinite, because a POSITA would still be able to practice the invention. . . .
Plaintiff wishes the Court to rewrite the claim language so that instead of reading “[a] communications apparatus for transmitting electric or electromagnetic signals over air” the claim were to read “[a] communications apparatus for transmitting electromagnetic signals over air[.]” But that is not what the patentee wrote.
The Court described the Federal Circuit's opinion in Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348 (Fed. Cir. 2020), where the court invalidated a claim that had three ways to infringe, two of which were indefinite as means-plus-function claims lacking corresponding structure.
Ultimately, after a review of the case law, the Court determined that the same result should hold true where one of two alternatives was scientifically impossible:
Here, as in Cochlear Bone we have a claim term with multiple alternatives, and one of those alternatives is impossible to perform. Thus it stands to reason that, as the Federal Circuit advised in Cochlear Bone, here term 1 is indefinite as a result. . . . In the end, as to claim 1 as a whole, the patentee simply did not “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regard[ed] as the invention.” 35 U.S.C. § 112(b).
The Court held that the claim was indefinite.
Smart Argument by the Defendant
This is obviously a great result for the defendant—the Court invalidated the asserted independent claim at the claim construction stage.
The way that they argued it was clever. A run-of-the-mill indefiniteness argument, which we've all seen a hundred times, would look something like this:
Claim 1 is indefinite to a person of skill in the art because it claims both "electric" and "electromagnetic" signals as alternatives, and a person of skill in the art would understand that all "electric" signals also have magnetic fields, rendering them "electromagnetic."
That could have worked, maybe, but the chances feel much lower to me than what they actually did, which was more like:
Claim 1 is indefinite to a person of skill in the art because it claims both "electric" and "electronic" transmission of signals over the air, and a person of skill in the art knows that transmission of an "electric" signal over the air is impossible because it necessarily involves a magnetic field, rendering it "electromagnetic."
It's the same basic idea either way, but in my opinion the "it's impossible" framing lands so much better. The run-of-the-mill framing sounds like a vague point about semantics, and invites the typical discussion from the Court about what a person of skill in the art would understand.
The "it's impossible" framing, on the other hand, makes this a straightforward factual issue: is over-the-air "electric" signal transmission impossible, or not? Once the Court found that it was impossible, it didn't really need to get deep into the trickier question of what a person of skill in the art would think.
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