A district court stayed Satius’s case against Samsung for ex parte reexamination. There, the examiner confirmed dependent claims 11 and 18 and rejected claim 1. On October 1, 2026, the U.S. Court of Appeals for the Federal Circuit held all three claims invalid for lack of enablement under § 112(a) and affirmed the judgment of invalidity.
Part 1 of 3
The district court stayed the case between Satius and Samsung pending ex parte reexamination at the USPTO.
Claim 1 rejected. Dependent claims 11 and 18 confirmed.
Claims 1, 11, and 18 invalid for lack of enablement.
In reexamination 90/014,826, the examiner confirmed dependent claims 11 and 18 and rejected claim 1. The Board then rejected claim 1 as obvious on a new ground.
Part 2 of 3
The Federal Circuit reversed the district court’s indefiniteness ruling. An inoperable embodiment isn’t indefinite per se.
The district court hadn’t ruled on enablement. The Federal Circuit decided it on appeal, held claims 1, 11, and 18 invalid for lack of enablement under § 112(a), and affirmed the judgment.
In a separate nonprecedential decision, the court dismissed the appeal from the Board’s rejection of claim 1 as moot.
Part 3 of 3
Ex parte reexamination is based on patents and printed publications. The Office examines § 112 issues there only for new or amended claims, so original claims aren’t tested for enablement.
The main opinion is precedential. The decision in the reexamination appeal is nonprecedential.
The takeaway
A claim confirmed in reexamination can still fall in court on enablement, a ground reexamination doesn’t test for original claims.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.