# Claims confirmed in reexamination still fell on enablement.

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.

Sources checked October 29, 2026

**Claims 11 and 18** were confirmed in ex parte reexamination, then held invalid for lack of enablement.

## Two tracks, one patent

The district court stayed the case between Satius and Samsung pending ex parte reexamination at the USPTO. Satius v. Samsung

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. In re Satius

## What the court held

The Federal Circuit reversed the district court’s indefiniteness ruling. An inoperable embodiment isn’t indefinite per se. Satius v. Samsung

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. Satius v. Samsung

In a separate nonprecedential decision, the court dismissed the appeal from the Board’s rejection of claim 1 as moot. In re Satius

## Read the limits

Ex parte reexamination is based on patents and printed publications. 35 U.S.C. §§ 301, 302 The Office examines § 112 issues there only for new or amended claims, so original claims aren’t tested for enablement. MPEP § 2258

The main opinion is precedential. The decision in the reexamination appeal is nonprecedential. Satius v. Samsung In re Satius

## The takeaway

A claim confirmed in reexamination can still fall in court on enablement, a ground reexamination doesn’t test for original claims.

## Related stories

- [Most third-party ex parte reexaminations change the claims.](https://postgrantproceeding.com/insights/t02-most-third-party-reexams-end-with-changed-claims)
- [Ex parte reexamination requests about doubled in fiscal 2026.](https://postgrantproceeding.com/insights/t01-ex-parte-reexam-requests-about-doubled-in-fy2026)
- [Apparent Office error outweighed a trial date in Padagis.](https://postgrantproceeding.com/insights/d19-the-same-statute-opened-one-door-and-closed-eighteen)

## Sources

- S101. Satius Holding, LLC v. Samsung Electronics Co., Ltd., No. 2025-1446 (Fed. Cir. Oct. 1, 2026) (precedential). https://www.cafc.uscourts.gov/opinions-orders/25-1446.OPINION.10-1-2026_2764674.pdf
- S102. In re Satius Holding, Inc., No. 2025-1444 (Fed. Cir. Oct. 1, 2026) (nonprecedential) (appeal from reexamination 90/014,826 dismissed as moot). https://www.cafc.uscourts.gov/opinions-orders/25-1444.OPINION.10-1-2026_2764684.pdf
- S13. Federal patent statutes, 35 U.S.C. §§ 253(a), 301, 302, 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html
- S108. USPTO, Manual of Patent Examining Procedure § 2258, Scope of Ex Parte Reexamination. https://www.uspto.gov/web/offices/pac/mpep/s2258.html

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.

General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.