A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
CenTrak, Inc. v. Sonitor Technologies, Inc., No. 17-2510 (Fed. Cir. (D. Del.) Feb. 14, 2019). Opinion by Chen, joined by Reyna and Taranto.
Due to the presence of genuine disputes of material fact, the Federal Circuit reversed the district court’s decision to grant summary judgment that certain patent claims were invalid for lack of written description and were not infringed.
CenTrak sued Sonitor for infringement of a patent directed to systems for locating and identifying portable devices using ultrasonic base stations. All of the patent claims recite “ultrasonic” components, whereas the patent specification focused primarily on infrared or radio frequency components, with only two sentences devoted to ultrasonic technology. Sonitor argued that these two sentences did not show that the inventors possessed an ultrasound-based system. The district court agreed, and thus granted summary judgment of invalidity for lack of written description. Regarding noninfringement, the district court held that a defendant must be the actor who assembles the entire claimed system to be liable for direct infringement, and CenTrak had not submitted proof that Sonitor personnel had made an infringing assembly. The court thus granted summary judgment of noninfringement.
On appeal, the Federal Circuit reversed. As to written description, the Federal Circuit stated that “the fact that the bulk of the specification discusses a system with infrared components does not mean that the inventors did not also constructively reduce to practice a system with ultrasonic components.” For this reason and others, the court determined that there is a dispute of material fact as to whether the inventors actually possessed an ultrasonic system at the time they filed their patent application. Regarding noninfringement, Sonitor had argued that it does not supply certain components of the claimed invention, while CenTrak’s infringement theory centered on Sonitor “making” the invention by assembling the required components, even though someone else supplied some of them. The Federal Circuit explained that “a final assembler can be liable for making an infringing combination . . . even if it does not make each individual component element.” Here, evidence showing that Sonitor is the “final assembler” raised a triable issue of fact on infringement.