“Final Assembler” Infringement Theory Directed to Jury
CenTrak, Inc. v. Sonitor Technologies, Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. Feb. 14, 2019) (Reyna, Taranto, CHEN) (D. Del.: Andrews) (2 of 5 stars)
Fed Cir reverses summary judgments of invalidity (lack of description) and noninfringement. CenTrak’s patent relates to systems for real-time location (“RTL”), which allows users to locate and identify portable devices in a facility such as a hospital. Most of the description related to infrared (“IR”)-type systems; there was less discussion in the patent of ultrasound-based systems, which the asserted claims addressed.
Written description: The district court erred in finding no material fact question that CenTrak’s patent failed to adequately describe an ultrasound-based system. The opinion emphasizes the differences between the written description and enablement requirements, and reasons that fact questions remain as to whether those of skill would understand, as CenTrak contended, “that the inventors had possession of RTL systems that could use either IR or ultrasound, and not merely an unformed with or plan for an ultrasound alternative.” Op. at 9. Per ScriptPro, 833 F.3d 1336 (Fed. Cir. 2016), that CenTrak’s specification focused on one embodiment, though contemplating others, did not alone limit the described invention. Lockwood, 107 F.3d 1565 (Fed. Cir. 1997), is not contrary because that case involved a patent’s complete non-reference to the claimed limitation. CenTrak’s specifically at least mentioned ultrasonic embodiments. The opinion rejects Sonitor’s argument that CenTrak’s ultrasonic-oriented claims were “akin to claiming a vast genus based on a limited disclosure of a species,” noting that at least some of the claimed components do not depend on IR or ultrasound. Op. at 12.
Infringement: The opinion rejects Sonitor’s argument that the infringement theory CenTrak presents on appeal was not developed in district court. It describes how CenTrak’s summary judgment papers preserved the argument, and rejects Sonitor’s claim that CenTrak did not develop the theory during discovery, noting that Sonitor never appears to have pressed the issue or moved to compel. The district court erred in reasoning that CenTrak could not prevail on infringement because it was undisputed that Sonitor “does not provide certain elements in the accused systems” (e.g., backbone network, Wi-Fi access points). CenTrak’s infringement theory was not that Sonitor itself conveyed every element to customers, but that it was a “final assembler” that brought all the elements together at a customer site to make the patented system. The opinion describes how this is distinguishable from Centillion, 631 F.3d 1279 (Fed. Cir. 2011), which the district court had relied on; in Centillion the named defendant did not infringe because it did not “combine all the claim elements,” but left that to customers, whereas here CenTrak alleges Sonitor is the “final assembler.” The opinion reviews CenTrak’s cited evidence under this framework and finds a triable fact issue.
Issues not taken up: The Fed Cir declines to determine whether the invalidity determination could be affirmed on an enablement theory because the district court had issued no determination on that issue. It also declines to grant CenTrak’s request for an order of additional discovery targeting one of Sonitor’s defenses, rejecting CenTrak’s argument that the defense was not timely disclosed, but leaving the issue to the district court’s discretion.
KEYWORDS: SUMMARY JUDGMENT; NO WRITTEN DESCRIPTION (NO); NONINFRINGEMENT (NO)