Docket No. 2017-2510
REYNA, TARANTO, CHEN
February 14, 2019
Brief summary: DC grant of SJ for invalidity for lack of WD and non-infringement reversed and remanded (e.g., “a reasonable jury could find that…Sonitor personnel complete at least a portion of the final system”).
Summary: Centrak appealed DC grant of SJ that several claims of US 8,604,909 relating to “systems for real-time location (RTL), which allow users to locate and identify portable devices in a facility” are invalid for lack of written description (WD) and not infringed. The FC panel opinion explains that “while all claims of the ‘909 patent recite ‘ultrasonic’ [US] components, the vast majority of the specification focuses on infrared (IR) or [radio frequency] RF components” (“[o]nly two sentences of the ‘909 patent’s specification discuss [US] technology”). The DC found a lack of WD under pre-AIA § 112 because “[m]ere contemplation…is not sufficient to meet the” WD requirement, and did not reach the enablement issues. The FC panel explained that WD “is about about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described” and “not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement issue” (Alcon, FC 2014). It concluded that genuine issues of material fact remain as to whether the WD requirement was met (e.g., whether use of US base stations requires more instruction that provided in specification…was Centrak “leaving it to the…industry to complete an unfinished invention”? (Novozymes, FC 2013)). The FC panel also explained that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes” (ScriptPro, FC 2016); distinguishing this case from Rivera, FC 2017 (no mention of claimed container) and Lockwood, FC 1997 (not entitled to earlier priority since no mention of claimed apparatus)).
Centrak alleged direct infringement under § 271(a), arguing “that Sonitor ‘makes’ infringing systems when it installs and configures the Sonitor Sense system”. The FC panel explained that “Sonitor does not sell all of the hardware necessary to practice the asserted claims”, and Sonitor argued “that the party assembling components into the claimed assembly ‘makes’ the patented invention, even when someone else supplies most of the components” (the “‘final assembler’ theory”). The DC agreed because “CenTrak had not submitted proof that Sonitor personnel had made an infringing assembly” and “[s]imply entering the data into a server does not constitute making the physical system claimed in the ‘909 patent.”) The FC panel explained that under Lifetime (FC 2017 (allegation that defendant installed seal on RV sufficient to state an infringement claim)) and Cross Medical (FC 2005) (no infringement by device maker, “if anyone makes the claimed apparatus, it is the surgeons”) (see also Centillion, FC 2011 (“[t]he customer, not Qwest, completes the system”)), “a final assembler can be liable for making an infringing combination…even if it does not make each individual component element.” Here, the FC panel found “a reasonable jury could find that…Sonitor personnel complete at least a portion of the final system” (“‘configured’ to infringe”) and, therefore, that the DC erred in ruling there were no issues of material fact. The DC decision was therefore reversed and remanded.