915 F.3d 1360
Fed. Cir.2019Background
- CenTrak sued Sonitor for infringement of U.S. Patent No. 8,604,909, which claims RTL systems using ultrasonic base stations that transmit location codes to portable tags and use RF infrastructure and a server for synchronization and reporting.
- The ’909 specification primarily describes IR embodiments; only two sentences expressly mention ultrasonic base stations and receivers. The patent is a divisional of an IR-focused parent application.
- Sonitor sells RF gateways, ultrasonic transmitters, and tags, and provides software; installation/configuration practices (who installs hardware, who configures server/location codes) were disputed.
- District court granted Sonitor summary judgment that most asserted claims were invalid for lack of written description and that Sonitor did not directly infringe (no single actor made the entire claimed system).
- On appeal CenTrak pursued only a § 271(a) direct-infringement theory alleging Sonitor “makes” infringing systems when it installs/configures equipment and enters location codes.
- Federal Circuit reversed and remanded, finding genuine disputes of material fact on written description and on whether Sonitor can be liable as the final assembler; it declined to decide enablement on appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Written description support for ultrasonic embodiment | ’909 expressly contemplates ultrasonic base stations; skilled artisan would understand inventors possessed ultrasonic embodiment without granular implementation details | Specification’s brief mention of ultrasound is insufficient; IR and ultrasound are fundamentally different and require different solutions (so no possession) | Reversed: genuine factual dispute exists whether the specification reasonably conveys possession of an ultrasonic embodiment; summary judgment improper |
| Enablement of ultrasonic claims | (CenTrak noted enablement but primarily argued written description) | Sonitor urged enablement failure if written description reversal denied | Not decided on appeal; court declined to reach enablement and left for district court on remand |
| Direct infringement — “making” via installation/configuration (final-assembler theory) | Sonitor performs final acts (configuring system, entering location codes, tuning) and thus can be the final assembler who “makes” the claimed system | Sonitor does not provide several claimed elements (backbone, server hardware, Wi‑Fi APs); like Centillion, a single actor must combine all claim elements to “make” the system | Reversed: material factual disputes exist whether Sonitor (or its agents) performs the final assembly/configuration that would constitute making; summary judgment improper |
| Timeliness/preservation of infringement theories | CenTrak preserved theories (installation, configuration, data entry) in opposition and discovery; evidence supports triable issues | Sonitor argued theories (configuration/data entry) were untimely or not properly pleaded/disclosed | Court: CenTrak’s theories were adequately preserved; denial of Sonitor’s timeliness objection and factual disputes remain for remand |
Key Cases Cited
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.) (en banc) (written description standard; possession requirement)
- ScriptPro LLC v. Innovation Assocs., Inc., 833 F.3d 1336 (Fed. Cir.) (focus on one embodiment does not bar other expressly contemplated embodiments)
- Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc., 631 F.3d 1279 (Fed. Cir.) (to “make” a claimed system one must combine all claim elements; software provider did not make system)
- Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir.) (surgeons who assemble device in patient may be the actor that makes the claimed apparatus)
- Lifetime Indus., Inc. v. Trim‑Lok, Inc., 869 F.3d 1372 (Fed. Cir.) (installing a component onto another party’s product can state a claim for direct infringement by assembling the claimed combination)
- Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir.) (distinguishing written description from enablement; written description shows claimed subject matter corresponds to disclosure)
- Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed. Cir.) (written description ensures claim scope does not overreach inventor’s contribution)