Federal Circuit Summary
Before Reyna, Taranto, and Chen. Appeal from the United States District Court for the District of Delaware.
Summary: Where the complexity and predictability of a claimed embodiment were disputed, summary judgment finding inadequate written description was not appropriate. Additionally, a final assembler can be liable for making an infringing product even if it does not make each individual component element.
CenTrak sued Sonitor for infringement of its patent relating to systems for locating and identifying portable devices using ultrasonic base stations. Sonitor then moved for summary judgment of invalidity for lack of written description and non-infringement. The district court granted summary judgment of invalidity for lack of written description, finding that the specification primarily disclosed a system based on infrared (“IR”) technology and merely contemplated the claimed ultrasound-based system. The district court also granted summary judgment of non-infringement, finding that Sonitor did not “make” an infringing assembly by performing installations. CenTrak appealed.
The Federal Circuit found genuine issues of material fact, and thus reversed and remanded the district court’s grant of summary judgment of invalidity and non-infringement. The specification’s relative lack of attention to its ultrasonic embodiment compared to its IR embodiment did not show that the inventors failed to constructively reduce to practice a system with ultrasonic components. Further, the district court erred in failing to credit testimony from CenTrak’s expert and a named inventor that the differences between IR and ultrasound were incidental to carrying out the claimed invention. Regarding infringement by final assembly, 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. Because the record contained evidence that Sonitor oversaw the installation of the infringing product and configured the final product, the district court erred in ruling that there was no genuine issue of material fact.
This case is: CENTRAK, INC. v. SONITOR TECHNOLOGIES, INC.