from the United States District Court for the District of
Delaware in No. 1:14-cv-00183-RGA, Judge Richard G. Andrews.
Jeffrey I. Kaplan, Kaplan, Breyer, Schwarz, LLP, Matawan, NJ,
argued for plaintiff-appellant. Also represented by Joseph W.
Bain, Shutts & Bowen LLP, West Palm Beach, FL.
B. Blumenfeld, Morris, Nichols, Arsht & Tun-nell LLP,
Wilmington, DE, argued for defendant-appellee. Also
represented by Jennifer Ying.
Reyna, Taranto, and Chen, Circuit Judges.
Inc. sued Sonitor Technologies, Inc. for alleged infringement
of U.S. Patent No. 8, 604, 909 ('909 patent), which
claims systems for locating and identifying portable devices
using ultrasonic base stations. The district court granted
Sonitor's motions for summary judgment that claims 1, 7,
8, 16, 18, 21, 22, and 26 are invalid for lack of written
description and that claims 1, 7, 8, 16, 18, 21, and 22 are
not infringed. Because the district court erred in
determining that there were no genuine disputes of material
fact on both issues, we reverse and remand for further
'909 patent is entitled "Methods and Systems for
Synchronized Ultrasonic Real Time Location." The
'909 patent relates to systems for real-time location
(RTL), which allow users to locate and identify portable
devices in a facility. '909 patent col. 1 ll. 16-19,
23-24. Hospitals, for example, might use RTL systems to track
equipment and patients. The asserted claims generally recite
the following components: (1) ultrasonic (US) base stations;
(2) portable devices (i.e., tags); (3) a server; (4)
radio frequency (RF) base stations; and (5) a backbone
network that connects the server with the RF base stations.
See, e.g., id. claim 1. The ultrasonic base
stations can be mounted in various fixed locations in a
facility, see id. col. 4 ll. 37-45, such as rooms in
a hospital, and the portable devices can be attached to
people or assets that move between rooms, see id.
col. 4 ll. 60-65. Each portable device is configured to
detect the ultrasonic location codes from the nearby
ultrasonic base stations and "transmit an output signal
including a portable device ID representative of the portable
device and the detected ultrasonic location code."
Id., Abstract. While the portable devices receive
location codes from ultrasonic base stations via ultrasound,
they might transmit location and device information via RF to
an RF base station. Id. col. 2 ll. 59-62. The RF
base station then transmits the location and device ID
information obtained from the portable devices to the server.
See id. col. 2 ll. 56-66.
power, the ultrasonic base stations and portable devices do
not transmit or receive location information constantly;
instead, they transmit and receive at predetermined times.
Id. col. 3 ll. 56-61. To ensure that the components
remain synchronized, the RF base station can periodically
transmit "timing synchronization information (TSI) that
may provide a unified time of origin to all nodes in the
system." Id. col. 3 ll. 51-56.
1. A system for determining a location and an identity of a
portable device, the system comprising:
means for transmitting timing synchronization information
including a plurality of RF transceivers coupled to a
backbone network and a time server generating the timing
wherein each of the plurality of RF transceivers periodically
transmits a request to the time server to receive the timing
a plurality of stationary ultrasonic base stations, each
ultrasonic base station configured to receive the timing
synchronization information and to transmit a corresponding
ultrasonic location code in a time period based on the
received timing synchronization information, each ultrasonic
location code representative of a location of the respective
ultrasonic base station; and
a plurality of portable devices, each portable device
configured to 1) receive the timing synchronization
information, 2) detect the ultrasonic location codes from the
ultrasonic base stations and 3) transmit an output signal
including a portable device ID representative of the portable
device and the detected location code,
wherein each portable device is synchronized to detect the
ultrasonic location code in the time period based on the
received timing synchronization information.
Id. col. 14 ll. 25-49.
while all claims of the '909 patent recite
"ultrasonic" components, the vast majority of the
specification focuses on infrared (IR) or RF components.
See, e.g., id. fig. 1 (depicting infrared
base stations labeled "IR-BS"). The '909 patent
is a divisional of an application that became U.S. Patent No.
8, 139, 945, which contains claims that are similar to the
ones in the '909 patent but that recite IR technology
instead of ultrasonic technology for communications from the
base stations to nearby portable devices. Only two sentences
of the '909 patent's specification discuss ultrasonic
Although IR base stations 106 are described, it is
contemplated that the base stations 106 may also be
configured to transmit a corresponding BS-ID by an ultrasonic
signal, such that base stations 106 may represent ultrasonic
base stations. Accordingly, portable devices 108 may be
configured to include an ultrasonic receiver to receive the
BS-ID from an ultrasonic base station.
Id. col. 5 ll. 5-11.
accused Sonitor Sense system includes three pieces of
hardware sold by Sonitor: RF "gateways," ultrasonic
location transmitters, and portable locator tags.
See J.A. 642. Sonitor also provides software for
installation on a customer's server hardware. J.A. 491 at
25:8-11. When these components are integrated with a
customer's existing network and server hardware, CenTrak
argues that the resulting system infringes the '909
parties dispute whether Sonitor personnel or third parties
(who might or might not be hired by Sonitor) physically
install the Sonitor hardware in client hospitals.
Sonitor's vice president testified that after the
hardware is installed, Sonitor personnel go on site and
"configure" the system. See J.A. 2130 at
27:8-13. CenTrak argues that the configuration entails
bringing location transmitters online as part of a
facility's existing network. Appellant Br. 12-13 (citing
J.A. 476 at 42:2-14). According to Soni-tor's vice
president, Sonitor personnel also perform "data
entry" in the server to map the locations of various
ultrasonic transmitters to their physical locations in a
building. Appellant Br. 14; J.A. 2745 at 29:5-23.
accuses Sonitor of infringing claims 1, 7, 8, 16, 18, 21, 22,
and 26 of the '909 patent. CenTrak, Inc. v. Soni-tor
Techs., Inc., No. CV 14-183-RGA, 2017 WL 3730617, at *1
(D. Del. Aug. 30, 2017). Sonitor does not sell all of the
hardware necessary to practice the asserted claims, so while
CenTrak asserted various theories of infringement before the
district court, on appeal, CenTrak has only pursued a theory
under 35 U.S.C. § 271(a) that Sonitor "makes"
infringing systems when it installs and configures the
Sonitor Sense system. See Appellant Br. 1, 23.
Cen-Trak asserts only direct infringement. J.A. 2823 at 47:3-
filed motions for summary judgment of non-infringement, J.A.
89, and invalidity for lack of written description and
enablement, J.A. 3831.
main non-infringement argument was that Sonitor does not
make, use, or sell certain elements recited in the claims,
including the required backbone network, Wi-Fi access points,
or server hardware. J.A. 95. CenTrak responded that the party
assembling components into the claimed assembly
"makes" the patented invention, even when someone
else supplies most of the components. J.A. 129. The district
court ordered supplemental briefing so that CenTrak could
identify evidence in support of its "final
assembler" theory. See J.A. 2826-27 at
written description, Sonitor argued that the two sentences in
the specification dedicated to ultrasound, quoted above, did
not show that the inventors had possession ...