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Centrak, Inc. v. Sonitor Technologies, Inc.

United States Court of Appeals, Federal Circuit

February 14, 2019

CENTRAK, INC., Plaintiff-Appellant
v.
SONITOR TECHNOLOGIES, INC., Defendant-Appellee

          Appeal 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.

          Jack B. Blumenfeld, Morris, Nichols, Arsht & Tun-nell LLP, Wilmington, DE, argued for defendant-appellee. Also represented by Jennifer Ying.

          Before Reyna, Taranto, and Chen, Circuit Judges.

          CHEN, CIRCUIT JUDGE.

         CenTrak, 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 proceedings.

         Background

         A. Asserted Patent

         The '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.

         To save 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.

         Claim 1 is illustrative:

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 synchronization information;
wherein each of the plurality of RF transceivers periodically transmits a request to the time server to receive the timing synchronization information;
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.

         Notably, 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 technology:

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.

         B. Accused Products

         The 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 patent.

         The 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.

         C. Procedural History

         CenTrak 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- 5.

         Sonitor filed motions for summary judgment of non-infringement, J.A. 89, and invalidity for lack of written description and enablement, J.A. 3831.[1]

         Sonitor's 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 61:21-62:9.

         Regarding written description, Sonitor argued that the two sentences in the specification dedicated to ultrasound, quoted above, did not show that the inventors had possession ...


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