Summary Judgment of Invalidity and Noninfringement Reversed

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in CenTrak, Inc. v. Sonitor Technologies, Inc., 2017-2510 (February 14, 2019). CenTrak sued Sonitor for infringing patent claims addressed to locating and identifying portable devices using ultrasonic base stations. Because Sonitor does not sell all of the hardware necessary to practice the asserted claims, CenTrak accused Sonitor of direct infringement by “making” infringing systems when it installs and configures its accused system at a customer’s facility. The district court granted a motion for summary judgment filed by Sonitor asserting patent invalidity for lack of written description and noninfringement. CenTrak appealed.

The Federal Circuit reversed the district court’s grant of summary judgment of invalidity, concluding genuine issues of material fact remained. As an initial matter, the Court held the district court unduly relied on the fact that the specification focused more on the infrared embodiment of the invention than on the ultrasonic embodiment. The Court explained, “written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven . . . the invention works, or how to make it work, which is an enablement issue.” The case at hand, the Court held, was distinguishable from cases affirming invalidity because the asserted CenTrak patent expressly disclosed, albeit briefly, the embodiment alleged not to be described. In view of that disclosure and the testimony of CenTrak’s expert, disputes of material fact rendered summary judgment improper.

The Court also reversed the grant of summary judgment of noninfringement. The Court held the district court erred in concluding Sonitor does not directly infringe by making only part of a claimed system. The Court explained that “a final assembler can be liable for making an infringing combination—assuming the evidence supports such a finding—even if it does not make each individual component element.” The Court held the evidence of record created a triable issue of fact on that question, and thus reversed and remanded the case for further proceedings. 

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