Judge Richard G. Andrews recently granted summary judgment of non-infringement and invalidity relating to a patent claiming a system for locating and identifying portable devices using ultrasonic base stations. Centrak, Inc. v. Sonitor Technologies, Inc., C.A. No. 14-183-RGA (D. Del. Aug. 30, 2017). The plaintiff’s infringement theory was based on the defendant’s “making and using” a system covered by U.S. Patent No. 8,604,909, in this case by “installing” the system at customer hospitals. Judge Andrews found, however, that while the defendant was involved in the installation in various ways (e.g., evaluating the appropriate system to install based on the customer hospital’s layout, providing the customer hospital with network infrastructure requirements, and working with the hospital customer, post-installation, to troubleshoot the system), there was no evidence in the record that “Defendant makes the system. The testimony cited indicates that Defendant does not itself install the system. Furthermore, Plaintiff has not provided any evidence of contracts entered into between Defendant and third party installers that would indicate that the installation is done at Defendant’s direction or behest.” The plaintiff next argued that even if the defendant does not actually install the system, “the customer’s actions in making the claimed invention are attributable to” the defendant. Id. at 10. Judge Andrews rejected this argument, explaining that the Federal Circuit’s Centillion decision “is still good law and applies to the system claims in this case. Plaintiff must prove that Defendant makes or uses the entire system, including all claimed elements, in order to prove infringement. Id. at 11. While the troubleshooting allegations could give rise to a “use” infringement claim, Judge Andrews found that the vague record evidence relating to the troubleshooting did not demonstrate that the entire system was “used” during testing.
Judge Andrews also found that all asserted claims of the ‘909 patent were invalid for failure to satisfy the written description requirement. The specification disclosed radio frequency and infrared base stations, but only “contemplated” ultrasonic base stations. Judge Andrews explained that “[m]ere contemplation . . . is not sufficient to meet the written description requirement. . . . [I]t seems clear to me that electromagnetic radiation and sound waves are not simply two species of the same genus; rather these are two completely different types of phenomena.” Id. at 15. The Court agreed with the defendant that the practical difference between using ultrasonic base stations instead of infrared base stations is substantial, and therefore the patent failed to provide written description support for the use of the former. Id. at 15-16.