Centrak Inc. v. Sonitor Technologies Inc.

Filing 236

MEMORANDUM OPINION regarding motions for summary judgment (D.I. 148 and 150 ). Signed by Judge Richard G. Andrews on 8/30/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

CENTRAK, INC.,
Plaintiff,
v.

Civil Action No. 14-183-RGA

SONITOR TECHNOLOGIES, INC.
Defendant.

MEMORANDUM OPINION
Neal C. Belgam, Esq., SMITH, KATZENSTEIN & JENKINS LLP, Wilmington, DE; Eve H.
Ormerod, Esq., SMITH, KATZENSTEIN & JENKINS LLP, Wilmington, DE; Jeffrey I. Kaplan,
Esq. (argued), KAPLAN BREYER SCHWARZ & OTTESEN, LLP, Matawan, NJ; Daniel
Basov, Esq., KAPLAN BREYER SCHWARZ & OTTESEN, LLP, Matawan, NJ; Joseph W.
Bain, Esq., SHUTTS & BOWEN, West Palm Beach, FL.
Attorneys for Plaintiff.
Jack B. Blumenfeld, Esq. (argued), MORRIS NICHOLS ARSHT & TUNNELL LLP,
Wilmington, DE; Jennifer Ying, Esq. (argued), MORRIS NICHOLS ARSHT & TUNNELL
LLP, Wilmington, DE.
Attorneys for Defendant.

August~, 2017

ANDJ:kt.S~I~E:
Presently before the Court are Defendant's Motion for Summary Judgment of No
Infringement of U.S. Patent No. 8,604,909 (D.I. 148) and related briefing (D.I. 149, 175, 213) and
Defendant's Motion for Summary Judgment of Invalidity of U.S. Patent No. 8,604,909 (D.I. 150)
and related briefing (D.I. 151, 181, 214). The Court heard oral argument on June 9, 2017. (D.I.
235) ("Hr'g Tr."). After oral argument, at the court's direction, the parties submitted additional
briefing directed to the evidence of record related to Plaintiffs infringement theories. (D.I. 230,
231, 233, 234).

I.

Background

Plaintiff brought this infringement action on February 12, 2014, alleging that Defendant
infringes U.S. Patent No. 8,604,909 ("the '909 patent"). (D.I. 1). Plaintiff amended its complaint
on November 10, 2015. (D.I. 87). Defendant answered, raising a number of defenses, including
non-infringement and invalidity. (D.I. 106).
The '909 patent claims methods and systems for locating and identifying portable devices
using ultrasonic base stations. Plaintiff asserts that Defendant infringes independent claims 1, 7,
8, 16, and 26 and dependent claims 18, 21, and 22 of the '909 patent. (D.I. 149 at 7). Claims 1,
7, 8, 18, 21, and 22 are system claims. Claim 1 reads as follows:
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.
('909 patent, claim 1). Claims 16 and 26 are directed to an ultrasonic base station. Claim 16 reads
as follows:
16.

An ultrasonic base station, comprising:

a radio frequency (RF) receiver, coupled to a time server via a backbone
network and configured to receive timing synchronization information from the
time server via the backbone network; and
an ultrasonic transmitter configured to transmit an ultrasonic location code
in a time period based on the received timing synchronization information, the
ultrasonic location code representative of a location of the ultrasonic base station,
wherein the ultrasonic base station periodically transmits a request to the
time server, via the backbone network, to receive the timing synchronization
information.
('909 patent, claim 16).

II.

Legal Standard

A.

Summary Judgment
"The court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." Fed. R.
Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury
to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the

2

moving party may be discharged by pointing out to the district court that there is an absence of
evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving
party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
particular parts of materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations ... , admissions, interrogatory answers, or other
materials; or (B) showing that the materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute .... " FED. R. CIV. P. 56(c)(l).
When determining whether a genuine issue of material fact exists, the court must view the
evidence in the light most favorable to the non-moving party and draw all reasonable inferences
in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a reasonable jury could
return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49. If the non-moving party
fails to make a sufficient showing on an essential element of its case with respect to which it has
the burden of proof, the moving party is entitled to judgment as a matter oflaw. See Celotex Corp.,
477 U.S. at 322.

B.

Infringement
A patent is infringed when a person "without authority makes, uses, offers to sell, or sells

any patented invention, within the United States ... during the term of the patent .... " 35
U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), aff'd, 517

3

U.S. 370 (1996). First, the court must construe the asserted claims to ascertain their meaning and
scope. See id. The trier of fact must then compare the properly construed claims with the
accused infringing product. See id. at 976. This second step is a question of fact. See Bai v. L &
L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).

"Literal infringement of a claim exists when every limitation recited in the claim is found
in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If
any claim limitation is absent from the accused device, there is no literal infringement as a matter
oflaw." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
accused product does not infringe an independent claim, it also does not infringe any claim
depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent
on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007). A
product that does not literally infringe a patent claim may still infringe under the doctrine of
equivalents if the differences between an individual limitation of the claimed invention and an
element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 24 (1997). The patent owner has the burden of proving infringement

and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc.
v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).

When an accused infringer moves for summary judgment of non-infringement, such
relief may be granted only if at least one limitation of the claim in question does not read on an
element of the accused product, either literally or under the doctrine of equivalents. See Chimie
v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, L.L.C. v. Intel
Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary judgment ofnoninfringement is ...

4

appropriate where the patent owner's proof is deficient in meeting an essential part of the legal
standard for infringement, because such failure will render all other facts immaterial."). Thus,
summary judgment of non-infringement can only be granted if, after viewing the facts in the
light most favorable to the non-movant, there is no genuine issue as to whether the accused
product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
C.

Written Description

The written description requirement contained in 35 U.S.C. § 112,

if 1 requires that the

specification "clearly allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharm., Inc., v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane) (alteration in original). "In other words, the test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date." Id. The written
description inquiry is a question of fact. See id. Although it is a question of fact, "[ c]ompliance
with the written description requirement ... is amenable to summary judgment in cases where no
reasonable fact finder could return a verdict for the non-moving party." PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). "A party must prove invalidity for lack
of written description by clear and convincing evidence."

Vasudevan Software, Inc. v.

MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).
III.

Defendant's Motion for Summary Judgment of No Infringement

There is no dispute that Defendant does not sell its customers all components necessary to
make the infringing system claimed in claims 1, 7, 8, 18, 21, and 22 or the apparatus claimed in

5

claim 16. 1 (Hr'g Tr. 44:11-13). Plaintiff's infringement theories, therefore, are limited to making
and using the patented invention. (Id. at 44:6). Plaintiff has alleged only direct infringement of
these claims. (Id. at 46:22-47:6). First, Plaintiff contends that Defendant makes the allegedly
infringing system when it installs the system at its customers' locations.

(D.I. 175 at 6).

Alternatively, Plaintiff argues that the customer's conduct in installing the system is attributable
to Defendant. (Id.). Second, Plaintiff contends that Defendant uses the allegedly infringing system
when it tests and troubleshoots the system after it is installed. (Id.).
Defendant moves for summary judgment of no infringement of claims 1, 7, 8, 16, 18, 21,
and 22 on the basis that it neither makes nor uses the patented invention. 2 According to Defendant,
there is no evidence in the record that would support a finding of infringement. (Hr' g Tr. 41: 1521 ). Specifically, Defendant contends that it does not install the system, nor does it contract with
another company to do so. (D.I. 213 at 11). Defendant further contends that it does not use the
entire system and argues there is no evidence in the record that would support a finding that it
does. (Hr' g Tr. 41 :25).
In support of its contention that Defendant makes and uses the system, Plaintiff first points

to excerpts from a deposition of Stephen Cormier, who is Defendant's Vice President of Technical
and Customer Support. (D.I. 175 at 11; D.I. 191 at 54, depo 25:4-9). Plaintiff alleges that
Defendant "first goes to the customer site and determines from the layout of the hospital what type
equipment should be installed." (D.I. 175 at 11). The relevant portion of the Cormier deposition
that Plaintiff cites for support for this statement reads, "Ordinarily that's done by looking at the set

1

Claim 16 is an apparatus claim for "[a]n ultrasonic base station comprising: a radio frequency (RF) receiver,
coupled to a time server via a backbone network." Like the system claims, this claim calls for components not
provided by Defendant (the time server and backbone network).
2
Defendant has also moved for summary judgment of no infringement for certain claims under several other
theories. Since I find claims 1, 7, 8, 16, 18, 21, and 22 are not infringed because Defendant neither makes nor uses
the system or apparatus claimed, and because I find all of the asserted claims are invalid for lack of written
description, I need not reach these other non-infringement arguments.

6

of prints for the site, not going on site." (DJ. 191 at 38, Depo. Tr. 74:5-7). Whether Defendant's
employees visit the site or simply view prints for the site, however, such activity is insufficient to
support a jury finding that Defendant installs or tests the allegedly infringing system. All this
evidence reveals is that Defendant evaluates the customer's site to determine the customer's needs.
Plaintiff next alleges that Defendant "determines ifthe customer's backbone network and
existing infrastructure is compliant with the Cisco CCX protocol and sufficient to support the
quantity of portable tags in the proposed system to be delivered." (DJ. 175 at 11). For support,
Plaintiff points to excerpts from Mr. Cormier's deposition.

(Id.).

Mr. Cormier's testimony

confirms that Defendant's system requires that the customer's wireless network be CCX
compatible and that Defendant's system will not work ifthe network is not compatible. (DJ. 191
at 33-34, Depo. Tr. 51 :22-52:5; D.I. 191 at 47-50, Depo. Tr.112:3-115:17). Mr. Cormier also
testified that Defendant "wouldn't put the system in ifthe system supporting it didn't exist." (DJ.
191 at 44, Depo. Tr. 108:14-19). This testimony indicates only that Defendant evaluates the
capabilities of the customer's existing network and determines whether or not it will support
Defendant's system. This testimony does not support a jury finding that Defendant installs or tests
the allegedly infringing system.
Plaintiff next alleges that ifthe customer's network is not compliant, Defendant "will issue
directions to the hospital" to obtain whatever equipment and licenses are necessary to meet the
requirements of Defendant's system. (DJ. 175 at 11). Plaintiff again cites to Mr. Cormier's
deposition testimony as support. (Id.). This portion of his testimony indicates that Defendant
provides their customers with the network requirements necessary for supporting Defendant's
system. (DJ. 191 at 48, Depo. Tr. 113:2-6). When asked whether Defendant "makes sure" that
the required infrastructure is in place before installation, Mr. Cormier testified that, "We don't

7

physically verify it but we do have communication with the hospital about that." (Id. at 50, Depo.
Tr. 115: 18-24). Again, this testimony does not support a jury finding that Defendant installs or
uses the allegedly infringing system. All it indicates is that Defendant notifies the customer of the
network infrastructure requirements and how to acquire the necessary technology if the customer
does not already have it in place.
Plaintiff next alleges that once Defendant confirms that the customer has the necessary
infrastructure in place, Defendant "returns to install the system." (D.I. 175 at 11 ). Specifically,
Plaintiff alleges that Defendant's "personnel are on site to supervise and oversee the installation."
(Id.). Plaintiff further alleges that, "The actual mounting of equipment is done either by Sonitor

personnel or by those with whom Sonitor has contracted to do the work for Sonitor, and which
Sonitor supervises." (Id.). As support for these allegations, Plaintiff cites to excerpts from the
deposition of Anne Marie Bugge. (Id.). Ms. Bugge testified that Mr. Cormier "works with the
customers and also our sales team in terms of layouts of projects, how the devices should be
installed [and] oversees the installation." (D.I. 191 at 43-44, Depo. Tr. 25:21-26:3). Ms. Bugge
did not elaborate on what was involved in "oversee[ing] the installation."
Ms. Bugge further testified that Defendant has contractual agreements with partners with
whom Defendant works. (Id. at 45-46, Depo. Tr. 62:24-63 :2). The contractual agreements Ms.
Bugge referred to are "integration agreement[s]" and "reseller agreement[s]." (Id. at 46, Depo. Tr.
63:5-6, 8). Nothing in Ms. Bugge's testimony references contracts entered into with third parties
to perform the installation of Defendant's system.

Ms. Bugge further testified that during

installation of Defendant's system, "There is a team of people involved." (Id. at 47, Depo. Tr.
76:21-25). According to Ms. Bugge, the actual installation is performed by a "partner or a third
party or the hospital sometimes." (Id. at 48, Depo. Tr. 77:16-22). Nothing in the cited portions of

8

Ms. Bugge's testimony supports a jury finding that Defendant's employees or agents make the
system by performing the installation.
Plaintiff alleges that "the installation process involves installing the location transmitters,
distributing the tags, installing the software to make the Sonitor server . . . and integrating the
entire system into the customer's network." (D.I. 175 at 11-12). Plaintiff again cites to Mr.
Cormier's deposition testimony as support for this recitation of facts. (Id. at 12). The portions of
testimony cited by Plaintiff, however, support only the uncontested fact that Defendant provides
the software that is installed on the server. (D.I. 191 at 27, Depo. Tr. 25:8-11). As Mr. Cormier
also testified, the server hardware is not supplied by Defendant. (Id., Depo. Tr. 25:5-7, 25:15-19).
Again, nothing in the cited testimony supports a jury finding that Defendant performs the
installation or uses the system.
Plaintiff next alleges that Defendant's "personnel also enter the location data on the virtual
server ... where the Sonitor software was installed during installation." (D.I. 175 at 12). Plaintiff
cites to a portion of Mr. Cormier's testimony as support for this assertion. (Id.; D.I. 191 at 26-27,
Depo. Tr. 24:21-25:3, 25:8-11). This is the same portion of Mr. Cormier's testimony cited as
support for the last allegation and, as noted above, this testimony simply indicates that Defendant
provides software which is installed on server hardware supplied by the customer. In another
portion of Mr. Cormier's deposition, not cited by Plaintiff here, Mr. Cormier does testify that
Defendant's employees "do the data entry," meaning entering the location data into the server.

(Id. at 29, Depo. Tr. 29:11-21). 3 Nothing in this testimony, however, supports a jury finding that
Defendant performs the installation.

3 During

oral argument I asked Plaintiff to submit a letter pointing out where in the evidence of record there was
support for its infringement contentions. (Hr' g Tr. 56: 13-16, 63: 14-19). Plaintiff submitted a letter with an entirely
new theory of infringement that Defendant makes the system by "assigning location codes" and "entering that data
into the server." (D.l. 233 at 1). Even ifl were to consider this untimely infringement theory, I do not find it

9

Finally, Plaintiff alleges that Defendant makes a post-installation visit to the customer site
to test and tune the system. (D.I. 175 at 12). Plaintiff alleges that once Defendant is satisfied that
the system is functioning, it certifies and commissions the system. (Id.). Plaintiff also alleges that
Defendant continues to work with the customer post-installation to troubleshoot problems as they
arise. (Id.). Plaintiff again cites to Mr. Cormier' s deposition as support. (Id.). The cited portions
of the deposition testimony indicate that, post-installation, "The installation company, whoever
that may be, will provide [Sonitor] a set of as-built drawings illustrating what devices were put
into which locations." (D.I. 191 at 29, Depo. Tr. 29:11-15). Mr. Cormier further testified that
Defendant's employees "go out and tune the system to ensure it functions normally." (Id., Depo.
Tr. 29:21-23).

Plaintiff also cites to Ms. Bugge's testimony that Mr. Cormier works with

customers and the sales team on system layouts, "commissions and certifies ... that everything is
working to specification," and "helps troubleshoot" post-installation. (Id. at 54-55, Depo. Tr.
25: 18-26:8). Nothing in this testimony supports a jury finding that Defendant makes the system
by performing the installation.
I see no support in any of the evidence of record cited by Plaintiff 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.
Plaintiff argues that even if Defendant does not physically perform the installation, the
customer's actions in making the claimed invention are attributable to Defendant. (D.I. 175 at 13).
Defendant relies on Centi/lion for the proposition that the accused infringer must assemble the

persuasive. Simply entering the data into a server does not constitute making the physical system claimed in the
'909 patent.
10

entire system itself in order to be liable for infringement. (D.I. 149 at 15; Centi/lion Data Sys.,
LLC v. Qwest Comm 'ns Int 'l, Inc., 631 F.3d 1279, 1288 (Fed. Cir. 2000)). Plaintiff counters that

the Federal Circuit's decision in Akamai "establish[ed] a broader test for attributing conduct of an
accused infringer's customer to the accused infringer" than the holding in Centi/lion. (D.l. 175 at
14-15). I disagree.
There is no indication that Centi/lion has been overruled or that its holding is no longer
good law. In fact, the Federal Circuit has cited to Centillion at least three times since Akamai was
decided, and in each case indicated that system claims are different from method claims and are
still treated under the Centi/lion standard for infringement. See Georgetown Rail Equip. Co. v.
Holland L.P., 2017 WL 3499240, at *5 (Fed. Cir. Aug. 1, 2017) (citing Centi/lion for proposition

that system claim requires single party to use all elements of claimed invention); Lyda v. CBS
Corp., 838 F.3d 1331, 1339 (Fed. Cir. 2016) Uoint infringement applies to method claims, not

system claims); LifeNet Health v. LifeCell Corp., 837 F.3d 1316, 1326 (Fed. Cir. 2016) (citing
Centi/lion for proposition that there is no direct infringement if action by third party required to

meet all claim limitations). Centi/lion 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. I find that Plaintiff has not pointed to sufficient evidence
in the record to allow a reasonable jury to conclude that Defendant infringes the system claims by
making the claimed invention.
I also find no evidence in the record to support a finding of infringement on the basis of
use. Plaintiffs "use" theory of infringement is based on troubleshooting and testing the system.
Plaintiff has not pointed to any evidence ofrecord, however, that supports a finding that Defendant
has ever used the system in its entirety in performing these tasks. As an initial matter, Plaintiff has

11

not provided any evidence of what is involved in the alleged troubleshooting and testing. As to
troubleshooting, Plaintiff points only to vague statements made during depositions. There is
simply no evidence that Plaintiff uses any part of the system, never mind the entire system, during
the troubleshooting referred to in the depositions.
As to testing or verifying operability, Plaintiff relies on statements from depositions that
Defendant certifies and commissions the system. But again, there is no evidence to be found in
the record as to what takes place during certifying and commissioning. There is no evidence that
Defendant operates any part of the system, or the entire system, during certification and
commissioning. Plaintiff cites to a declaration from a person it characterized at oral argument as
being "a guy who competes directly who says that all the hospitals that they sell to in competition
require that the thing be fully tested live before they buy a system. He's a guy with decades of
experience in this." (Hr'g Tr. 45: 4-7). The declaration Plaintiff cites is from Dr. Ari Nairn, who
describes himself as "the co-founder, President and CEO of the CenTrak, Inc., the Plaintiff." (D.I.
179 at

if 1). The declaration does not purport to allege actual knowledge of any testing or

troubleshooting performed by Defendant. Instead, the declaration states that "there is no possible
way that Sonitor could deliver its system without running full tests on the installed, operable
system." (Id. at

if 10). This self-serving declaration from Plaintiffs CEO, who is not one of

Plaintiffs experts, cannot serve as evidence that Defendant actually did perform testing of an
actual complete system.
It is certainly true that testing a system may constitute an infringing use. Waymark Corp.

v. Porta Sys. Corp., 245 F.3d 1364, 1366 (Fed. Cir. 2001). This does not alleviate Plaintiffs

burden to demonstrate that testing actually occurred, however. The cases to which Plaintiff points
do not suggest otherwise. For example, in Waymark, no use was found because the alleged

12

infringer tested only components of the system, not the entire system constituting the claimed
invention. Id. Sufficient use to survive summary judgment was found in McKesson where there
was evidence that the alleged infringer had used the entire system in product development and had
demonstrated the system at a client facility at least once. McKesson Information Solutions, Inc. v.
Bridge Medical, Inc., 2005 WL 2346919 at *8 (E.D. Cal. Sept. 23, 2005). Finally, in Radio
Corporation, the alleged infringer had admitted to fully assembling the entire system for testing
prior to disassembly and shipment to customers. Radio Corporation of America v. Andrea, 90
F.2d 612, 613 (2d Cir. 1937). In all of the cases where use was found, there was specific evidence
in the record that testing had been performed on the entire system. Here, there is no such evidence
in the record. Plaintiff cannot survive summary judgment by relying on vague allegations of
troubleshooting and the wholly unsupported assertion that if the system was sold, Defendant must
necessarily have tested it. I find that Plaintiff has not pointed to any evidence of testing or
troubleshooting that would allow a reasonable jury to conclude that Defendant uses the system.
For the reasons given above, I will grant Defendant's motion for summary judgement of
no infringement of claims 1, 7, 8, 16, 18, 21, and 22 of the '909 patent on the basis of eithermaking
or using the claimed invention.

IV.

Defendant's Motion for Summary Judgment of Invalidity

Defendant moves for summary judgment of invalidity of all asserted claims on the basis
that the claims do not find written description support in the specification. 4

Specifically,

Defendant argues that the specification of the '909 patent "fails to provide sufficient information
in the original disclosure to show that the inventor possessed the invention at the time of the

4

Defendant also asserts that the claims are not enabled and are indefinite. (D.I. 151at7). Since I find that all of the
asserted claims are invalid for lack of written description, I need not reach the issues of enablement or
indefiniteness.

13

original filing."

(D.I. 151 at 14). Defendant contends that the '909 patent discloses radio

frequency ("RF") and infrared ("IR") base stations, transmitters, and receivers, but not ultrasound
("US") base stations, transmitters, and receivers as required by the asserted claims. (Id. at 15-16).
Plaintiff respo"nds that Defendant's written description argument is actually an enablement
argument. (D.I. 181 at 9). According to Plaintiff, the specification of the '909 patent discloses
US base stations in a manner sufficient to meet the written description requirement. (Id. at 12).
Plaintiff contends that in order to prevail on a written description defense, Defendant must prove
"that the specification contains no disclosure recognizable as corresponding to the claimed" US
components. (D.I. 181at12) According to Plaintiff, Defendant cannot show this because US base
stations are expressly disclosed in the specification. (Id.).
The '909 patent's only disclosure of US base stations is as follows:
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.
('909 patent at 5:5-11). Plaintiff's argument appears to be that because the specification uses the
word "ultrasonic," the disclosure of US base stations, transmitters, and receivers is sufficient to
meet the written description requirement. I disagree. The Federal Circuit has held that "the
specification must describe an invention understandable to [a] skilled artisan and show that the
inventor actually invented the invention claimed." Ariad Pharma., Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Here, there is no question that the inventor actually
invented a system employing IR base stations, transmitters, and receivers. The question is whether
the single paragraph quoted above is sufficient to show that the inventor actually invented US base
stations, transmitters, and receivers. I do not think that it is.

14

What matters in a written description analysis is what is found in "the four comers of the
specification." Ariad, 598 F.3d at 1351. "The knowledge of ordinary artisans may be used to
inform what is actually in the specification, but not to teach limitations that are not in the
specification, even if those limitations would be rendered obvious by the disclosure in the
specification." Rivera v. Int'! Trade Comm'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (internal
citation omitted).
Plaintiff appears to be arguing that even though only IR embodiments are disclosed, an
embodiment using US is supported by the specification because the inventors stated that a US
system was "contemplated." (D.I. 181 at 12). Mere contemplation, however, is not sufficient to
meet the written description requirement. The problem with Plaintiff's argument is that US and
IR are fundamentally different. IR is a form of electromagnetic radiation, or a light wave, that
travels at approximately 300 million meters per second. (D.I. 161at331, i! 30). US, on the other
hand, is a sound wave, which travels at approximately 340 meters per second in air. (Id.). As an
initial matter, it 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. The
manners in which they are generated, transmitted, and received are necessarily different.
Plaintiff argues that both IR and US technology were well-developed and the differences
between US and IR were well known at the time of invention. (D.I. 181 at 16). This may well be
true, but it is insufficient to show that the inventor had possession of a system employing a US
base station, transmitter, and receiver. It seems clear to me that one could not simply drop a US
transmitter into the system as disclosed in the specification and have a functioning US system.
There is no dispute that the two technologies,· light waves and sound waves, are fundamentally
different and there is also no dispute that there is no disclosure in the patent whatsoever that

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acknowledges this. The dispute between the parties is whether these differences are relevant to
the invention as described. Defendant contends that the differences are critical and for that reason,
the described IR system does not adequately disclose a US system. (D.I. 151 at 18). In contrast,
Plaintiff contends that using US instead ofIR is a minor difference, such as the difference between
using #2 screws and #3 screws. (D.I. 181 at 8). I agree with Defendant that the differences are
significant to the question of whether the written description requirement is met.
For example, because US travels at a speed a million times slower than IR, any application
in which precise timing is involved would necessarily require a significantly different solution if
implemented using IR than if US were used. Timing is critical to the technology disclosed in the
'909 patent. The specification discloses that RF base stations transmit timing synchronization
information ("TSI") to the IR base stations, as well as to the portable devices. ('909 patent at 4: 1922). The TSI "provide[s] a unified time of origin to all nodes in the system." (Id. at 3 :55-56). The
IR base stations then use the TSI to determine when to periodically transmit a base station
identification. (Id. at 4:46-59). Since IR and RF travel at the speed of light, transmission and
reception are essentially simultaneous. (D.I. 159 at 60, Depo. Tr. 104:2-8; at 63, 221:4-19; at 46,
Depo. Tr. 171 :6-13). The fact that US travels about a million times slower introduces propagation
delays into the system that result in non-simultaneous transmission and reception. (D .I. 159 at 46,
Depo. Tr. 171 :6-16). Dealing with these propagation delays is nowhere disclosed in the patent.
In addition, the use of US introduces a host of other problems not present with IR

technology. For example, since an US system uses sound waves, it encounters problems with
interference from reflection and echoes that are not present in IR systems. (D.I. 159 at 40, Depo.
Tr. 146:13-149:8). In contrast, IR devices are susceptible to other types of interference and a

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discussion of the effects of that interference, such as the creation of dead zones, and how to avoid
such interference, is discussed in detail in the specification. ('909 patent at 13:24-14:4).
There is simply nothing in the '909 patent's specification that even acknowledges the
differences between IR and US. An inventor cannot demonstrate possession of the invention
merely by stating that it is "contemplated" that the invention could be configured to use a
completely different technology than what is described in the patent without providing at least
some description of the configurational changes required to do so.

The written description

requirement guards against an inventor "leaving it to the ... industry to complete an unfinished
invention." Ariad, 598 F.3d at 1353. This is exactly what the patentee did here. For the reasons
given above, I find that the asserted claims of the '909 patent are invalid under§ 112, if 1 for lack
of written description.
V.

Conclusion

For the reasons set forth above, Defendant's Motion for Summary Judgment of No
Infringement of U.S. Patent No. 8,604,909 (D.I. 148) is granted as to claims 1, 7, 8, 16, 18, 21,
and 22. Defendant's Motion for Summary Judgment oflnvalidity of U.S. Patent No. 8,604,909
(DJ. 150) is granted as to all asserted claims.
An appropriate order will be entered.

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