D. Delaware reversed in CenTrak case

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.



Ariad is cited as to written description:


We have held that “the test for sufficiency” of a patent’s
written description “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.” Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
“[T]he test requires an objective inquiry into the four corners
of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification must describe
an invention understandable to that
skilled artisan and show that the inventor actually invented the invention claimed.”
Id. A “mere wish or plan”
for obtaining the claimed invention does not satisfy the
written description requirement. Regents of the Univ. of
Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).

The issue of whether a claimed invention satisfies the written description requirement
is a question of fact. Ariad, 598 F.3d at 1351.

(...)

As CenTrak correctly points out, a patented invention
must satisfy separate written description and enablement
requirements. Ariad, 598 F.3d at 1351. The governing
statute states, in relevant part: “The specification shall
contain a written description of the invention, and of the
manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person
skilled in the art . . . to make and use the same . . . .” 35
U.S.C. § 112, ¶ 1 (2006).3 One purpose of this statutory
provision is to require an inventor to provide sufficient detail
in a patent’s specification to enable a person of ordinary
skill in the art to make and use the invention. But a separate purpose
of this text “is to ‘ensure that the scope of the
right to exclude, as set forth in the claims, does not overreach the
scope of the inventor’s contribution to the field of ..

(...)

Thus, we have 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 to the skilled reader that the invention works, or how to make it work, which is an enablement
issue.” Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d
1180, 1191 (Fed. Cir. 2014).
In this case, genuine issues of material fact remain as
to whether disclosure of the implementation details that
the district court identified is necessary to satisfy the written description requirement. The considerations relied on
by the district court and Sonitor do not compel summary
judgment for lack of written description. As an initial matter, the district court leaned heavily on the fact that the
specification devoted relatively less attention to the ultrasonic embodiment compared to the infrared embodiment.
But in ScriptPro LLC v. Innovation Associates, Inc., 833
F.3d 1336, 1341 (Fed. Cir. 2016), we explained that “a specification’s focus on one particular embodiment or purpose
cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.”

(...)

Based on the evidence of record, there is a material dispute of fact as
to whether the named inventors actually
possessed an ultrasonic RTL system at the time they filed
their patent application or whether they were “leaving it to
the . . . industry to complete an unfinished invention.” Novozymes A/S v.
DuPont Nutrition Biosciences APS, 723
F.3d 1336, 1350 (Fed. Cir. 2013) (quoting Ariad, 598 F.3d
at 1353). Thus, the district court erred in granting summary judgment.