Lecat's Ventriloscope v. Tool

• Decision Date: 06 January 2017
• Docket Number: No. 16 C 5298,16 C 5298
• Parties: LECAT'S VENTRILOSCOPE, Plaintiff, v. MT TOOL AND MANUFACTURING, Defendant.
• Court: U.S. District Court — Northern District of Illinois

LECAT'S VENTRILOSCOPE, Plaintiff, v. MT TOOL AND MANUFACTURING, Defendant.

No. 16 C 5298

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

January 6, 2017

Chief Judge Rubén Castillo

MEMORANDUM OPINION AND ORDER

Plaintiff Lecat's Ventriloscope filed this suit against Defendant MT Tool & Manufacturing for alleged infringement of U.S. Patent No. 7,645,141 ("the '141 Patent"). (R. 1, Compl.) Defendant moves to dismiss the complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. (R. 23, Def.'s Mot. to Dismiss.) For the reasons set forth below, Defendant's motion to dismiss is denied.

BACKGROUND

The '141 Patent relates generally to auscultation, which it describes as the "act of listening to sounds within the body as a method of diagnosis," and more specifically relates to an "arrangement for auscultation training." (R. 1-1, '141 Patent at [54] (Title), 1:13-14, 1:41-42.) The patent specification explains that "[a] stethoscope is an example of an auscultation device" as it may be used to "listen to internal sounds in the human body, such as for example heart sounds, breathing (breath sounds), intestinal noises, and blood flow in arteries and veins." (Id. at 1:14-18.) The patent discloses an arrangement for auscultation training that "provides for the transmission of audio signals to an auscultation device for medical simulation." (Id. at 1:42-45.) Generally speaking, the patent describes a device (such as a stethoscope) that is adapted for use in auscultation training by embedding a speaker which plays sounds that are sent to it by a remote transmitter, presumably simulating internal body sounds. (See, e.g., id. at 4:13-25, Fig. 2.) The patent also describes methods for using such a device in auscultation training. Claim 1 of the patent, for example, reads:

1. An arrangement for auscultation training, comprising:

a signal generator capable of generating an audio signal representing at least one sound, the signal generator being controlled by a human operator, wherein the human operator plays one or more appropriate audio files according to a user's placement of a stethoscope headpiece on a patient;

a transmitter associated with the device for transmitting an audio signal corresponding to the at least one sound;

an auscultation device, comprising a stethoscope, remote from the transmitter, the auscultation device comprising:

a receiver adapted to receive the audio signal from the transmitter; and

a speaker adapted to audibly communicate the audio signal received by the receiver to the user.

(Id. at 8.)

Plaintiff alleges that Defendant is liable for infringement by virtue of "making and selling a product, the MT S-Scope (the 'S-Scope'), that, when used by an end user for the specific purpose and in the specific manner promoted by [Defendant], infringes the '141 Patent." (R. 1, Compl. ¶ 9.) Plaintiff alleges that end users of the S-Scope directly infringe claims 1, 8, 9, 10, 12, and 14 of the '141 Patent, in violation of 35 U.S.C. § 271(a), when utilizing the S-Scope. (Id. ¶¶ 9-10, 18-23.) Plaintiff further alleges that Defendant actively induces such infringement, in violation of 35 U.S.C. § 271(b), by, among other things, "making and selling the S-Scope, . . . making the S-Scope [iPhone] App . . . available on the Apple iTunes store as a free download, and actively promoting the S-Scope as an auscultation training device." (Id. ¶ 16.) The complaintincludes a claim chart mapping elements of each asserted patent claim to evidence Plaintiff relies on to support its allegations. (See id. at 3-9.)

Plaintiff alleges that on January 12, 2015, it sent a cease-and-desist letter to Defendant, "inform[ing] [Defendant] of the existence of the '141 Patent, provid[ing] a copy of the '141 Patent to [Defendant], indicat[ing] that the manufacture and sale of the S-Scope infringed the '141 Patent, and request[ing] that [Defendant] cease and desist in making and selling the S-Scope." (Id. ¶ 12.) Plaintiff alleges that Defendant consequently "had actual knowledge of the '141 Patent" during the relevant time period, "beginning when [Defendant] was told of the existence of the '141 Patent and continuing to the present." (Id. ¶ 24.) Plaintiff further alleges that "[d]uring the relevant time period, [Defendant] knowingly induced infringement of the '141 Patent" and "specifically intended to encourage infringement by purchasers and users of the . . . S-Scope." (Id. ¶¶ 25-26.)

Defendant moves to dismiss pursuant to Rule 12(b)(6), raising three arguments. First, Defendant argues that Plaintiff has not plausibly alleged that Defendant's accused product (the S-Scope) includes an "auscultation device" as required by every asserted claim of the '141 Patent. (R. 23, Def.'s Mot. to Dismiss at 1-2, 7-8.) Second, Defendant argues that Plaintiff has not plausibly alleged that the use of the S-Scope (by end users and/or customers) employs a "user," a "[human] operator," and a "patient," as also recited by every claim. (Id. at 1-2, 8-11.) Third, Defendant argues that Plaintiff has not plausibly alleged that Defendant has the specific intent required to find it liable for inducing infringement. (Id. at 1-2, 11-13.) Plaintiff argues in response that it has adequately alleged factual content to state a claim that is "plausible on its face" and that by demanding more, Defendant is arguing that Plaintiff "needs to prove its case at the pleading stage." (R. 27, Pl.'s Resp. at 2-3.)

Defendant also argues briefly in a footnote that all claims of the '141 Patent should be found indefinite under 35 U.S.C. § 112(b) for simultaneously claiming "both an apparatus and the method steps of using the apparatus." in violation of the rule against so-called mixed-mode or hybrid patent claims. (R. 23, Def.'s Mot. to Dismiss at 4 n.2.) Plaintiff offered no response to Defendant's argument, perhaps because the argument was raised only in a single footnote, and Defendant did not further address the issue in its Reply. This argument is addressed in turn below.

LEGAL STANDARDS

A complaint must set forth a "short and plain statement of the claim showing that the pleader is entitled to relief." FED. R. CIV. P. 8(a)(2). To survive a motion to dismiss, a complaint must "contain sufficient factual matter, accepted as true, 'to state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic v. Twombly, 550 U.S. 544, 570 (2007)). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678. "Determining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id. at 679. In deciding a motion to dismiss under Rule 12(b)(6), the Court must accept the factual allegations in the complaint as true and draw all reasonable inferences in favor of the plaintiff. Kubiak v. City of Chi., 810 F.3d 476, 480-81 (7th Cir. 2016), cert. denied, 2016 WL 3186107 (U.S. Nov. 28, 2016). The Court may consider the complaint itself, "documents that are attached to the complaint, documents that are central to the complaint and are referred to in it, and information that is properly subject to judicial notice." Williamson v. Curran, 714 F.3d 432, 436 (7th Cir. 2013).

ANALYSIS

I. Direct Infringement - "Auscultation Device"

Defendant argues first that Plaintiff has failed to state a claim of direct infringement because it has not plausibly alleged that the allegedly infringing product, the S-Scope, includes an "auscultation device" as recited in the asserted claims of the '141 Patent. (R. 23, Def.'s Mot. to Dismiss at 1, 7-8.)

U.S. Code Title 35, Section 271(a) governs direct patent infringement and provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271(a). To prevail on its infringement claim, Plaintiff will have to show that the accused S-Scope meets the "auscultation device" limitation of the claims, because "[i]nfringement occurs when a properly construed claim reads on the accused product." Monsanto Co. v. Scruggs, 459 F.3d 1328, 1334 (Fed. Cir. 2006);¹ see also LifeNet Health v. LifeCell Corp., 837 F.3d 1316, 1325 (Fed. Cir. 2016) ("Direct infringement of an apparatus claim requires that each and every limitation set forth in a claim appear in an accused product." (citation and quotation marks omitted)). However, Plaintiff does not need to prove its case at the pleading stage. In re Bill of Lading Transmission & Processing Sys. Patent Litig. ("Bill of Lading"), 681 F.3d 1323, 1339-40 (Fed. Cir. 2012) (observing that the Twombly/Iqbal pleading standard "does not mean . . .[plaintiff] must prove its case at the pleading stage" and reversing Rule 12(b)(6) dismissal of induced infringement claim).

The Court finds that Plaintiff has sufficiently alleged that the accused S-Scope includes an "auscultation device" as recited in the asserted claims of the '141 Patent. In the claim chart incorporated in the complaint, Plaintiff alleges in relation to claims 1 and 12 (the only independent claims of the patent, from which all other claims depend) that "the S-Scope includes a stethoscope" and that "[t]he stethoscope is an auscultation device." (R. 1, Compl. at 5, 8.) The complaint also quotes excerpts of Defendant's website that repeatedly reference a "stethoscope" in connection with the S-Scope, such as the descriptions stating that "[o]nce a student places the stethoscope on the appropriate listening post the instructor / SP activates the sound file" and that "[t]he student hears the sounds through the stethoscope." (Id. at 5 (emphases added).) Given that the '141 Patent's...