United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
Castillo Chief Judge.
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
'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  (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:
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
a speaker adapted to audibly communicate the audio signal
received by the receiver to the user.
(Id. at 8.)
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 complaint
includes a claim chart mapping elements of each asserted
patent claim to evidence Plaintiff relies on to support its
allegations. (See Id. at 3-9.)
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.)
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.)
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.