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Lecat's Ventriloscope v. MT Tool and Manufacturing

United States District Court, N.D. Illinois, Eastern Division

August 1, 2018



          Ruben Castillo Chief Judge

         Lecat's Ventriloscope ("Plaintiff) filed this suit against MT Tool and Manufacturing ("Defendant") for alleged infringement of U.S. Patent No. 7, 645, 141 (the "'141 Patent"). (R. 1, Compl.) Trial is currently set for August 13, 2018. (R. 77, Min. Entry.) Defendant moves for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) or, in the alternative, summary judgment pursuant to Federal Rule of Civil Procedure 56. (R. 82, Mot. for J. Pleadings at 1, 12-13.) For the reasons stated below, Defendant's motion is denied.


         The Court presumes familiarity with this case, the '141 Patent, and the prosecution history of the '141 Patent, as thoroughly set forth in several prior opinions. See Lecat's Ventriloscope v. MT Tool & Mfg., 283 F.Supp.3d 702 (N.D. 111. 2018) (construing disputed claim terms); Lecat's Ventriloscope v. MT Tool & Mfg., No. 16 C 5298, 2017 WL 489416 (N.D. 111. Feb. 6, 2017) (granting in part and denying in part Defendant's motion to strike Plaintiffs initial infringement contentions); Lecat's Ventriloscope v. MT Tool & Mfg., No. 16 C 5298, 2017 WL 1362036 (N.D. Ill. Jan. 6, 2017) (denying Defendant's motion to dismiss). In brief, the '141 Patent discloses and claims an "arrangement for auscultation training"-auscultation being "the act of listening to sounds within the body as a method of diagnosis." (R. 54-1, '141 Patent, at [21], [54], col. 111. 13-14.) A stethoscope is an example of an auscultation device, (Id. col. 111. 14-18.) Plaintiff alleges that Defendant indirectly infringes the '141 Patent by marketing and selling a stethoscope-like training device, the MT S-Scope ("S-Scope"). (R. 54, Am. Compl. ¶ 9.) Plaintiff alleges both foims of indirect infringement: induced infringement in violation of 35 U.S.C. § 271(b) and contributory infringement in violation of Section 271(c). (Id. ¶¶ 6-34; R. 82-2, PL's Am. Infringement Contentions at 3.)

         The parties disagreed over the proper construction of the claim terms "auscultation device" and "stethoscope."[1] Lecat's Venlriloscope, 283 F.Supp.3d at 704. Specifically, the parties disputed whether these terms encompassed "simulation or 'dummy' devices that look like stethoscopes (or other auscultation devices) but cannot function as such." Id. The Court issued claim constructions for the disputed terms on January 11, 2018, construing "auscultation device" and "stethoscope" to not include such simulation or "dummy" devices. (R, 75, Mem. Op.) At the next status hearing on January 31, 2018, Plaintiffs counsel conceded that, in light of the Court's claim construction ruling, "it appears that the accused device no longer infringes literally." (R. 80, Jan. 31, 2018, Hr'g Tr. at 3.) Plaintiff maintained, however, that the S-Scope infringes under the doctrine of equivalents ("DOE") and indicated its intent to proceed to trial under a DOE theory. (Id.) The Court ordered that the parties complete discovery by June 29, 2018, and set a trial date of August 13, 2018. (Id. at 5; R. 77, Min. Entry.)

         On March 2, 2018, Defendant filed its present motion for judgment on the pleadings. (R. 82, Mot. for J. Pleadings.) Defendant argues that Plaintiffs reliance on DOE for the claim term "auscultation device" is untenable as a matter of law-and that it is accordingly entitled to judgment-for two reasons. First, Defendant contends that Plaintiffs DOE theory is barred by prosecution history estoppel, based on amendments made to the claims during prosecution. (Id. at 1, 3, 5-9.) Second, Defendant contends that application of DOE would entirely vitiate this claim limitation, contrary to the all-elements rule. (Id. at 1, 3, 9-12.) Defendant contends that judgment on the pleadings is appropriate because the Court need only rely on the '141 Patent, the prosecution history, and its own claim construction ruling, all of which may be considered under Rule 12(c) because they are integral to the complaint or subject to judicial notice. (Id. at 3-5.) In the alternative, if the Court finds it "necessary ... to consider information outside of the scope of the pleadings," Defendant requests that the Court treat its motion as a motion under Rule 56 and grant summary judgment on the same basis. (Id. at 12-13.)

         In response, Plaintiff preliminarily argues that the Court should not convert Defendant's motion into a motion for summary judgment because Defendant did not comply with Local Rule 56.1, which requires a party moving for summary judgment to file a supporting statement of facts with citations to admissible evidence. (R. 100, PL's Resp. at 3.) In the alternative, if the Court does convert the motion, Plaintiff requests notice and additional time to obtain and submit expert declarations. (Id. at 9 & n.4.)

         On the merits, Plaintiff argues that neither prosecution history estoppel nor vitiation precludes its DOE theory as a matter of law. (Id. at 4-20.) Plaintiff contends that estoppel does not apply at all because, although claim l[2] was narrowed during prosecution, the narrowing amendment was not made for reasons related to patentability. (Id. at 10-16.) To the extent there is any ambiguity or doubt as to the reason for the amendment, Plaintiff further argues, the Court should infer that the amendment was not related to patentability because Plaintiff is entitled to have reasonable inferences drawn in its favor. (Id. at 14.) Plaintiff also contends that the scope of any estoppel would not encompass its DOE theory because the subject matter over which Plaintiff asserts equivalence-non-functioning stethoscopes-is different from the territory surrendered by the nan-owing amendment to claim 1. (Id. at 16-20.)

         Plaintiff contends that vitiation also does not preclude its DOE theory as a matter of law because a reasonable jury could find that the accused S-Scope satisfies the "auscultation device" limitation under an appropriate equivalence analysis. (Id. at 4-9.)


         Rule 12(c) permits a party to move for judgment on the pleadings after the complaint and answer have been filed, but early enough to not delay trial. Fed.R.Civ.P. 12(c); Fed. Deposit Ins. Corp. v. FBOP Corp., 252 F.Supp.3d 664, 671 (N.D. 111. 2017). The customary function of a Rule 12(c) motion is to dispose of a case based on the substantive merits of the parties' claims and defenses, so far as they are revealed in the pleadings and other information subject to judicial notice. Fed. Deposit Ins. Corp., 252 F.Supp.3d at 671-72; see also 5C Wright & Miller, Federal Practice & Procedure § 1369 (2018 ed.) (explaining the "essential function" of Rule 12(c) as "permitting the summary disposition of cases that do not involve any substantive dispute that justifies a full trial"). A court may grant judgment on the pleadings if no genuine issues of material fact need to be resolved and the moving party is entitled to judgment as a matter of law. U.S. Commodity Futures Trading Comm 'n v. Oystacher, 203 F.Supp.3d 934, 939 (N.D. 111. 2016); see also Alexander v. City of Chicago, 994 F.2d 333, 335-36 (7th Cir. 1993) (clarifying that when a Rule 12(c) motion is used in its customary application, rather than to raise various defenses under Rule 12(b), "the appropriate standard is that applicable to summary judgment, except that the court may consider only the contents of the pleadings").[3] However, "if it appears that discovery is necessary to fairly resolve a claim on the merits," the motion should be denied. Fed. Deposit Ins., Corp., 252 F.Supp.3d at 672.

         In evaluating a motion for judgment on the pleadings, the Court must accept the non-movant's factual allegations as true and draw all reasonable inferences in its favor, but need not accept as true any legal assertions. Wagner v. Teva Pharm. USA, Inc., 840 F.3d 355, 358 (7th Cir. 2016). The Court's review is limited to the pleadings; however, it may also take into consideration documents incorporated by reference into the pleadings and matters properly subject to judicial notice, Milwaukee Police Ass'n v. Flynn, 863 F.3d 636, 640 (7th Cir. 2017). Matters subject to judicial notice include "pleadings, orders, and transcripts from prior proceedings in the case." Scherr v. Marriott Int'l, Inc., 703 F.3d 1069, 1073 (7th Cir. 2013).


         As a preliminary matter, the Court considers whether to convert Defendant's motion to one for summary judgment. If matters outside the pleadings are presented to the Court on a motion under Rule 12(c) and are not excluded, the Court must treat the motion as a summary judgment motion under Rule 56. Fed.R.Civ.P. 12(d). In doing so, the Court must give all parties a "reasonable opportunity to present all the material that is pertinent to the motion." Id. Because neither party has actually ...

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