Lecat’s Ventriloscope v. MT Tool & Mfg., No. 16 C 5298, Slip Op. (N.D. Ill. Nov. 20, 2018) (Castillo, C.J.).
Chief Judge Castillo granted in part each parties’ cross-motion for summary judgment in this patent case involving a training system for ausculation – the act of listening to sounds within the body to diagnose conditions.
As an initial matter, the Court admonished both parties for “conclusory” briefs that devoted “very little” attention, often less than a page for each substantive argument and “frequently” failed to cite any case law.
Of particular note, the Court held as follows on plaintiff’s summary judgment motion:
- The presumed validity of the patent alone, without argument and evidence, does not meet a patentholder’s burden of proof in the face of a properly supported motion for summary judgment of invalidity.
- The Court reasoned that there is no anticipation by equivalents, although an obviousness argument may be based upon an equivalent or obvious extension of one or more pieces of prior art.
- Although technical experts are often valuable in understanding and explaining invalidity contentions, defendant’s invalidity contentions did not fail because it had no expert witness to support them. In this case, the relative simplicity of the technology did not require expert testimony. The technology at issue was, essentially, a modified stethoscope to help train doctors to recognizes particular sounds.
- The Court granted plaintiff summary judgment as to two of defendant’s indefiniteness defenses – a lack of antecedent basis and that “human operator” was indefinite. In both cases, defendant was unable to make its case because it lacked an expert witness to offer testimony as to what one of ordinary skill in the art (POSITA) would understand about the terms.
- Defendant was not allowed to offer POSITA evidence regarding invalidity from its noninfringement expert because that would be beyond the scope of the opinions in the expert’s report.
- Defendant was not required to have an expert opine on the materiality prong of its inequitable conduct defense. The Court noted that some courts did not allow experts on inequitable conduct and, in the one page plaintiff devoted to its argument, it cited no case stating that expert opinion was required.
Of particular note, the Court held as follows on defendant’s summary judgment motion:
- Noting that summary judgment of inequitable conduct was “permissible, but uncommon,” the Court held that defendant had not met its burden of proving that there was no material question of fact as to patentholder’s intent to deceive.
- The Court denied defendant summary judgment of § 101 invalidity because defendant’s two-sentence argument was so conclusory that the Court could not consider it, let alone determine that the claims – which defendant did not individually address – were directed to unpatentable subject matter.
- As to defendant’s anticipation arguments, defendant only specifically addressed claim 1. So, the Court denied summary judgment as to all other claims because defendant did not specifically address the alleged invalidity of those claims.
- Regarding claim 1, the Court held that defendant’s cursory analysis did not allow the Court to assess the claims validity relative to the prior art. So, summary judgment was denied.
- While the preamble of claim 1 used the unusual term “arrangement” instead of the more usual “system,” “method,” or “apparatus,” the Court held that it was an apparatus claim because each claim element, and its dependent claims, were directed to structural elements. This determination was reinforced by claim 12 and its dependents, which were identified as “methods”
- Having determined that claim 1 and its dependents were apparatus claims, the Court held that the claims were indefinite for claiming both apparatus and method steps. Claim 1 taught a signal generator “wherein an operator” performed certain actions. The wherein clause made it unclear whether infringement would occur by creation of the device or whether it required use of the device. The Court’s conclusion was underscored by the parties’ dispute regarding whether claim 1 and its dependents were apparatus or method claims.
- The Court was not persuaded by defendant’s noninfringement claims, each of which was about a half-page and largely were not supported by any legal citation.
- The Court held that plaintiff’s failure to identify a specific direct infringer did not doom its indirect infringement claims because the underlying direct infringement could be proven by circumstantial evidence.
- Defendant’s argument that there was no contributory infringement because of a substantial non-infringing uses failed because it did provide evidence to support that any of the four uses were substantial.
- The Court denied summary judgment as to plaintiff’s induced infringement claims because the existence of an opinion of counsel was not per se preclude induced infringement.
Having granted in part both parties’ motions for summary judgment, the Court directed the parties to reevaluate their respective settlement positions and be prepared to discuss the remaining bounds of the case at a status hearing.