VoiceFill v. West Interactive Corporation et al

Filing 57

MEMORANDUM AND ORDER denying 48 Motion to Dismiss for Failure to State a Claim; denying 56 Motion for Hearing. Ordered by Judge John M. Gerrard. (ADB)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
VOICEFILL, LLC,
Plaintiff,

8:11-CV-421

vs.
MEMORANDUM AND ORDER
WEST INTERACTIVE
CORPORATION, WEST DIRECT,
INC., WEST DIRECT, LLC, WEST
DIRECT II, INC., and WEST
CORPORATION,
Defendants.
This matter is before the Court on the defendants' motion to dismiss
pursuant to Fed. R. Civ. P. 12(b)(6) (filing 48) and the defendants' motion for
hearing (filing 56). For the following reasons, the defendants' motion to
dismiss is denied without prejudice to the filing of a properly supported
motion for summary judgment, and their motion for hearing is denied.
I. BACKGROUND
Unless otherwise noted, the following facts are taken from the
plaintiff's operative complaint or its attachments. The plaintiff, VoiceFill,
LLC, is a California limited liability company and owner of United States
patent no. 6,738,740 (the '740 patent). Filing 45 at 1,6. The defendant
corporations, which will be referred to collectively as "West," are incorporated
in several states, but each have the same principal place of business in
Omaha, Nebraska. Filing 45 at 1-2. Although not specifically alleged in the
complaint, the Court notes for context that West is, generally speaking, in the
business of providing commercial voice communication services. See
http://www.west.com/about (last visited May 29, 2012).
VoiceFill's complaint generally alleges two claims: breach of contract
and patent infringement. The breach of contract claim is derived from a June
30, 2004, contract between predecessor entities to VoiceFill and West:
respectively, Vast, Inc., and NetByTel, Inc. Filing 45 at 3. Vast was founded
by Kenneth Barash, inventor of the '740 patent. Filing 45 at 3. VoiceFill
alleges that Vast and NetByTel entered into an agreement that involved
development of voice-to-text applications. Filing 45 at 3-4. (As will be

explained in greater detail below, the '740 patent generally describes a
method of using voice recognition technology for interactively gathering
information to generate a document, and specifically focuses on loan
applications. Filing 45-1 at 4.)
The agreement contained an intellectual property clause that
specifically discussed the '740 patent. The agreement expressly provided that
NetByTel did not, by virtue of the agreement, acquire any rights to the '740
patent. Filing 45 at 4; filing 45-2 at 3. The agreement also provided that:
NetByTel agrees not to develop nor offer to develop, directly or
indirectly, and shall restrict its employees from developing any
software, system(s) or product(s) for telephonically determining
satisfaction for loan applications which would compete with the
VA Streamline and Traditional loan applications in English and
any other foreign languages or any other products or services
covered under [the '740] Patent and developed by NetByTel for
[Vast], for any entity for the term of [the '740] Patent.
Filing 45 at 4; filing 45-2 at 3.
VoiceFill alleges that NetByTel, or substantially all of its assets, were
sold to Tuvox, Inc., in March 2005. Filing 45 at 4. Tuvox, in turn, was
acquired by West in July 2010. Filing 45 at 5. And Vast was acquired by
VoiceFill in November 2011. Filing 45 at 5.
VoiceFill alleges that in each of those acquisitions, the acquiring party
succeeded to the rights and obligations of its predecessor under the
Vast/NetByTel agreement. Filing 45 at 4-5. VoiceFill acknowledges that
Tuvox cancelled the agreement with Vast in April 2009, before VoiceFill and
West made their respective acquisitions. Filing 45 at 4-5. But VoiceFill points
to some provisions in the agreement that, according to VoiceFill, support the
conclusion that VoiceFill and West are still subject to the intellectual
property clause of the agreement. The agreement provided that upon
termination of the agreement, the parties' obligations would cease, except
that certain provisions, including the intellectual property clause, would
remain in effect. Filing 45 at 5; filing 45-2 at 5. And the agreement provided
that it would be binding upon the heirs, successors, and assigns of the
parties. Filing 45-2 at 6.
VoiceFill claims that West is breaching the intellectual property clause
of the agreement by developing products for telephonically completing loan
applications, and other products that are covered under the '740 patent.
Filing 45 at 6. In that regard, the breach of contract claim overlaps to an
extent with the patent infringement claim.
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The '740 patent "relates to a voice recognition system for interactively
gathering information to generate a document." Filing 45-1 at 4. Generally,
the patent describes a process by which a consumer—in particular, a loan
applicant—can call an automated system that would use voice recognition
technology to ask questions and solicit information from the consumer,
generating a form that would be transmitted to another party, such as a loan
officer. See filing 45-1. In particular, VoiceFill points to claim 11 of the
patent, which describes
A voice recognition system for interactively gathering
information from a plurality of users over a communications
network, comprising:
a remote device for establishing a voice connection with said
system over the communications network;
a processor for generating and transmitting a plurality of
verbal questions interactively to a user associated with said
remote device to complete a textual document; and
a storage device for storing user's verbal responses to said
plurality of questions to provide a verbal document; and
wherein said processor converts said verbal document into
said textual document; and
wherein said processor is operable to transmit a portion of said
textual document to a third party for verification or
confirmation.
Filing 45 at 7-8, filing 45-1 at 7.
VoiceFill alleges that West is violating at least claim 11 of the '740
patent by making, using, or selling "systems that operate as voice recognition
systems capable of interactively completing textual documents, including but
not limited to . . . 'interactive voice response and speech recognition
solutions.'" Filing 45 at 7. More particularly, VoiceFill alleges that
[o]n information and belief, [West's] infringing systems contain a
processor configured to generate and transmit verbal questions to
callers via a voice connection with a remote device to receive
verbal responses to the questions, which can relate to a wide
range of topics, including but not limited to loan applications,
insurance claims, purchase orders, bills of lading, etc.; the
systems store the callers verbal responses and convert them to
text, which is interactively supplied to a textual document; and
the system transmits a portion of the textual document to a third
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party, such as an underwriter, a live agent, a fulfillment center,
etc., for verification and/or confirmation, thereby infringing one
or more claims of the ’740 Patent.
Filing 45 at 7.
VoiceFill alleges that West is directly infringing the '740 patent, under
35 U.S.C. § 271, by actively employing the systems described above. And
VoiceFill claims that West is indirectly infringing the '740 patent by selling
systems to its customers (who then become direct infringers) and because
West's own customer callers directly infringe the patent by using the
connected system. Filing 45 at 11. VoiceFill also alleges that West knew
about the '740 patent because of its purported contractual duty, described
above, not to infringe it. Filing 45 at 11. And VoiceFill contends that West
has engaged in willful infringement of the '740 patent, making West liable for
enhanced damages under 35 U.S.C. § 284.
West has filed a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6)
for failure to state a claim upon which relief may be granted (filing 48); the
motion has been fully briefed (filings 49, 51, and 54) and evidence has been
submitted (filings 50, 53, and 55).1 West has also filed a motion for a hearing
(filing 56), requesting oral argument. The details of the parties' arguments in
support of and opposition to the motion will be discussed below.
II. STANDARD FOR 12(B)(6) MOTION TO DISMISS
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). This
short and plain statement must provide the defendant with fair notice of
what the plaintiff's claim is and the grounds upon which it rests. Gomez v.
Wells Fargo Bank, 676 F.3d 655 (8th Cir. 2012). This standard does not
require detailed factual allegations, but it demands more than an unadorned
accusation. Ashcroft v. Iqbal, 556 U.S. 662 (2009). The complaint must
provide more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not suffice. Bell Atl. Corp. v. Twombly, 550
U.S. 544 (2007). Fed. R. Civ. P. 8 does not, however, require a plaintiff to
plead specific facts explaining precisely how the defendant's conduct was
unlawful. Braden v. Wal-Mart Stores, Inc., 588 F.3d 585 (2009). Rather, it is
sufficient for a plaintiff to plead facts indirectly showing unlawful behavior,
so long as the facts pled give the defendant fair notice of what the claim is

The Court finds that none of the evidence submitted requires the motion to dismiss to be
treated as a motion for summary judgment pursuant to Fed. R. Civ. P. 12(d).
1

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and the grounds upon which it rests, and allow the court to draw the
reasonable inference that the plaintiff is entitled to relief. Id.
For the purposes of a motion to dismiss a court must take all of the
factual allegations in the complaint as true, but is not bound to accept as true
a legal conclusion couched as a factual allegation. Twombly, supra. And to
survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a complaint must
also contain sufficient factual matter, accepted as true, to state a claim for
relief that is plausible on its face. Iqbal, supra. 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.
Id. Where the well-pleaded facts do not permit the court to infer more than
the mere possibility of misconduct, the complaint has alleged—but it has not
shown—that the pleader is entitled to relief. Id.
Determining whether a complaint states a plausible claim for relief will
require the reviewing court to draw on its judicial experience and common
sense. Id. The facts alleged must raise a reasonable expectation that
discovery will reveal evidence to substantiate the necessary elements of the
plaintiff’s claim. Twombly, supra. The court must assume the truth of the
plaintiff’s factual allegations, and a well-pleaded complaint may proceed,
even if it strikes a savvy judge that actual proof of those facts is improbable,
and that recovery is very remote and unlikely. Id.
III. ANALYSIS
Although there is some overlap, for the most part, West's arguments in
support of its motion are distinct with respect to the contract claim and the
patent claim. So, the Court will address each claim separately. But first, the
Court takes note of the evidence VoiceFill has submitted in opposition to
West's motion to dismiss. It consists of several emails exchanged between the
respective attorneys for VoiceFill and West, discussing amendment of
VoiceFill's complaint and whether West would file a motion to dismiss.
Filings 53-1, 53-2, 53-3, 53-4, and 53-5. The evidence is apparently intended
to support VoiceFill's assertion that it has "gone above and beyond the call of
duty in an attempt to persuade [West] not to burden the Court with this
meritless motion." Filing 51 at 1.
It is not at all clear what VoiceFill expects the Court to do with this.
VoiceFill has not filed a motion for sanctions under Fed. R. Civ. P. 11(c)(2),
nor has VoiceFill argued for any other relief besides denial of West's motion
to dismiss. As best the Court can tell, VoiceFill is simply trying to make the
Court think poorly of West's counsel. But that tactic is counterproductive.
VoiceFill's concern about burdening the Court is hard to take seriously when
VoiceFill submits evidence and argument that are, in the absence of any
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request for relief, a waste of the Court's time. And while the Court denies
West's motion, the Court finds the motion far from frivolous.
The Court has given VoiceFill's evidence the attention it deserves:
none. Going forward, the parties would be better served by focusing their
attention on the issues that are actually before the Court. And it is to those
issues that the Court now turns.
1. BREACH OF CONTRACT CLAIM
West argues that VoiceFill's breach of contract claim should be
dismissed for failure to plead three necessary elements: (a) the existence of a
valid contract, (b) a plausible breach of contract, and (c) damages.
(a) Existence of Valid Contract
West's argument with respect to the validity of the contract is based on
the fact that West and VoiceFill never had an agreement. Rather, VoiceFill's
claim rests on its allegations that it succeeded to Vast's rights and obligations
under the Vast/NetByTel agreement, and that West (via Tuvox) succeeded to
NetByTel's rights and obligations—or, more precisely, that the parties are
still bound by the intellectual property clause of the agreement despite
Tuvox's termination of the agreement in 2009.
West takes issue with that theory on two grounds. First, West contends
that once Tuvox terminated the agreement, there were no contractual rights
or obligations left to assign or transfer upon West's acquisition of Tuvox.
West's argument is not without some appeal. While the termination clause of
the agreement expressly preserved some provisions post-termination,
including the intellectual property clause, it did not preserve the binding
effect clause, which provided that the agreement was binding upon the heirs,
successors, and assigns of the parties. See filing 45-2 at 5-6. So even if Tuvox
remained bound by the intellectual property clause, there is nothing in the
agreement to suggest that Tuvox's successors would be equally bound,
because the binding effect clause had been terminated.
But it is difficult to be certain of that in the absence of other
information—for instance, the terms of West's acquisition of Tuvox, and the
other acquisitions in the parties' respective "chains of title." The Court does
note West's submission, in its reply, of an agreement between Tuvox and a
purported successor of Vast that would have supplanted the Vast/NetByTel
agreement. The Court declines to consider this evidence; if evidence outside
the pleadings is to be considered, Fed. R. Civ. P. 12(d) requires that parties
be given a reasonable opportunity to present all the material pertinent to the
motion. VoiceFill has not been given such an opportunity, nor could it
realistically have such an opportunity in the absence of meaningful discovery.

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In short, while West's argument has some force, the issue it presents
would be better evaluated in the context of a more developed record. VoiceFill
alleges that West is bound by the agreement, and that allegation remains
plausible, if not likely.
West's second ground for challenging the validity of the agreement is
that according to West, Vast did not have legal capacity to enter into the
agreement. West presents public records that it invites the Court to judicially
notice, which indicate that Vast was dissolved before the agreement was
entered into, and that Barash owned the '740 patent, not Vast. 2 But even if
Vast had been dissolved, that does not preclude the possibility of a
corporation de facto, or some other basis for enforcing the contract. Cf.
Nunamaker v. State, 116 So. 2d 450 (Fla. App. 1959); see also Paradise
Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304 (Fed. Cir. 2003) (discussing
Florida law).3 And the Court is aware of no reason that the parties could not
contract to respect the '740 patent, even if the patent was owned by an officer
of one of the corporate parties.
(b) Plausible Breach of Contract
West argues that VoiceFill has not sufficiently identified how West has
breached any contract. West contends that VoiceFill neither alleges when the
breach occurred, nor identifies which products or services provided by West
breach the agreement.
But VoiceFill alleges that West's breach of the contract is ongoing—in
other words, VoiceFill alleges that the breach is occurring now. And as will be
explained in more detail below with respect to the patent infringement claim,
the Court finds VoiceFill sufficiently alleges that West is providing products
or services that infringe the '740 patent—and, thereby, breach the
Vast/NetByTel agreement. VoiceFill also alleges that West's systems can be
used for loan applications, which means that they would potentially compete
with the products mentioned in the non-compete provision of the intellectual
property clause. VoiceFill does not identify any products or services by trade
name, but describes them generally, in terms of what they do.
This suffices to give West fair notice of what the claim is and the
grounds upon which it rests. See Gomez, supra. A plaintiff's allegation that
"the defendant hit me with his car" would not be legally insufficient because
A court may take judicial notice of some public records in deciding a motion to dismiss. See
Levy v. Ohl, 477 F.3d 988 (8th Cir. 2007).
2

The Court cites Florida law because Vast and NetByTel were both based in Florida, and
their agreement provided that it would be governed and enforced in accordance with
Florida law. Filing 45-2 at 2,6. But the Court does not decide any choice of law questions at
this time.
3

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the plaintiff did not allege the make or model of the vehicle. Now, it may be
that the plaintiff could not do so because the defendant does not actually
have a car—but that would be grounds for summary judgment, not dismissal
for failure to state a claim.
(c) Damages
Finally, West argues that VoiceFill has not pled a claim for breach of
contract because VoiceFill has not pled damages. Admittedly, VoiceFill's bare
allegation that it "has been damaged due to West's breach of the NetByTel
agreement" leaves something to be desired. But if nothing else, VoiceFill has
alleged damages through the unlicensed use of its intellectual property. If
VoiceFill proves that its patent has been infringed, it might be entitled to
damages such as royalties or lost profits. See generally Mitutoyo Corp. v.
Central Purchasing, LLC, 499 F.3d 1284 (Fed. Cir. 2007); Glenayre Elec., Inc.
v. Jackson, 443 F.3d 851 (Fed. Cir. 2006). VoiceFill could also seek injunctive
relief from an ongoing infringement. See, 35 U.S.C. § 283; Glenayre, supra. In
any event, given the nature of this case, it is hardly necessary for West to
have a complete understanding of VoiceFill's damages in order to frame its
answer. The Court finds that VoiceFill has sufficiently stated a claim for
breach of contract.
2. PATENT INFRINGEMENT CLAIM
West takes issue with several aspects of VoiceFill's patent infringement
claim. Specifically, West contends that VoiceFill's patent infringement claim
should be dismissed because VoiceFill does not allege (a) the specific
products, services, or methods developed or sold by West that infringe the
'740 patent, (b) that West practices all of the '740 patent's claim limitations,
or (c) that West had notice of the '740 patent or knowledge of direct
infringement of the '740 patent by its customers.
The Court will address each point in turn. But as an overview, the
Court takes note of Fed. R. Civ. P. App. of Forms, Form 18, which sets forth a
complaint for patent infringement. Form 18 does so in very general terms,
permitting the plaintiff to simply identify the patent and allege that the
defendant is infringing the patent by making, selling, and using a product
that embodies the patented invention. And Fed. R. Civ. P. 84 provides that
the forms in the Appendix of Forms "suffice under these rules and illustrate
the simplicity and brevity that these rules contemplate." Rule 84 "serves to
emphasize that the forms contained in the Appendix of Forms are sufficient
to withstand attack under the rules under which they are drawn, and that
the practitioner using them may rely on them to that extent." Fed. R. Civ. P.
84 advisory committee's note. In this case, VoiceFill's allegations are no less

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detailed than those exemplified in Form 18, creating at the very least a
strong presumption that VoiceFill's allegations are sufficient to state a claim.
See Fed. R. Civ. P. 84; see also, W.L. Gore & Assocs., Inc. v. Medtronic, Inc.,
778 F. Supp. 2d 667 (E.D. Va. 2011); Braden Shielding Sys. v. Shielding
Dynamics of Texas, 812 F. Supp. 819 (N.D. Ill. 1992).
(a) Specific products, services, or methods
West argues that VoiceFill's allegations of direct infringement are
insufficient because they "provide[] no factual specificity whatsoever
regarding the specific products, services, or methods developed or sold by
West that are alleged to infringe." Filing 49 at 16. West contends that
VoiceFill's allegations regarding West's "'interactive voice response'"
technology are legally insufficient because it is a "generic description of a
technology that has existed for decades."4 Filing 45 at 7; filing 49 at 16.
But a patentee need only plead facts sufficient to place the alleged
infringer on notice. Phonometrics, Inc. v. Hospitality Franchise Sys., Inc., 203
F.3d 790 (Fed. Cir. 2000); see also, e.g., Braden, supra.5 A claim of direct
infringement is sufficient if it alleges ownership of the asserted patent,
names the individual defendants, cites the patent that is allegedly infringed,
describes the means by which the defendants allegedly infringe, and points to
the specific sections of the patent law involved. Phonometrics, supra; see also
McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007).
The Federal Circuit's decision in McZeal, supra, is instructive.6 In that
case, the plaintiff's complaint alleged his ownership of the patent, cited the
specific patent allegedly infringed, described the means by which it was
allegedly infringed, and cited the specific section of the patent law at issue.
The district court had found those allegations insufficient because the
That may be, in part, because the '740 patent itself rather generically describes a process
for using existing voice recognition technology to automate the process of filling out a form.
This may ultimately call into question the validity of the '740 patent. It may be that the
'740 patent's claims are patent-ineligible because of their abstraction. See, Dealertrack, Inc.
v. Huber, 674 F.3d 1315 (Fed. Cir. 2012); Cybersource Corp. v. Retail Decisions, Inc., 654
F.3d 1366 (Fed. Cir. 2011); see also, Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289 (2012); Bilski v. Kappos, 130 S. Ct. 3218 (2010). Or it may be that the
invention was obvious. See MySpace, Inc. v. GraphOn Corp., 756 F. Supp. 2d 1218 (N.D.
Cal. 2010), aff'd, 672 F.3d 1250 (Fed. Cir. 2012). But those are affirmative defenses that are
not yet before the Court. See i4i P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010).
4

On a purely procedural question not relating to patent law, such as whether a 12(b)(6)
motion should be granted, the rules of the regional circuit apply. See Phonometrics, supra.
5

The Court recognizes that the plaintiff in McZeal was entitled to some deference because
he was pro se, unlike the plaintiff here. But based on its reading of the Federal Circuit's
decision, the Court does not find that distinction to be meaningful.
6

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plaintiff conceded that he did not know what device, mechanism, or means
the defendant used to violate the patent. But, the Federal Circuit reasoned,
"[a]t this stage in the litigation, all [the plaintiff] has access to is [the
defendant's] public statements and advertisements. From this information he
has fashioned his complaint. In this case, the specifics of how [defendant's]
purportedly infringing device works is something to be determined through
discovery." Id. at 1357-58. The same is true here. West has enough notice
regarding its allegedly infringing products to be able to respond to VoiceFill's
complaint, which is all that Fed. R. Civ. P. 8(a) requires.
(b) Performance of All Claim Limitations
West also suggests, briefly, that VoiceFill's complaint is defective
because it only alleges that West violates some of the '740 patent's claim
limitations. West does not fully develop this argument, but it seems to
implicate the Federal Circuit's holding that direct infringement requires a
single party to perform every step of a claimed method, and that accordingly,
where the actions of multiple parties combine to perform every step of a
claimed method, the claim is directly infringed only if one party exercises
control or direction over the entire process. See BMC Res., Inc. v. Paymentech,
L.P., 498 F.3d 1373 (Fed. Cir. 2007); see also, Desenberg v. Google, Inc., 392
Fed. Appx. 868 (Fed. Cir. 2010); Muniauction, Inc. v. Thomson Corp., 532
F.3d 1318 (Fed. Cir. 2008). And indirect infringement requires a finding that
at least one party has committed direct infringement. See BMC Res., Inc.
This is a potentially serious obstacle to VoiceFill's infringement claim.
But the Court declines to dismiss VoiceFill's patent infringement claim
on this basis, for three reasons. First, although West's argument seems to
allude to this rule, West neither fully states the rule nor cites to the body of
law that supports it. So, it is questionable whether VoiceFill has been given
an adequate opportunity to respond to it.
Second, although VoiceFill alleges that West performs some of the steps
in the claimed method, while its customers perform others, the complaint
does not preclude the possibility that in at least some instances, one party
exercises control or direction over the entire process, or that one user uses
each and every element of the claimed system by putting the system into
service. See Centillion Data Sys., LLC v. Qwest Commc'ns Int'l, Inc., 631 F.3d
1279 (Fed. Cir. 2011); see also Muniauction, supra.
And third, last year the Federal Circuit granted rehearing en banc in
an alleged joint infringement case and directed the parties to brief the
question: "If separate entities each perform separate steps of a method claim,
under what circumstances would that claim be directly infringed and to what
extent would each of the parties be liable?" Akamai Techs., Inc. v. Mass. Inst.
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of Tech., 419 Fed. Appx. 989 (Fed. Cir. 2011). The rehearing en banc was
argued and submitted in November 2011, but no decision has issued. See
http://pacer.cafc.uscourts.gov/casedetail.asp?casenum=09-1372 (last visited
May 29, 2012). So, there is a distinct possibility that should this case proceed
to the summary judgment stage, the Federal Circuit will have provided
additional guidance on the issues presented by joint infringement.
(c) Notice
Next, West argues that the complaint is deficient because VoiceFill
does not allege that West had knowledge of the '740 patent or intent to cause
another to infringe the patent. VoiceFill responds that West's awareness of
the '740 patent can be inferred from its contractual duty under the
Vast/NetByTel agreement not to infringe the patent.
In this regard, VoiceFill's argument is off base. Notice to the infringer
of a patent is required by 35 U.S.C. § 287(a), which provides that in cases
(such as this one) involving an unmarked product, "no damages shall be
recovered by the patentee in any action for infringement, except on proof that
the infringer was notified of the infringement and continued to infringe
thereafter, in which event damages may be recovered only for infringement
occurring after such notice." And notice is an affirmative act to be done by the
patentee. See Lans v. Digital Equip. Corp., 252 F.3d 1320 (Fed. Cir. 2001)
(citing Dunlap v. Schofield, 152 U.S. 244 (1894)). Thus, the correct approach
to determining notice under § 287 must focus on the actions of the patentee,
not the actions of the infringer. Lans, supra. Actual notice under § 287(a)
must be an affirmative act on the part of the patentee which informs the
defendant of infringement. Lans, supra. VoiceFill alleges no such act.
But that does not entitle West to dismissal, because § 287 also provides
that "[f]iling of an action for infringement shall constitute such notice." In
other words, VoiceFill has alleged that West is infringing the '740 patent, and
the filing of this action has placed West on notice of the '740 patent and its
alleged infringement. If VoiceFill can prove infringement, its damages might
be limited by the timing of West's notice—but the failure to allege notice does
not require dismissal.
West also contends that VoiceFill fails to state a claim for induced
infringement because there is no allegation that West knew of and intended
to encourage another's infringement. See Fergusen Beauregard/Logic
Controls v. Mega Sys., LLC, 350 F.3d 1327 (Fed. Cir. 2003). But VoiceFill
alleges that West sold—and continues to sell—infringing products and
services to its customers. That is sufficient to state a claim for indirect
infringement. See Glenayre, supra. West also contends that there are no
allegations to support a finding of willful infringement. The Court is not
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persuaded that "willful infringement" is a separate claim subject to dismissal
under Fed. R. Civ. P. 12(b)(6), but in any event, willfulness is not subject to
an elevated pleading standard, see Mega Sys., supra, and insofar as West now
has unambiguous notice of the '740 patent, VoiceFill is entitled to try and
prove that any ongoing violation of the '740 patent was willful.
IV. CONCLUSION
For the foregoing reasons, the Court denies West's motion to dismiss
(filing 48), without prejudice to West raising some or all of the same
arguments (or different arguments) on a more developed record in a motion
for summary judgment. West also filed a motion for hearing (filing 56);
obviously, that motion is also denied. The Court finds that oral argument, at
this point, is unnecessary. But again, that does not preclude either party
from requesting oral argument on a motion for summary judgment, at which
point more complex issues might arise.
IT IS ORDERED:
1.

West's motion to dismiss for failure to state a claim (filing
48) is denied.

2.

West's motion for hearing (filing 56) is denied.

Dated this 29th day of May, 2012.
BY THE COURT:

John M. Gerrard
United States District Judge

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