BMO Harris v. Autoscribe et al. 

11-CV-07996 

1 BMO Harris’s Motion for Judgment 

on the Pleadings 

IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

BMO HARRIS BANK NATIONAL 

ASSOCIATION, 

Plaintiff/Counter-Defendant, 

v. 

AUTOSCRIBE CORPORATION and 

POLLIN PATENT LICENSING, LLC, 

Defendants/Counter-Plaintiffs. 

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Case No. 11 CV 7996

Judge John F. Grady 

Magistrate Judge Morton Denlow 

MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFF/COUNTER-DEFENDANT 

BMO HARRIS BANK NATIONAL ASSOCIATION’S 

MOTION FOR JUDGMENT ON THE PLEADINGS

Plaintiff/Counter-Defendant BMO Harris Bank National Association (“BMO” or 

“Plaintiff”) respectfully submits this memorandum in support of its motion for judgment on the 

pleadings on Counts II-V of BMO’s Complaint pursuant to Fed. R. Civ. P. 12(c) and asks that 

this Court enter a judgment in favor of BMO. 

STATEMENT OF FACTS

1. Autoscribe Corporation (“Autoscribe”) and Pollin Patent Licensing, LLC (“PPL,” 

and together with Autoscribe, “Defendants”) purport to own the five United States patents at 

issue in the action: (i) U.S. Patent No. 7,117,171 (the “‘171 patent”); (ii) U.S. Patent No. 

6,041,315 (the “‘315 patent”); (iii) U.S. Patent No. 5,966,698 (the “‘698 patent”); (iv) U.S. 

Patent No. 5,727,249 (the “‘249 patent”); and (v) U.S. Patent No. 5,504,677 (the “‘677 patent”). 

2. As detailed in BMO’s Complaint (D.I. 001, ¶¶ 21-23), and admitted in 

Defendants’ Answer (D.I. 011), on July 5, 2011, Defendants’ representative, IP Dispute 

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BMO Harris v. Autoscribe et al. 

11-CV-07996 

2 BMO Harris’s Motion for Judgment 

on the Pleadings 

Resolution (“IPDR”) sent BMO a letter (hereinafter the “demand letter”) on behalf of 

Defendants, identifying all five of Defendants’ patents (i.e., each of the ‘171, ‘315, ‘698, ‘249, 

and ‘677 Patents) and threatening BMO with an infringement litigation if BMO did not enter into 

a license agreement. Defendants continued to hound BMO via e-mail, insisting that a license 

was necessary. D.I. 001, ¶¶ 23-24. 

3. BMO believed the five patents were neither infringed nor valid, but rather than 

engage in a series of negotiations with Defendants, BMO commenced litigation to remove this 

cloud of uncertainty from over its head. Specifically, on November 10, 2011, BMO filed a 

Complaint For Declaratory Judgment Of Non-Infringement And Invalidity against Defendants 

(D.I. 001) seeking, inter alia, declaratory judgment of non-infringement of all five of the Patents 

cited in the demand letter. D.I. 001, Counts I-V. The Complaint also seeks a declaratory 

judgment of invalidity as to all five Patents. D.I. 001, Counts VI-X. 

4. On December, 5, 2011, Defendants filed their Answer and Counterclaim For 

Patent Infringement (D.I. 011). Despite identifying all five patents in the demand letter and 

demanding that BMO take a license under one or more of them or face litigation, Defendants’ 

Answer denies only Count I of BMO’s Complaint (non-infringement of the ‘171 Patent). D.I. 

011, Response to ¶ 29. Defendants’ Answer responds to Counts II-V (non-infringement of the 

‘315, ‘698, ‘249, and ‘677 Patents) with the same indefinite statement that “Autoscribe and PPL 

have insufficient knowledge, information or belief to admit or deny the truth of this allegation.” 

D.I. 011, Responses to ¶¶ 33, 37, 41, and 45. 

5. On February 10, 2012, Defendants filed a Motion to Dismiss Certain Claims for 

Lack of Subject Matter Jurisdiction (D.I. 029) in which they seek, inter alia, to dismiss Counts 

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BMO Harris v. Autoscribe et al. 

11-CV-07996 

3 BMO Harris’s Motion for Judgment 

on the Pleadings 

II-V of BMO’s Complaint without prejudice. In support of this Motion, but directly contrary to 

their stated position in the pre-suit communications, Defendants now inform the Court that they: 

“[do] not contend that BMO infringes the ‘315, 698, ‘249 or ‘677 patents 

(collectively “the Non-Asserted Autoscribe Patents”). In fact, since the filing of 

this lawsuit, Autoscribe has repeatedly informed BMO that it has no intent to 

assert claims for infringement of the Non-Asserted Autoscribe Patents against 

BMO.” 

D.I. 030, at p. 2. 

GOVERNING LEGAL STANDARD

Federal Rule of Civil Procedure 12(c) provides: “After the pleadings are closed—but 

early enough not to delay trial—a party may move for judgment on the pleadings.” Fed. R. Civ. 

P. 12(c). The standard for addressing a motion for judgment on the pleadings is the same as that 

applicable to a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6). Blue Sky 

Bio, LLC v. Federal Ins. Co., No. 10 C 4612, 2010 U.S. Dist. LEXIS 133999, at *5 (N.D. Ill. 

Dec. 17, 2010). Motions for judgment on the pleadings are granted when “it appears beyond 

doubt that the plaintiff cannot prove any facts that would support his claim for relief, construing 

the facts in the light most favorable to the non-moving party.” Id. at *6. 

In deciding a motion for judgment on the pleadings, the court views the facts in the light 

most favorable to the non-moving party, and all well-pled allegations by the non-moving party 

are taken as true. Abbott Labs. v. Sandoz, Inc., 532 F. Supp. 2d 996, 998 (N.D. Ill. 2007), citing 

Gillman v. Burlington Northern R.R. Co., 878 F.2d 1020 (7th Cir. 1989). 

Generally, “[w]hen ruling on a motion for judgment on the pleadings, the court cannot 

consider matters outside the pleadings, unless the court treats the motion as one for summary 

judgment.” Rainey v. UPS, 2011 U.S. Dist. LEXIS 91228, at *4 (N.D. Ill. Aug. 16, 2011), citing 

Fed. R. Civ. P. 12(d). That does not mean, however, that the Court cannot look beyond the 

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BMO Harris v. Autoscribe et al. 

11-CV-07996 

4 BMO Harris’s Motion for Judgment 

on the Pleadings 

complaint and answer. The Court “may take judicial notice of, and consider, matters of public 

record without converting the motion to dismiss into a motion for summary judgment.” Id., 

citing Menominee Indian Tribe of Wis. v. Thompson, 161 F.3d 449, 456 (7th Cir. 1998). The 

Court may also “review and consider exhibits attached to the complaint when resolving a motion 

for judgment on the pleadings.” Blue Sky Bio, LLC at *6.1

ARGUMENT

As of today, Defendants have filed over a dozen patent infringement litigations asserting 

at one time or another each of the ‘171, ‘315, ‘698, ‘249, and ‘677 Patents against over twenty 

different defendants. Against this backdrop, BMO received a demand letter on July 5, 2011 from 

IPDR on behalf of Defendants that identified each of the ‘171, ‘315, ‘698, ‘249, and ‘677 

Patents, and demanded licensing fees from BMO. Ex. A, p 1, incorporated by reference in ¶¶ 

21-23 of the Complaint. This letter indicated that Defendants believed BMO to be “using a 

system which is covered by one or more of its issued U.S. Patents” (id., p. 1), that it could be 

turned over to “Autoscribe’s patent litigation attorneys” (id., p. 2), and provided a claim chart for 

one claim of the ‘171 patent, but which specified that it was “just one example of infringement 

from the five patents owned by Autoscribe” (id., p. 15). 

BMO does not believe it infringed or infringes any valid claims of any of the ‘171, ‘315, 

‘698, ‘249, and ‘677 Patents. Thus, under the provisions of the Declaratory Judgment Act, and 

to remove this cloud of uncertainty as to all five patents and to Defendants threats of litigation, 

BMO filed its Complaint requesting, inter alia, a declaration of non-infringement of each of the 

five patents. 

 

1

 Further, Fed. R. Civ. P.10(c) states: “A statement in a pleading may be adopted by reference elsewhere in the same 

pleading or in any other pleading or motion. A copy of a written instrument that is an exhibit to a pleading is a part 

of the pleading for all purposes.” 

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BMO Harris v. Autoscribe et al. 

11-CV-07996 

5 BMO Harris’s Motion for Judgment 

on the Pleadings 

Although Defendants were able to allege infringement of each of the five patents by 

BMO’s system in its demand letter, they suddenly found themselves unable to make a decision 

on infringement when it came time to answer BMO’s Complaint. In their Answer, Defendants 

refused to respond to BMO’s claims for non-infringement of four of the patents – the ‘315, ‘698, 

‘249, and ‘677 Patents (Counts II-V, respectively). Rather, Defendants responded to each of 

these counts with the same indefinite statement that “Autoscribe and PPL have insufficient 

knowledge, information or belief to admit or deny the truth of this allegation.” D.I. 011, 

Responses to ¶¶ 33, 37, 41, and 45.2

Since this time, however, Defendants’ position has changed again, and they now concede 

there is no infringement of the ‘315, ‘698, ‘249, and ‘677 Patents. Defendants have now moved 

to dismiss Counts II-V related to these patents (D.I. 029), and in the supporting memorandum 

inform the Court that they: 

 “[do] not contend that BMO infringes the ‘315, 698, ‘249 or ‘677 patents 

(collectively “the Non-Asserted Autoscribe Patents”). In fact, since the filing of 

this lawsuit, Autoscribe has repeatedly informed BMO that it has no intent to 

assert claims for infringement of the Non-Asserted Autoscribe Patents against 

BMO.” 

D.I. 030, at p. 2. 

Accordingly, BMO moves for judgment on the pleadings as to its claims of noninfringement of the ‘315, ‘698, ‘249, and ‘677 Patents (Counts II-V of the Complaint). BMO has 

asserted non-infringement of each of these patents in its Complaint. Defendants’ Answer does 

not admit or deny these claims, and now Defendants’ Motion to Dismiss, cited above, concedes 

 

2

 In the parties’ previous appearance before this Court (on January 11, 2012), Defendants also requested that the 

Court provide a discovery period prior to claim construction so that Defendants could review BMO’s system. 

Curiously, Defendants filed their Motion before receiving BMO’s discovery, and thus must not have needed the 

discovery to determine their infringement allegations. 

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6 BMO Harris’s Motion for Judgment 

on the Pleadings 

there is no infringement of the ‘315, ‘698, ‘249, and ‘677 Patents, a statement which the Court 

may take judicial notice due to its presence in the public record. Rainey at *4. 

Finally, for the reasons set forth in BMO’s Opposition to Defendants’ Motion to Dismiss, 

it would be inappropriate to dismiss these claims at this stage of the proceeding. To do so would 

permit Defendants to continue to wave the patents over BMO’s head and threaten litigation 

should it decide to do so in the future - thus defeating the very purpose of BMO’s Complaint for 

declaratory judgment. The Court has subject matter jurisdiction over BMO’s Complaint, and in 

light of the fact that Defendants do not allege infringement of the four patents and now expressly 

concede there is no infringement of those same four patents, judgment on the pleadings is 

appropriate and should be granted. 

CONCLUSION

BMO commenced this action including the four counts seeking a declaratory judgment 

that it does not infringe the ‘315, ‘698, ‘249, and ‘677 Patents. Defendants now admit that BMO 

does not infringe the ‘315, ‘698, ‘249, and ‘677 Patents. As such, BMO respectfully requests 

that this Court should grant Plaintiff’s Motion for Judgment on the Pleadings as to Counts II-V in 

BMO’s Complaint in favor of BMO pursuant to Fed. R. Civ. P. 12(c). 

 Respectfully submitted, 

Dated: February 24th, 2012 BMO Harris Bank National Association 

Emily Newhouse Dillingham (IL #6290333) 

PAUL HASTINGS LLP 

191 North Wacker Drive, 30th Floor 

Chicago, IL 60606 

Telephone: (312) 499-6292 

Facsimile: (312) 499-6192 

emilydillingham@paulhastings.com 

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BMO Harris v. Autoscribe et al. 

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7 BMO Harris’s Motion for Judgment 

on the Pleadings 

Robert M. Masters (admitted pro hac vice) 

Timothy P. Cremen (admitted pro hac vice) 

Lisa Y. Leung (admitted pro hac vice) 

PAUL HASTINGS LLP 

875 15th Street, N.W. 

Washington, DC 20005 

Telephone: (202) 551-1700 

Facsimile: (312) 551-1705 

robmasters@paulhastings.com 

timothycremen@paulhastings.com 

lisaleung@paulhastings.com 

Bob Chen (admitted pro hac vice) 

PAUL HASTINGS LLP 

4747 Executive Drive 

Twelfth Floor 

San Diego, CA 92121 

Telephone: (858) 458-3023 

Facsimile: (858) 458-3123 

bobchen@paulhastings.com 

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BMO Harris v. Autoscribe et al. 

11-CV-07996 

8 BMO Harris’s Motion for Judgment 

on the Pleadings 

CERTIFICATE OF SERVICE

 I hereby certify that on February 24th, 2012, I electronically filed the foregoing 

Memorandum in Support of Plaintiff/Counter-Defendant BMO Harris Bank National 

Association’s Motion for Judgment on the Pleadings with the Clerk of Court using the CM/ECF 

system, which will send notification of such filing to all attorneys of record for Defendants at 

their e-mail addresses on file with the Court. 

 /s/ Emily Newhouse Dillingham 

 Emily Newhouse Dillingham 

LEGAL_US_E # 96853079.6 

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