Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 1 of 15 PageID #: 475
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`UNIVERSITY OF MASSACHUSETTS
`MEDICAL SCHOOL and CARMEL
`LABORATORIES, LLC,
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` Plaintiffs,
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`v.
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`L’ORÉAL S.A. and L’ORÉAL USA, INC.,
`
` Defendants.
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`C.A. No. 17-868-JFB-SRF
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`DEFENDANT L’ORÉAL USA, INC.’S
`REPLY BRIEF IN SUPPORT OF L’ORÉAL USA, INC.’S
`MOTION TO DISMISS PLAINTIFFS’ FIRST AMENDED COMPLAINT
`
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for L’Oréal USA and L’Oréal S.A.
`
`
`
`Of Counsel:
`
`Dennis S. Ellis
`Katherine F. Murray
`Paul Hastings LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA, 90071
`(213) 683-6000
`
`Naveen Modi
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C., 20005
`(202) 551-1990
`
`Blaine M. Hackman
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`(212) 318-6000
`
`Dated: October 2, 2017
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`
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`

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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 2 of 15 PageID #: 476
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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
`
`THE FAC FAILS TO PLAUSIBLY PLEAD INFRINGEMENT OF THE ASSERTED
`PATENTS .......................................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`Plaintiffs’ Opposition Relies on Improper Pleading Standards ............................. 2
`
`Plaintiffs Have Not Plausibly Plead Direct Infringement ...................................... 2
`
`1.
`
`2.
`
`Plaintiffs Have Not Adequately Pled Infringement for All Elements of the
`Asserted Claims of the ’327 and ’513 Patents ........................................... 3
`
`Plaintiffs’ Opposition Raises More Questions Regarding Adequate Pre-
`Suit Infringement Investigation ................................................................. 6
`
`Plaintiffs Have Not Plausibly Pled Induced or Contributory Infringement ........... 7
`
`Plaintiffs Have Not Plausibly Pled Willful Infringement ...................................... 9
`
`Plaintiffs’ Repeated Failure to Plausibly Allege Infringement Warrants Dismissal
`of the FAC with Prejudice ................................................................................... 10
`
`III.
`
`CONCLUSION ................................................................................................................ 10
`
`
`
`i
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`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 3 of 15 PageID #: 477
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Ashcroft v. Iqbal,
`
`556 U.S. 662 (2009) ..................................................................................................................2
`
`Bayer AG v. Elan Pharm. Research Corp.
`212 F.3d 1241 (Fed. Cir. 2000)..................................................................................................5
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) ...................................................................................................................2
`
`Cipla Ltd. v. Sunovion Pharm. Inc.,
`174 F. Supp. 3d 869 (D. Del. 2016) ...........................................................................................8
`
`Commonwealth Research Grp. LLC v. Lattice Semiconductor Corp.,
`No. 11-655-RGA, 2012 WL 2501107 (D. Del. June 28, 2012) .................................................6
`
`DermaFocus LLC v. Ulthera, Inc.,
`201 F. Supp. 3d 465 (D. Del. 2016) ...........................................................................................3
`
`E.I. Du Pont de Nemours & Co. v. Heraeus Holding GmbH,
`No. 11-773-SLR, 2012 WL 4511258 (D. Del. Sept. 28, 2012) .................................................8
`
`Evolved Wireless, LLC v. Samsung Elecs. Co.,
`No. 15-545-SLR-SRF, 2016 WL 1019667 (D. Del. Mar. 15, 2016) .........................................8
`
`Fowler v. UPMC Shadyside,
`578 F.3d 203 (3d Cir. 2009).......................................................................................................2
`
`Global–Tech Appliances, Inc. v. SEB S.A,
`563 U.S. 754 (2011) ...................................................................................................................9
`
`Intamin, Ltd. v. Magnetar Techs., Corp.,
`483 F.3d 1328 (Fed. Cir. 2007)..................................................................................................6
`
`Judin v. United States,
`110 F.3d 780 (Fed. Cir. 1997)................................................................................................6, 7
`
`Lifetime Indus., Inc. v. Trim-Lok, Inc.,
` No. 2017-1096, 2017 WL 3908174 (Fed. Cir. Sept. 7, 2017) ..................................................6
`
`Macronix Int’l Co., v. Spansion Inc.,
`4 F. Supp. 3d 797 (E.D. Va. 2014) ........................................................................................3, 7
`
`
`
`ii
`
`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 4 of 15 PageID #: 478
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page(s)
`
`Neology, Inc. v. Kapsch Trafficcom IVHS, Inc.,
`No. CV 13-2052-LPS, 2014 WL 4675316 (D. Del. Sept. 19, 2014) .......................................10
`
`Raindance Techs., Inc. v. 10x Genomics, Inc
`No. 15-152-RGA, 2016 WL 927143 (D. Del. Mar. 4, 2016) ....................................................6
`
`SIPCO, LLC v. Streetline, Inc.,
`230 F. Supp. 3d 351 (D. Del. 2017) ...........................................................................................3
`
`St. Clair Intellectual Property Consultants, Inc. v. Hewlett-Packard Co.,
`No. 10-425-LPS, 2012 WL 1134318 (D. Del. Mar. 28, 2012) .................................................9
`
`Swierkiewicz v. Sorema N.A.,
`534 U.S. 506 (2002) ...................................................................................................................2
`
`Telecomm Innovations, LLC v. Ricoh Co.,
`966 F. Supp. 2d 390 (D. Del. 2013) ...........................................................................................8
`
`
`
`
`
`iii
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`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 5 of 15 PageID #: 479
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`
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`I.
`
`INTRODUCTION
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`Plaintiffs University of Massachusetts Medical School’s
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`(“UMass”) and Carmel
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`Laboratories, LLC’s (“Carmel Labs”) (collectively “Plaintiffs”) Opposition (D.I. 19) to L’Oréal
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`USA’s Motion to Dismiss (D.I. 16) highlights the numerous inadequacies of the First Amended
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`Complaint (“FAC”) and the implausibility of Plaintiffs’ infringement pleadings.1 Unable to
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`substantively address L’Oréal USA’s arguments for dismissal, Plaintiffs resort to inundating the
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`Court with case law, including opinions that have been called into question, if not outright rejected,
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`under the Iqbal/Twombly pleading standards, and decisions inapposite to the facts here.
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`The asserted claims of U.S. Patent Nos. 6,423,327 (the “’327 patent”) and 6,645,513 (the
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`“’513 patent”) (collectively, the “patents-in-suit”) have claim elements that require more than
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`merely applying adenosine-containing compositions to the skin. (See D.I. 16 at 9-11.) For example,
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`both patents require specific concentrations of adenosine and the absence of “dermal cell
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`proliferation” upon application of a composition. (See D.I. 13, ¶ 12; D.I. 13-1 at 10:18-26; D.I. 13-2
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`at 10:18-26.) By only stating generally that L’Oréal USA sells and markets the Accused Adenosine
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`Products (see, e.g., D.I. 19 at 4-5), Plaintiffs remain unable to adequately allege direct, induced,
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`contributory, or willful infringement of the patents-in-suit. Because Plaintiffs remain unable to
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`address these deficiencies in their pleadings despite previous notice (see D.I. 8 at 5-6; D.I. 17, ¶¶ 3-
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`6, Exs. A, B), L’Oréal USA respectfully urges the Court to dismiss the FAC with prejudice, and
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`relieve L’Oréal USA of the burden of contesting Plaintiffs’ futile pleadings. (D.I. 16 at 14-15.)
`
`
`1 On September 6, 2017, the Parties filed a stipulation, so ordered on September 8, 2017, extending
`the deadline for L’Oréal USA, Inc. to file its reply brief in support of its Motion to Dismiss (D.I. 15)
`through and including October 2, 2017 (from September 12, 2017). (D.I. 21.)
`1
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`
`
`

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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 6 of 15 PageID #: 480
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`
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`II.
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`THE FAC FAILS TO PLAUSIBLY PLEAD INFRINGEMENT OF THE ASSERTED
`PATENTS
`
`A.
`
`Plaintiffs’ Opposition Relies on Improper Pleading Standards
`
`Plaintiffs state that a “complaint should not be dismissed for failure to state a claim unless it
`
`appears beyond doubt that ‘no relief could be granted under any set of facts that could be proved
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`consistent with the allegations.’” (D.I. 19 at 2 (quoting Swierkiewicz v. Sorema N.A., 534 U.S. 506,
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`514 (2002)).) This is not the complete standard under Iqbal/Twombly. The Third Circuit has stated
`
`that “Swierkiewicz expressly adhered to Conley’s then-prevailing ‘no set of facts’ standard and held
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`that the complaint did not have to satisfy a heightened standard of pleading,” but “because Conley
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`has been specifically repudiated by both Twombly and Iqbal, so too has Swierkiewicz, at least insofar
`
`as it concerns pleading requirements and relies on Conley.” Fowler v. UPMC Shadyside, 578 F.3d
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`203, 211 (3d Cir. 2009) (alluding to Conley v. Gibson, 355 U.S. 41 (1957).); see also Bell Atl. Corp.
`
`v. Twombly, 550 U.S. 544, 562-563 (2007).
`
`Indeed, Twombly makes clear that the “no set of facts” language “is best forgotten as an
`
`incomplete, negative gloss on an accepted pleading standard: once a claim has been stated
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`adequately, it may be supported by showing any set of facts consistent with the allegations in the
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`complaint.” Twombly, 550 U.S. at 563 (emphasis added). In their FAC, Plaintiffs have neither
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`adequately stated their infringement claim nor provided any set of facts consistent with their
`
`allegations. As previously explained (D.I. 16 at 7-15), the “naked assertion[s] devoid of further
`
`actual enhancement” made by Plaintiffs in their FAC fail to meet the Twombly/Iqbal pleading
`
`standard. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
`
`B.
`
`Plaintiffs Have Not Plausibly Plead Direct Infringement
`
`The FAC differs little in substance from the dismissed complaints in SIPCO and Macronix
`
`that Plaintiffs provide with their Opposition. (See D.I. 19 at 7; D.I. 20, Exs. A, B.) The SIPCO
`
`complaint was dismissed because it identified some patents plaintiffs owned, some products
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`
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`2
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`

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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 7 of 15 PageID #: 481
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`
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`defendants sold, and then concluding “to wit, the sales of your products infringe ou[r] patents,”
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`without explaining how those products infringe the asserted patents. SIPCO, LLC v. Streetline, Inc.,
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`230 F. Supp. 3d 351, 353 (D. Del. 2017). The Macronix complaint was dismissed because it
`
`“simply allege[d] that each element of a cited claim is infringed and then parroted the claim
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`language for each element.” Macronix Int’l Co. v. Spansion Inc., 4 F. Supp. 3d 797, 804 (E.D. Va.
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`2014). By identifying some adenosine-containing topical skin products that L’Oréal USA sells and
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`then alleging that each element of the cited claims is infringed by parroting the claim language for
`
`each element, Plaintiffs’ FAC has the same substantive inadequacies as the complaints in SIPCO
`
`and Macronix. (See D.I. 13, ¶¶ 38-39, 48-49; see also D.I. 19 at 3-4.)
`
`L’Oréal USA’s position that Plaintiffs are required under the Iqbal/Twombly pleading
`
`standards to provide some explanation beyond parroting claim language is not tantamount to
`
`requiring detailed contentions, as alleged by Plaintiffs. (D.I. 19 at 2-3.) In contrast to DermaFocus
`
`LLC v. Ulthera, Inc., 201 F. Supp. 3d 465, 470 (D. Del. 2016), where it was “not apparent to the
`
`court whether the information demanded by defendant is in the public domain and, therefore,
`
`reasonably available to plaintiff,” the public availability of L’Oréal USA’s Accused Adenosine
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`Products is acknowledged by Plaintiffs (see, e.g., D.I. 13, ¶¶ 25, 31, 34; D.I. 13-5 at 3, “L’Oréal’s
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`Youth Code to Hit Mass.”) Plaintiffs were able to readily acquire and test Accused Adenosine
`
`Products pre-suit to determine whether they infringe the ’327 and/or ’513 patent. The FAC and
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`Plaintiffs’ Opposition provides no basis that any such effort was made.
`
`1.
`
`Plaintiffs Have Not Adequately Pled Infringement for All Elements of the
`Asserted Claims of the ’327 and ’513 Patents
`
`To support the adequacy of their infringement pleadings, Plaintiffs refer to marketing claims
`
`in the FAC relating to the benefits applying adenosine to skin. (D.I. 19 at 5 (citing D.I. 13, ¶¶ 25-
`
`26).) But the asserted claims of the ’327 and ’513 patents require more than simply the applying
`
`adenosine-containing products to the skin with some generalized benefits. (See D.I. 16 at 9-11.)
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`
`
`3
`
`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 8 of 15 PageID #: 482
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`
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`Indeed, topical application of adenosine compositions to the skin was reported in the prior art and
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`distinguished by applicants—based on the adenosine concentration and no dermal cell proliferation
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`claim elements—during prosecution of the application that led to the ’327 patent. (Id. at 5, 10-11.)
`
`Claim 1 of the ’327 patent requires “a concentration of adenosine in an amount effective to enhance
`
`the condition of the skin without increasing dermal cell proliferation, wherein the adenosine
`
`concentration applied to the dermal cells is 10-4 M to 10-7 M” (D.I. 13, ¶ 12; D.I. 13-1 at 10:18-26),
`
`and claim 1 of the ’513 patent has nearly the same requirement except that “the adenosine
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`concentration applied to the dermal cells is 10-3 M to 10-7 M.” (D.I. 13, ¶ 12; D.I. 13-2 at 10:18-26.)
`
`Plaintiffs’ Opposition fails to reconcile these inadequacies.
`
`For instance, Plaintiffs do not explain how the FAC alleges how any Accused Adenosine
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`Product, for example, L’Oréal Paris’ RevitaLift Triple Power Deep-Acting Moisturizer, could be
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`used “without increasing dermal cell proliferation,” as required in the asserted claims. (See D.I. 16
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`at 10-11; D.I. 19 at 3-4.) On this basis alone, the FAC should be dismissed.
`
`As to adenosine concentration, Plaintiffs’ position that “complaint allegations must be taken
`
`as true and construed in the light most favorable to the plaintiff” (D.I. 19 at 6) does not give them
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`open license to plead infringement without offering any specific plausible facts or allegations
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`regarding the adenosine concentration applied to the dermal cells when using any Accused
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`Adenosine Products. (See D.I. 13, ¶¶ 38, 48; D.I. 16 at 5-6, 9-11.) Excerpts from L’Oréal’ USA’s
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`publications and promotional material fail to reveal any information about adenosine concentration
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`or dermal cell proliferation required by the asserted claims. (D.I. 13, ¶¶ 20, 25, 26, 34; D.I. 19 at 4-
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`5.)
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`Instead of demonstrating how the FAC supports their infringement allegations, Plaintiffs
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`attack L’Oréal USA’s argument by suggesting it is “based on the concentration of adenosine in its
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`products, but not the concentration that is ultimately applied to the dermal cells….” (D.I. 19 at 6-7.)
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`
`
`4
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`

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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 9 of 15 PageID #: 483
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`
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`Plaintiffs’ response, however, highlights the deficiencies in the FAC.
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`First, Plaintiffs never alleged in their Complaint or FAC that the claimed adenosine
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`concentration range relates to “the concentration penetrating the epidermis to ultimately reach the
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`dermal cells in the claimed ranges,” instead they argue this for the first time here. (Id. (emphasis
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`original).) Thus, Plaintiffs’ response demonstrates that the allegations in the FAC were insufficient.2
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`Second, even assuming that Plaintiffs’ theory is alleged in the FAC, the pleadings in the FAC
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`remains just as inadequate, if not more, under the Twombly/Iqbal standard. Not only did Plaintiffs
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`fail to allege the concentration of any Accused Adenosine Product applied to the skin, but they also
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`failed to allege how any Accused Adenosine Products could be applied to the skin such that the
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`concentration of adenosine “penetrating the epidermis to ultimately reach the dermal cells” would
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`plausibly fall within the claimed range. (D.I. 19 at 6-7.) Instead, Plaintiffs only made generalized
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`infringement allegations based on websites and other promotional materials that L’Oréal USA’s
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`Accused Adenosine Products would infringe the asserted claims. (See, e.g., D.I. 13, ¶¶ 25-26, 38,
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`48; D.I. 19 at 5.) Moreover, it remains that the only documents included or cited in Plaintiffs’ FAC
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`contain examples of adenosine compositions concentrations consistent with prior art compositions
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`that were distinguished over during prosecution. (See, e.g., D.I. 16 at 10.) The FAC and Plaintiffs’
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`Opposition provide no explanation as to how any Accused Adenosine Products could plausibly meet
`
`Plaintiffs’ proposed dermal cell adenosine concentration range construction, while the prior art
`
`compositions would not. Thus, the holding in Bayer AG v. Elan Pharmaceutical Research Corp.,
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`212 F.3d 1241, 1252 (Fed. Cir. 2000), that “clear and unmistakable surrender” of values outside a
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`range preclude a finding of infringement still applies to Plaintiffs’ new (and unpled) infringement
`
`theory.
`
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`2 Nor did Plaintiffs attempt to share their newly framed infringement theory when these deficiencies
`were raised by L’Oréal USA in correspondence with Plaintiffs leading up to the Motion to Dismiss.
`(D.I. 8 at 5-6; D.I. 17, ¶¶ 3-6, Exs. A, B.)
`
`
`
`
`5
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`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 10 of 15 PageID #: 484
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`
`
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`2.
`
`Plaintiffs’ Opposition Raises More Questions Regarding Adequate Pre-
`Suit Infringement Investigation
`
`As explained, “Plaintiff[s] make[] no attempt to relate any [of] their factual assertions with
`
`any of the asserted claims.” Raindance Techs., Inc. v. 10x Genomics, Inc., No. 15-152-RGA, 2016
`
`WL 927143, at *2 (D. Del. Mar. 4, 2016). And as in Raindance, Plaintiffs’ failure to adequately
`
`allege infringement arises from the FAC’s reliance on promotional materials (see, e.g., D.I. 13, ¶¶
`
`20, 25, 26, 34, Ex. 12; D.I. 19 at 4-5), which lack the information required to make a plausible claim
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`for infringement of the asserted claims. Id.; cf. Commonwealth Research Grp. LLC v. Lattice
`
`Semiconductor Corp., No. 11-655-RGA, 2012 WL 2501107l, at *3 (D. Del. June 28, 2012)
`
`(indicating that reverse engineering may not be required if the infringement analysis can be
`
`conducted through other means).
`
`Although testing may not be required in all instances, particularly those where there may be
`
`“unreasonable obstacles to any effort to obtain a sample,” this is not such an instance. See Intamin,
`
`Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1338 (Fed. Cir. 2007). The Accused Adenosine
`
`Products are publicly available (see, e.g., D.I. 13, ¶¶ 25, 31, 34; D.I. 13-5 at 3, “L’Oréal’s Youth
`
`Code to Hit Mass”), and Plaintiffs allege no obstacles to obtaining samples to facilitate testing to
`
`support the allegations in the FAC or Plaintiffs’ new theory. Id. (If “the patentee could have easily
`
`obtained a sample of the accused device . . . for a nominal price” testing may be required as part of
`
`pre-suit diligence) (citing Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997)). The website
`
`and promotional materials relied on in the FAC (see, e.g., D.I. 13, ¶¶ 25-26; D.I. 19 at 5) could not
`
`alone plausibly show whether the Accused Adenosine Products could be used in a way that meets
`
`each element of the asserted claims (even under Plaintiffs’ new theory).3 Judin is instructive here:
`
`
`3 The facts here are distinguishable from those described in the Federal Circuit’s recent decision in
`Lifetime Indus., Inc. v. Trim-Lok, Inc., where the pleadings described a direct investigation of an
`allegedly infringing product. No. 2017-1096, 2017 WL 3908174, at *5 (Fed. Cir. Sept. 7, 2017).
`6
`
`
`
`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 11 of 15 PageID #: 485
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`
`
`
`In this case, prior to the filing of the suit, neither Judin [n]or his
`counsel had made a reasonable effort to ascertain whether the accused
`devices satisfied the two key claim limitations, either literally or under
`the doctrine of equivalents. No adequate explanation was offered for
`why they failed to obtain, or attempted to obtain, a sample of the
`accused device . . . so that its actual design and functioning could be
`compared with the claims of the patent. Under these circumstances,
`there is no doubt that Judin failed to meet the minimum standards
`imposed by Rule 11. . . .
`
`Judin, 110 F.3d at 784. At least based on the filings and correspondence between the parties so far,
`
`there is no showing or suggestion of Plaintiffs having acquired and examined any Accused
`
`Adenosine Product as part of their infringement analysis prior to filing this lawsuit, including any
`
`analysis to support the new and unpled infringement theory presented in their Opposition. L’Oréal
`
`USA has never suggested, as Plaintiffs allege, that Plaintiffs were requried to reveal privileged
`
`work-product information. (D.I. 19 at 5.) Plaintiffs are obligated, however, to raise allegations that
`
`are sufficient “to put [L’Oréal USA] on notice of what it has to defend and to make a plausible
`
`showing of infringement.” Macronix, 4 F. Supp. 3d at 804. With respect to the infringement
`
`pleadings in the FAC, Plaintiffs have failed to meet their obligation for direct infringement.
`
`C.
`
` Plaintiffs Have Not Plausibly Pled Induced or Contributory Infringement
`
`Plaintiffs’ Opposition further highlights that the FAC fails to provide any suggestion as to
`
`how a customer who buys and uses an Accused Adenosine Product could plausibly infringe claims 1
`
`and 9 of the ’327 patent and claims 1 and 9 of the ’513 patent. (D.I. 19 at 8-13.) By failing to
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`adequately allege any potential direct infringement, the FAC fails to articulate how any end user of
`
`an Accused Adenosine Product could plausibly infringe the asserted claims. (D.I. 16 at 12-13.)
`
`This alone remains fatal to the induced and contributory infringement allegations in the FAC. (Id.)
`
`Regarding the knowledge of infringement requirement for induced infringement (see, e.g.,
`
`D.I. 19 at 8-9, 12), Plaintiffs’ FAC fails to extend beyond the merely formulaic “makes, uses, offers
`
`to sell, or sells” language provided in 35 U.S.C. § 271(b). (D.I. 13, ¶¶ 42, 52). This is insufficient.
`
`
`
`7
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`

`

`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 12 of 15 PageID #: 486
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`
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`See Telecomm Innovations, LLC v. Ricoh Co., 966 F. Supp. 2d 390, 395 (D. Del. 2013) (stating that
`
`a claim is insufficient if it does not “plead any acts by the defendants beyond the formulaic
`
`recitation provided in 35 U.S.C. § 271 for showing culpable conduct.”); see also E.I. Du Pont de
`
`Nemours & Co. v. Heraeus Holding GmbH, No. 11-773-SLR, 2012 WL 4511258, at *7 (D. Del.
`
`Sept. 28, 2012) (dismissing a complaint as “devoid of factual content to support those elements”
`
`required to show inducement).
`
`Although the Accused Adenosine Products come with marketing materials and instructions
`
`directing customers to “[e]very morning and evening, smooth [the Accused Adenosine Products]
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`over the face, neck and jawline until thoroughly absorbed” (D.I. 19 at 8, 12 (citing D.I. 13, ¶ 34)),
`
`Plaintiffs never connect L’Oréal USA’s marketing and advertising activities to knowledge of
`
`infringement of the asserted claims. (See D.I. 19 at 10-14.) Indeed, “marketing activities are not
`
`sufficient to constitute induced infringement unless the marketing activities are coupled with actual
`
`knowledge of the patents-in-suit and awareness that the accused products infringe the patent-in-
`
`suit.” Evolved Wireless, LLC v. Samsung Elecs. Co., No. 15-545-SLR-SRF, 2016 WL 1019667, at
`
`*6 (D. Del. Mar. 15, 2016), report and recommendation adopted, No. 15-545-SLR-SRF, 2016 WL
`
`1381765 (D. Del. Apr. 6, 2016) (quoting ReefEdge Networks, LLC v. Juniper Networks, Inc., 29 F.
`
`Supp. 3d 455, 459 (D. Del. 2014)).
`
`The facts here are readily distinguishable from the facts in, for example, Cipla Ltd. v.
`
`Sunovion Pharmaceuticals Inc., 174 F. Supp. 3d 869 (D. Del. 2016), which Plaintiffs cite in their
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`Opposition. (D.I. 19 at 8-9, 12.) In Cipla, one claim of the asserted patent only required “pure and
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`isolated Levalbuterol L-tartrate having an enantiomeric excess of at least 95%” and the defendants
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`sold Xopenax HFA, which contained levalbuterol tartrate (in at least 95% enantiomeric excess). Id.
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`at 871. Under this straightforward scenario, the Court found that knowledge of infringement could
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`be reasonably inferred because the claims only required the presence of an ingredient. Id. at 872-
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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 13 of 15 PageID #: 487
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`
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`873. The claims here, however, require not just the presence of adenosine, but specific adenosine
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`concentrations and no dermal cell proliferation. (D.I. 13-1 at 10:18-2; D.I. 13-2 at 10:18-26.) Thus,
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`Plaintiffs remain unable to plausibly allege that L’Oréal USA could have had actual knowledge that
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`any Accused Adenosine Products infringed the asserted claims, even based on the filing of the FAC
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`itself. (See D.I. 19 at 10 n.1.)
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`The FAC does not plausibly allege that L’Oréal USA acted with “knowledge that the
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`induced acts constitute patent infringement,” as required under § 271(b) (Global–Tech Appliances,
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`Inc. v. SEB S.A., 563 U.S. 754, 766 (2011)) and/or “knowledge that the use of the combination for
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`which [the Accused Adenosine Products were] especially designed was both patented and
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`infringing.” See id. at 763 (internal quotation omitted). Thus, Plaintiffs’ claims for induced and
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`contributory infringement in the FAC warrant dismissal.
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`D.
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`Plaintiffs Have Not Plausibly Pled Willful Infringement
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`In Plaintiffs’ FAC and Opposition, Plaintiffs are unable to plausibly demonstrate that
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`L’Oréal USA was aware that the use of the Accused Adenosine Products would infringe the patents-
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`in-suit. In St. Clair Intellectual Property Consultants, Inc. v. Hewlett–Packard Co., cited by
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`Plaintiffs (D.I. 19 at 14-15), a court in this District found that a complaint alleging willful
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`infringement was sufficient by “demonstrate[ing] a link between the various allegations of
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`knowledge of the patents-in-suit and the allegations that the risks of infringement were either
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`‘known to HP’ and/ or ‘were so obvious under the circumstances that the infringement risks should
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`have been known.’” No. 10–425–LPS, 2012 WL 1134318, at *3 (D. Del. Mar. 28, 2012). As
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`described above, despite numerous inquiries by L’Oréal USA, Plaintiffs remain unable to establish a
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`plausible link between use of the Accused Adenosine Products and infringement, much less whether
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`L’Oréal USA had knowledge (or should have had knowledge) of such infringement.
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`“Here, Plaintiff's assertions that Defendants engaged in willful infringement comes in a
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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 14 of 15 PageID #: 488
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`
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`series of one-sentence paragraphs with little elaboration,” and thus fail to plausibly establish that
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`L’Oréal USA was aware of any infringing use of the Accused Adenosine Products, by L’Oréal USA
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`or by third parties. Neology, Inc. v. Kapsch Trafficcom IVHS, Inc., No. 13-2052-LPS, 2014 WL
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`4675316, at *9 (D. Del. Sept. 19, 2014). None of Plaintiffs’ allegations could plausibly establish
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`intentional or knowing infringement of the asserted claims, so these claims should be dismissed.
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`E.
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`Plaintiffs’ Repeated Failure to Plausibly Allege Infringement Warrants
`Dismissal of the FAC with Prejudice
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`Plaintiffs try to leave the door open to fix inadequacies by requesting “permission to replead”
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`if the “Court were to find some aspect of the FAC lacking.” (D.I. 19 at 15-16.) But Plaintiffs have
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`been on notice of their deficient infringement allegations since well before filing their original
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`Complaint, then after filing the original Complaint, and now after filing a nearly identical FAC.
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`(D.I. 16 at 14-15.) Under these circumstances, giving Plaintiffs another chance to replead would not
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`only be unfair, it would be futile because Plaintiffs cannot plausibly establish that L’Oréal USA
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`infringes the asserted claims. L’Oréal USA, therefore, respectfully maintains that dismissal of the
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`FAC with prejudice is warranted.
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`III. CONCLUSION
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`For the foregoing reasons, L’Oréal USA respectfully requests that the Court dismiss the FAC
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`against L’Oréal USA, with prejudice.
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`Case 1:17-cv-00868-JFB-SRF Document 22 Filed 10/02/17 Page 15 of 15 PageID #: 489
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`
`
`/s/ Frederick L. Cottrell, III
`Frederick L. Cottrell, III (#2555)
`Jeffrey L. Moyer (#3309)
`Katharine L. Mowery (#5629)
`Richards, Layton & Finger, P.A.
`One Rodney Square
`920 N. King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`moyer@rlf.com
`mowery@rlf.com
`
`Attorneys for L’Oréal USA and L’Oréal S.A.
`
`
`
`Of Counsel:
`
`Dennis S. Ellis
`Katherine F. Murray
`Paul Hastings LLP
`515 South Flower Street, 25th Floor
`Los Angeles, CA, 90071
`(213) 683-6000
`
`Naveen Modi
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C., 20005
`(202) 551-1990
`
`Blaine M. Hackman
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`(212) 318-6000
`
`Dated: October 2, 2017
`
`
`
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`11
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