Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 1 of 16 PageID #: 913
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`AMERANTH, INC.,
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`Plaintiff,
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`C.A. No. 20-518-VAC
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`DEFENDANT’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION FOR RECOVERY OF ATTORNEYS’ FEES UNDER 35 U.S.C. § 285
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`v.
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`OLO INC.,
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`Defendant.
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`OF COUNSEL:
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`Heidi L. Keefe
`Lowell D. Mead
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843 5000
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`July 29, 2022
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`Cameron P. Clark (#6647)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`kjacobs@morrisnichols.com
`cclark@morrisnichols.com
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`Attorneys for Defendant
`Olo Inc.
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 2 of 16 PageID #: 914
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`INTRODUCTION ............................................................................................................. 1
`REPLY ARGUMENT ....................................................................................................... 1
`Ameranth Misstates the Law Governing § 285 Fees Awards. ............................... 1
`in View of Apple and Domino’s Pizza. ................................................................... 3
`None of Ameranth’s Arguments Negate the Exceptionality of This Case. ........... 5
`law. ............................................................................................................. 5
`the patent only made this case more exceptional. ...................................... 6
`The USPTO patent examiner’s view is immaterial. .................................. 7
`Ameranth’s litigiousness supports a fees award for deterrence. ................ 8
`Appellate fees should be awarded. ............................................................. 9
`direct the parties to confer on the amount. ............................................... 10
`CONCLUSION ................................................................................................................ 10
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`A.
`B.
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`C.
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`I.
`II.
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`III.
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`1.
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`2.
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`3.
`4.
`5.
`6.
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`TABLE OF CONTENTS
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`Page
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`The Substantive Strength of Ameranth’s Position was Exceptionally Weak
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`This was not a close case, regardless of any uncertainty in § 101
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`Ameranth’s submission of baseless expert opinions contradicting
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`The Court may decide Ameranth’s liability for attorneys’ fees and
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`i
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 3 of 16 PageID #: 915
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Aatrix Software, Inc. v. Green Shades Software, Inc.,
`890 F.3d 1354 (Fed. Cir. 2018)..................................................................................................4
`
`Ameranth, Inc. v. Domino’s Pizza, Inc.,
`No. 12-cv-0733 DMS (WVG), 2021 WL 409725 (S.D. Cal. Feb. 5, 2021) ..............................8
`
`Ameranth, Inc. v. Domino’s Pizza, LLC,
`792 F. App’x 780 (Fed. Cir. 2019) .................................................................................. passim
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)........................................................................................ passim
`
`Belcher Pharms., LLC v. Hospira, Inc.,
`C.A. No. 17-775-LPS, 2022 WL 606075 (D. Del. Feb. 3, 2022) ............................................10
`
`Callwave Commc’ns LLC v. AT&T Mobility, LLC,
`No. 12–1701–RGA, 2014 WL 5363741 (D. Del. Jan. 28, 2014) ..............................................8
`
`Checkpoint Sys., Inc. v. All-Tag Sec. S.A.,
`858 F.3d 1371 (Fed. Cir. 2017)..................................................................................................2
`
`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`958 F.3d 1178 (Fed. Cir. 2020)..................................................................................................7
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`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`963 F.3d 1371 (Fed. Cir. 2020)..............................................................................................5, 8
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`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`No. 16-CV-81677-MARRA, 2020 WL 9440337 (S.D. Fla. Oct. 30, 2020)..........................5, 8
`
`Finnavations LLC v. Payoneer, Inc.,
`No. 1:18-cv-00444-RGA, 2019 WL 1236358 (D. Del. Mar. 18, 2019) ................................6, 7
`
`Glasswall Sols. Ltd. v. Clearswift Ltd.,
`754 F. App’x 996 (Fed. Cir. 2018) ............................................................................................7
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`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
`876 F.3d 1372 (Fed. Cir. 2017)......................................................................................2, 5, 6, 9
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`Kindred Studio Illustration & Design, LLC v. Elec. Commc’n Tech., LLC,
`No. 2:18-CV-07661 (GJS), 2019 WL 3064112 (C.D. Cal. May 23, 2019) ...........................5, 8
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`Move, Inc. v. Real Estate Alliance Ltd.,
`721 F. App’x 950 (Fed. Cir. 2018) ............................................................................................7
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`2
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 4 of 16 PageID #: 916
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`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`572 U.S. 545 (2014) ......................................................................................................... passim
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`Proxyconn Inc. v. Microsoft Corp.,
`No. SACV 11–1681 DOC (ANx), 2012 WL 1835680 (C.D. Cal. May 16,
`2012) ..........................................................................................................................................9
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`Secured Mail Sols. LLC v. Universal Wilde, Inc.,
`873 F.3d 905 (Fed. Cir. 2017)....................................................................................................7
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`Statutes
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`35 U.S.C. § 285 ...................................................................................................................... passim
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`Other Authorities
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`Fed. R. Civ. P. 54(d)(2)(C) ............................................................................................................10
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`3
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 5 of 16 PageID #: 917
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`I.
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`INTRODUCTION
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`Ameranth’s opposition (D.I. 40, “Opp.”) does not meaningfully dispute the key reason why
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`this case stands out from others: the Federal Circuit’s reasoning in Apple and Domino’s Pizza
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`clearly doomed the related ’651 patent, whose specification shares the same dispositive admissions
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`as the four related patents held invalid in Apple and Domino’s Pizza. No new content in the related
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`’651 patent meaningfully distinguished the Federal Circuit’s on-point rulings. This is a highly
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`unusual case where the Federal Circuit had already spoken not just once, but twice, with two
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`different panels unanimously explaining why claims like these are invalid under § 101 and Alice.
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`Any reasonable patent litigant would have accepted the Federal Circuit’s rulings and appreciated
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`that the related ’651 patent suffered from the same incurable § 101 defect as the related patents.
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`Ameranth now points to its submission of paid expert opinions, but that submission only
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`made this case more exceptional because, as the Court noted, those opinions contradicted the
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`patent itself in “many material respects.” D.I. 29 at 14-16. The declaration from Ameranth’s
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`principal, Mr. McNally, also changes nothing about the extraordinary lack of merit in this case.
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`All that remains is to award fees under § 285 for this exceptional case, both to compensate
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`Olo for having to incur substantial attorneys’ fees in defending this meritless case through appeal
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`(despite Olo’s repeated warnings to Ameranth that it would seek fees) and to deter Ameranth and
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`similarly-situated plaintiffs from pursuing baseless litigation in the future.
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`II.
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`REPLY ARGUMENT
`A.
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`Ameranth Misstates the Law Governing § 285 Fees Awards.
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`Ameranth mischaracterizes the law when it argues that its alleged subjective “good faith”
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`shields it from liability. Opp. at 6-7. As the Supreme Court held in Octane Fitness, an exceptional
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`case under § 285 is “simply one that stands out from others with respect to the substantive strength
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`of a party’s litigating position (considering both the governing law and the facts of the case) or the
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`1
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 6 of 16 PageID #: 918
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`unreasonable manner in which the case was litigated.” Octane Fitness, LLC v. ICON Health &
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`Fitness, Inc., 572 U.S. 545, 554 (2014). No precedent requires the Court to assess any party’s
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`subjective state of mind in the § 285 inquiry. In Inventor Holdings, for example, the Federal Circuit
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`affirmed the district court’s award of fees under § 285 “based solely on the weakness of [plaintiff]’s
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`post-Alice patent-eligibility arguments and the need to deter future ‘wasteful litigation’ on
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`similarly weak arguments” without citing any findings about the plaintiff’s subjective intent.
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`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1377-80 (Fed. Cir. 2017).
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`The same rationale applies fully here. Nor is there any relevance in any alleged business activity
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`of Ameranth from 17-23 years ago. Cf. D.I. 40-2. All that matters now is that this case was
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`exceptionally weak on the § 101 merits in the wake of the two prior Federal Circuit rulings.
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`Ameranth similarly misstates the law when it incorrectly states that “the Court may enter
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`a fee award under 35 U.S.C. § 285 only to prevent ‘gross injustice [which] should be bottomed
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`upon a finding of unfairness or bad faith in the conduct of the losing party, or some other equitable
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`consideration of similar force, which makes it grossly unjust’ to not award fees.” Opp. at 7, quoting
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`Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017). The quoted text
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`from Checkpoint is merely an excerpt from legislative history from 1946 addressing a statutory
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`“precursor to § 285,” cited only to illustrate the purported “legislative purpose behind § 285.” See
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`id. That text is not a binding holding and does not impose any requirement on this Court. No form
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`of the words “injustice” or “unjust” even appears in the Supreme Court’s opinion in Octane Fitness
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`(or in Inventor Holdings and other cases awarding fees), let alone any requirement to find “gross
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`injustice.” The statute itself merely references “exceptional” cases, 35 U.S.C. § 285, and an
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`“exceptional” case is “simply one that stands out from others” either for its weak merits or for its
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`unreasonable litigation conduct. Octane Fitness, 572 U.S. at 554.
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`2
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 7 of 16 PageID #: 919
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`Even if the law had imposed a requirement to prevent “gross injustice” (which it does not),
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`it would be grossly unjust and fundamentally unfair for Olo to bear the burden of attorneys’ fees
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`defending against this meritless case where Ameranth asserted a patent that was clearly invalid for
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`the same reasons the Federal Circuit had twice previously articulated and submitted an expert
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`declaration that contradicted the patent itself “in many material respects.” D.I. 29 at 14-16.
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`B.
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`The Substantive Strength of Ameranth’s Position was Exceptionally Weak in
`View of Apple and Domino’s Pizza.
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`Ameranth’s opposition does not meaningfully dispute the critical factor justifying a fees
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`award here: the same reasoning that the Federal Circuit articulated in both Apple and Domino’s
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`Pizza applied equally to invalidate the related ’651 patent. See D.I. 38 (“Mot.”) at 1-2, 4-12, 14-
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`15, citing Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) and Ameranth, Inc. v.
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`Domino’s Pizza, LLC, 792 F. App’x 780 (Fed. Cir. 2019). Ameranth makes no effort to distinguish
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`the Federal Circuit’s invalidity analysis in Apple and Domino’s Pizza from the § 101 analysis in
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`this case. Ameranth does not (and cannot) dispute that the ’651 patent contains the same dispositive
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`admissions the Federal Circuit relied upon when invalidating the four related invalid patents,
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`proclaiming that the patents’ ideas use only “typical hardware elements” and “commonly known”
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`software programming, not any inventive new hardware and/or software. ’651, 6:63-7:18, 13:12-
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`17; Mot. at 4-5, 8; Apple, 842 F.3d at 1241-43; Domino’s Pizza, 792 F. App’x at 787. Nor does
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`Ameranth meaningfully dispute that the claims in the ’651 patent recite high-level desired
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`functional results just like the related patents held invalid in Apple and Domino’s Pizza. Mot. at 8-
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`9. Not surprisingly, when granting Olo’s motion to dismiss, the Court in this case emphasized the
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`key relevant points from Apple and Domino’s Pizza. Id. at 10-11, D.I. 29 at 13-16. Ameranth
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`ignores the Court’s well-founded reasoning and has never identified any error in it.
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`Ameranth also ignores the Federal Circuit’s directive that in a case like this, where the
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`3
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 8 of 16 PageID #: 920
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`“specification admits the additional claim elements are well understood, routine, and conventional,
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`it will be difficult, if not impossible, for a patentee to show a genuine dispute” that avoids dismissal
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`with prejudice. Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1356 (Fed.
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`Cir. 2018). Even setting aside Apple and Domino’s Pizza, Ameranth should have realized that the
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`admissions in its patents’ specification doomed its patent under Federal Circuit precedent—and
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`much more so after both Apple and Domino’s Pizza emphasized that key point.
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`Contrary to Ameranth’s argument, it is immaterial that the ’651 patent has some content
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`that is different from the other invalidated patents. All of the related invalidated patents each had
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`some different content in their claims and/or specifications. It is immaterial, for example, that the
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`’651 patent contemplates an “intelligent automated assistant” (IAA) that “learns, assists and
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`applies that learning to improve and enhance existing computerized systems.” Opp. at 3-4. As the
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`Court correctly appreciated, the “IAA” aspect is “merely one feature of the invention claimed,”
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`and, critically, the patent never describes or claims “any specific programming steps” for the
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`“IAA” system, nor any improvement to computer functionality. D.I. 29 at 13. The idea for an
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`“intelligent automated assistant” was just that—an idea, contemplated in only the highest-level
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`abstract and functional terms, not any inventive new hardware and/or software technology. See
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`D.I. 14 (Olo MTD reply) at 3-4. The patent explicitly disavowed any inventive new hardware
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`and/or software, using only “typical” and “commonly known” elements. ’651, 6:63-7:18, 13:12-
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`17. Thus, as the Court appreciated, there was no relevant difference in the § 101 analysis for the
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`’651 patent that would distinguish this case from Apple and Domino’s Pizza. D.I. 29 at 13-16.
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`Ameranth makes no effort to distinguish the Federal Circuit and district court precedent
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`supporting § 285 fees awards where, as here, the asserted patent suffers from the same § 101 defect
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`as related patents that were previously held invalid. Mot. at 16; Elec. Commc’n Techs., LLC v.
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`4
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 9 of 16 PageID #: 921
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`ShoppersChoice.com, LLC, 963 F.3d 1371, 1378-79 (Fed. Cir. 2020); Elec. Commc’n Techs., LLC
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`v. ShoppersChoice.com, LLC, No. 16-CV-81677-MARRA, 2020 WL 9440337, at *3-5 (S.D. Fla.
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`Oct. 30, 2020); Kindred Studio Illustration & Design, LLC v. Elec. Commc’n Tech., LLC, No.
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`2:18-CV-07661 (GJS), 2019 WL 3064112, at *9 (C.D. Cal. May 23, 2019).
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`For these reasons, it is immaterial that Olo did not warn Ameranth that Olo may seek fees
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`until after the Court granted Olo’s motion to dismiss. Cf. Opp. at 19-20. Olo’s very first filing in
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`this case was its motion to dismiss (D.I. 8-9), which laid bare why Ameranth’s case had no merit.
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`No precedent requires a party to raise § 285 at the outset. Inventor Holdings, for example, did not
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`cite any record that § 285 was raised in prior correspondence. 876 F.3d at 1377-80. Here, the
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`Federal Circuit itself had already provided notice to Ameranth, twice, via Apple and Domino’s
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`Pizza, that this patent family suffers from § 101 invalidity, and Ameranth forged ahead through a
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`baseless appeal despite Olo’s warnings. None of Ameranth’s cited cases had similar facts.1
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`It is similarly irrelevant that at the motion to dismiss stage, Olo and the Court did not argue
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`or determine that the claims are “clearly” invalid. Opp. at 12. The question raised by the Rule
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`12(b)(6) motion was only whether the claims are ineligible under § 101 such that the complaint
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`fails to state a claim. D.I. 8-9. The question for the Court now is whether this case “stands out from
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`others,” Octane Fitness, 572 U.S. at 554, which it does.
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`C.
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`None of Ameranth’s Arguments Negate the Exceptionality of This Case.
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`With no answer to the critical point that both Apple and Domino’s Pizza doomed the ’651
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`patent, Ameranth raises only meritless arguments that do not change the exceptionality of this case.
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`1.
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`This was not a close case, regardless of any uncertainty in § 101 law.
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`1 In Stone Basket Innovations, LLC v. Cook Medical LLC, for example, no prior Federal Circuit
`ruling provided notice, and the district court was within its discretion not to award fees where the
`defendant did not “provide early, focused, and supported notice of its belief that it was being
`subjected to exceptional litigation behavior.” 892 F.3d 1175, 1181 (Fed. Cir. 2018).
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`5
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 10 of 16 PageID #: 922
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`The Federal Circuit in Inventor Holdings rejected exactly the same argument Ameranth
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`raises here (Opp. at 7-9) that “§ 101 was an ‘evolving area of the law,’ which made patent-
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`eligibility analysis difficult and uncertain after Alice.” Inventor Holdings, 876 F.3d at 1377. There
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`has never been any question “as a general matter that it was and is sometimes difficult to analyze
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`patent eligibility” under the Alice framework. Id. at 1379. The amicus brief of the Solicitor General
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`merely reflects the same point that the Federal Circuit has noted for years—applying the Alice
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`framework is sometimes uncertain, in some cases, depending on the patent claims at issue. But
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`here, this particular case “was not a ‘borderline case’ with an unpredictable result.” Finnavations
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`LLC v. Payoneer, Inc., No. 1:18-cv-00444-RGA, 2019 WL 1236358, at *2 (D. Del. Mar. 18, 2019).
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`Here, as in Inventor Holdings, there was “no uncertainty or difficulty in applying the principles set
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`out in Alice” to conclude that the patent was invalid in view of the prior Federal Circuit decisions
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`whose reasoning directly applied to invalidate the related ’651 patent. Inventor Holdings, 876 F.3d
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`at 1379. Nothing in the patent provides any patent-eligible improvement to technology. On the
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`contrary, the patent itself provided the admissions requiring its invalidation. As the Federal Circuit
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`twice explained, these patents’ specifications explicitly disavow any inventive new technology,
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`proclaiming that their ideas use only “typical” hardware and “commonly known” software. ’651,
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`6:63-7:18, 13:12-17; Apple, 842 F.3d at 1241-43; Domino’s Pizza, 792 F. App’x at 787.
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`2.
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`Ameranth’s submission of baseless expert opinions contradicting the
`patent only made this case more exceptional.
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`Ameranth’s submission of an expert declaration only made this case more exceptional
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`because, as the Court found, the expert’s assertions contradicted the patent “in many material
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`respects.” D.I. 29 at 14-16. Ameranth cannot shield itself from § 285 liability by hiding behind a
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`purportedly “independent” expert whom Ameranth paid $650/hour (D.I. 1-2 at 3) to provide such
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`fundamentally baseless opinions. Ameranth criticizes one of the three Federal Circuit panel judges
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`6
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 11 of 16 PageID #: 923
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`for not recalling this immaterial declaration at the hearing (Opp. at 11), but does not identify any
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`error in the underlying determination that the expert materially contradicted the patent. Ameranth
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`only raises vague questions over unspecified opinions about “combination inventions” and the
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`ability to “create the claimed invention” (Opp. at 10), but nothing the expert said could possibly
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`confer eligibility where none exists. The Federal Circuit commonly holds that expert opinions fail
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`to save patents under § 101. E.g., Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F. App’x 996, 999
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`(Fed. Cir. 2018); Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 957 (Fed. Cir. 2018);
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`see also Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir. 2017) (“In
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`ruling on a 12(b)(6) motion, a court need not ‘accept as true allegations that contradict matters
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`properly subject to judicial notice or by exhibit,’ such as the claims and the patent specification.”)
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`(citation omitted). In fact, Ameranth was already well aware, before this case, that expert opinions
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`cannot save an invalid patent after the Federal Circuit in Domino’s Pizza rejected Ameranth’s
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`reliance on an expert declaration (and also rejected its reliance on a declaration from the same Mr.
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`McNally who submits a declaration here). Domino’s Pizza, 792 F. App’x at 788.
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`3.
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`The USPTO patent examiner’s view is immaterial.
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`It is immaterial that a Patent Office examiner allowed the ’651 patent (Opp. at 11-12) given
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`the controlling precedent that the “procedure of prosecution before the USPTO” does not “in any
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`way shield the patent’s claims from Article III review for patent eligibility.” Elec. Commc’n
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`Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1182-83 (Fed. Cir. 2020). Mot. at 17.
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`Here, Apple and Domino’s Pizza were directly on-point and materially indistinguishable regardless
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`of what a “non-lawyer” patent examiner might have believed. Finnavations, 2019 WL 1236358,
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`at *2. Ameranth’s cited cases are inapposite because they did not involve prior Federal Circuit
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`rulings invalidating related patents based on the patents’ shared dispositive admissions.
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`In fact, Ameranth’s citation to many cases that declined to award fees only supports a
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`7
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 12 of 16 PageID #: 924
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`finding of exceptionality here. As Ameranth notes, it is relatively uncommon for courts to award
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`fees under § 285 after holding invalid a patent under § 101, and merely losing a case, in and of
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`itself, is not a basis to award fees. In contrast with all of Ameranth’s cited cases, however, this
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`case presents the highly unusual scenario where the Federal Circuit had already weighed in, twice,
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`on substantially similar, related patent claims with the same reasoning that disposed of the asserted
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`claims here. That is why this case “stands out from others.” Octane Fitness, 572 U.S. at 554. The
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`Federal Circuit instructs that prior § 101 invalidation of “patents in the [asserted] patent’s family”
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`is a key factor in assessing exceptionality under § 285. Elec. Commc’n Techs., 963 F.3d at 1378-
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`79. District courts readily appreciate this point, including the California court that awarded fees
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`against Ameranth in Domino’s Pizza. Elec. Commc’n Techs., 2020 WL 9440337, at *3-5; Kindred
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`Studio, 2019 WL 3064112, at *9; Ameranth, Inc. v. Domino’s Pizza, Inc., No. 12-cv-0733 DMS
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`(WVG), 2021 WL 409725, at *9 (S.D. Cal. Feb. 5, 2021). The same result is warranted here.
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`4.
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`Ameranth’s litigiousness supports a fees award for deterrence.
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`An award of fees is further supported by Ameranth’s self-proclaimed litigiousness in suing
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`Olo without first contacting Olo to provide notice of alleged infringement. Opp. at 15-16, McNally
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`Decl. ¶ 3. Rather than reaching out pre-litigation to notify Olo of alleged infringement—in which
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`event Olo would have explained why Ameranth’s assertion was meritless for the reasons shown
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`in Olo’s motion to dismiss—Ameranth chose to burden Olo, this Court, the Federal Circuit, and
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`the Supreme Court with baseless litigation. Ameranth’s litigious behavior should be deterred, not
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`encouraged. See Callwave Commc’ns LLC v. AT&T Mobility, LLC, No. 12–1701–RGA, 2014 WL
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`5363741, at *1 (D. Del. Jan. 28, 2014) (“There is a benefit to society if the matter is resolved
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`without a suit,” where “the patent holder and the asserted infringer may exchange information, and
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`the asserted infringer might then take a license, or the patent holder might learn of reasons why
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`suit should not be filed.”); Proxyconn Inc. v. Microsoft Corp., No. SACV 11–1681 DOC (ANx),
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`8
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 13 of 16 PageID #: 925
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`2012 WL 1835680, at *5 (C.D. Cal. May 16, 2012) (“Pre-litigation attempts at resolution are
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`especially desirable in patent cases, which are often expensive . . .”). When courts rule against
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`Ameranth, it is defiant, even going so far as to file multiple frivolous petitions for certiorari at the
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`Supreme Court. See also, e.g., D.I. 40-2, ¶¶ 10-11 (criticizing the California court for issuing its
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`fees award ruling with an allegedly “entirely untrue and improper basis”).2
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`Ameranth does not deny the fact that it has implicitly threatened further litigation on its
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`related, not-yet-invalidated patents that share the same dispositive defects as the already-
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`invalidated patents. See Mot. at 18, Exs. D, E. In response to the present motion, Ameranth could
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`have declared that it will not assert any more claims from this invalid patent family. It did not. Its
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`silence speaks volumes. An award of fees is fully appropriate and justified here, to deter both
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`Ameranth and other similarly-situated plaintiffs. Inventor Holdings, 876 F.3d at 1377-78.
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`5.
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`Appellate fees should be awarded.
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`Ameranth fails to show any reason to deny an award of the fees incurred on appeal
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`consistent with Federal Circuit precedent. Mot. at 19-20. “There were obvious issues with” the
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`asserted patent that “persisted throughout the § 101 appeal” and the certiorari petition. Inventor
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`Holdings, 876 F.3d at 1380. Indeed, Ameranth appealed to the same Federal Circuit that had
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`already twice unanimously affirmed the § 101 invalidity of Ameranth’s four closely-related
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`patents. No reasonable litigant would have expected a different outcome this time.
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`The award of fees on appeal is further supported by Olo’s explicit and repeated cautions to
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`Ameranth that Olo reserved the right to seek fees on appeal. D.I. 39-1. Olo advised Ameranth both
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`2 Ameranth irrelevantly quibbles over the California court’s statement that the Federal Circuit
`affirmed that court’s findings. Opp. at 16. The Federal Circuit affirmed the court’s reasoning on
`the § 101 merits, but determined as a procedural matter that two dependent claims (claims 4 and
`5) were not properly subject to challenge by Domino’s Pizza. Domino’s Pizza, 792 F. App’x at
`784-85. The California court subsequently held invalid those claims. See Mot. at 5, n.4.
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 14 of 16 PageID #: 926
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`before the appeal, shortly after this Court granted Olo’s motion to dismiss (D.I. 39-1, Exs. A-B),
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`and again several months later during the appeal after Ameranth had filed its opening appeal brief
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`(D.I. 39-1, Ex. C).3 But Ameranth pressed forward without any reasonable basis, never
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`meaningfully distinguishing the on-point precedent of Apple and Domino’s Pizza.
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`Ameranth certainly had the “right” to appeal insofar as federal statutes permit a party to
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`appeal from an adverse judgment (Opp. at 19), but the bare right to appeal does not insulate a party
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`from an exceptional case finding under § 285—especially where, as here, (1) that party has been
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`specifically warned that it proceeds on appeal at the risk of additional § 285 liability, and (2) that
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`party is appealing to the same appeals court that twice previously rejected its similar appeals.4
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`6.
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`The Court may decide Ameranth’s liability for attorneys’ fees and
`direct the parties to confer on the amount.
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`Finally, Ameranth does not (and cannot) dispute that the Court “may decide issues of
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`liability for fees before receiving submissions on the value of services.” Fed. R. Civ. P.
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`54(d)(2)(C); Mot. at 19-20; Opp. at 20. As noted in Olo’s motion, if the Court decides that
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`Ameranth is liable for fees, the Court may direct the parties to confer on a schedule for submissions
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`to resolve the appropriate amount of fees. Mot. at 19-20.
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`III. CONCLUSION
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`For the foregoing reasons, Olo respectfully requests that the Court grant its motion.
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`3 As Olo’s motion noted, Olo raised § 285 both (1) shortly after the Court granted Olo’s motion to
`dismiss, and (2) during the appeal—i.e., at each of these two stages. Mot. at 1-2; Opp. at 18.
`4 These unique circumstances distinguish the Belcher case where the court awarded fees only for
`the district court proceedings and not the appeal. In that case, the court found after a bench trial
`that certain individuals had committed inequitable conduct, explaining “in detail” the bases for its
`findings, and found it “understandable and reasonable for Belcher to ask a higher court to carefully
`review” those factual findings. Belcher Pharms., LLC v. Hospira, Inc., C.A. No. 17-775-LPS, 2022
`WL 606075, at *4-5 (D. Del. Feb. 3, 2022).
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 15 of 16 PageID #: 927
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`OF COUNSEL:
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`Heidi L. Keefe
`Lowell D. Mead
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843 5000
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`July 29, 2022
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Karen Jacobs
`_____________________________________
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`Cameron P. Clark (#6647)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`kjacobs@morrisnichols.com
`cclark@morrisnichols.com
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`Attorneys for Defendant
`Olo Inc.
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`11
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`Case 1:20-cv-00518-GBW Document 41 Filed 07/29/22 Page 16 of 16 PageID #: 928
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 29, 2022 I caused the foregoing to be electronically filed with
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`the Clerk of the Court using CM/ECF, which will send notification of such filing to all registered
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`participants.
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`I further certify that I caused copies of the foregoing document to be served on
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`July 29, 2022, upon the following in the manner indicated:
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Karen Jacobs
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`Karen Jacobs (#2881)
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`Stamatios Stamoulis
`Richard Weinblatt
`STAMOULIS & WEINBLATT LLC
`800 N. West Street, Third Floor
`Wilmington, DE 19801
` Attorneys for Plaintiff
` Ameranth, Inc.
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`Shekhar Vyas
`STAMOULIS & WEINBLATT LLC
`302 Washington Street, #150-2028
`San Diego, CA 92103
` Attorneys for Plaintiff
` Ameranth, Inc.
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