Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 1 of 13 PageID #: 594
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`ALMONDNET, INC. and INTENT IQ, LLC,
`and DATONICS LLC,
`
`
`
`
`
`
`
`
`
`Dated: October 1, 2024
`
`
`
`
`
`REPLY BRIEF IN SUPPORT OF DEFENDANT’S MOTION TO DISMISS
`
`
` Susan E. Morrison (No. 4690)
`Grayson P. Sundermeir (No. 6517)
`FISH & RICHARDSON P.C.
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19899-1114
`(302) 652-5070
`morrison@fr.com
`sundermeir@fr.com
`
`Aamir A. Kazi
`(GA Bar No. 104235)
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`(404) 892-5005
`kazi@fr.com
`
`Attorneys for Defendant
`LOTAME SOLUTIONS, INC.
`
`Plaintiffs,
`
`
`
`
`
`LOTAME SOLUTIONS, INC.,
`
`
`v.
`
`Defendant.
`
`
`
`
`
`
`
`C.A. No. 24-00376-MN
`
`JURY TRIAL DEMANDED
`
`
`
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 2 of 13 PageID #: 595
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`INTRODUCTION .................................................................................................1 
`
`ARGUMENT .........................................................................................................1 
`
`A. 
`
`AlmondNet’s Mixed-and-Matched Infringement Allegations Do
`Not Satisfy the Pleading Requirements .....................................................1 
`
`1. 
`
`2. 
`
`AlmondNet Failed to Identify An Accused
`Instrumentality that Meets All Claim Limitations of the
`Asserted Patents .............................................................................1 
`
`AlmondNet Must Provide Adequate Notice of its
`Infringement Theories Even if Only Asserting Method
`Claims ............................................................................................4 
`
`B. 
`
`Any Claim for Past Damages Should be Dismissed ..................................5 
`
`C.  Without Indirect Infringement, Claims for ’445 Patent Must
`Also Be Dismissed .....................................................................................8 
`
`III. 
`
`CONCLUSION ......................................................................................................8 
`
`
`
`
`
`
`
`i
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`

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`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 3 of 13 PageID #: 596
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Am. Med. Sys., Inc. v. Med. Eng’g Corp.,
`6 F.3d 1523 (Fed. Cir. 1993)......................................................................................................6
`
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)..................................................................................................7
`
`Bausch & Lomb Incorporated v. SBH Holdings LLC,
`No. 20-1463-LPS, 2022 WL 856750 (D. Del. Mar. 23, 2022) ..............................................4, 5
`
`CAP Co. v. McAfee, Inc.,
`No. 14-5068-JD, 2015 WL 4734951 (N.D. Cal. Aug. 10, 2015) ..............................................4
`
`Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd.,
`906 F. Supp. 2d 399 (W.D. Pa. 2012) ........................................................................................7
`
`Crown Packaging Tech. v. Rexam Beverage Can,
`498 F. Supp. 2d 718 (D. Del. 2007) ...........................................................................................6
`
`Crown Packaging Tech. v. Rexam Beverage Can,
`
`559 F.3d 1308 (Fed. Cir. 2009)..................................................................................................6
`
`CTD Networks, LLC v. Google, LLC,
`688 F. Supp. 3d 490 (W.D. Tex. 2023) ......................................................................................4
`
`GeoVector Corp. v. Samsung Elecs. Co.,
`No. 16-2463-WHO, 2017 WL 76950 (N.D. Cal. Jan. 9, 2017) .................................................4
`
`Michigan Motor Techs., LLC v. Bayerische Motoren Werke AG,
`683 F. Supp. 3d 811 (N.D. Ill. 2023) .....................................................................................6, 7
`
`Siemens Mobility Inc. v. Westinghouse Air Brake Techs. Corp.,
`No. 16-0284-LPS-CJB, 2018 WL 7893901 (D. Del. Dec. 17, 2018) ....................................6, 7
`
`Uniloc 2017 LLC v. Apple, Inc.,
`No. 19-1904-WHO, 2019 WL 8810168 (N.D. Cal. Dec. 16, 2019) ..........................................4
`
`Com. of Pa. ex rel. Zimmerman v. PepsiCo, Inc.,
`836 F.2d 173 (3d Cir. 1988).......................................................................................................1
`
`ZitoVault v. IBM,
`No. 16-0962-M, 2018 WL 2971179 (N.D. Tex. Mar. 29, 2018) ...............................................4
`
`ii
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`

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`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 4 of 13 PageID #: 597
`
`Statutes
`
`35 U.S.C. § 287 ................................................................................................................................7
`
`iii
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 5 of 13 PageID #: 598
`
`I.
`
`INTRODUCTION
`
`AlmondNet’s Answering Brief (D.I. 23) recharacterizes its infringement allegations by
`
`arguing, contrary to the allegations in its First Amended Complaint, that multiple different accused
`
`Lotame products are in fact one product. Its insistence that it identified a single infringing product,
`
`the Spherical Platform, is at odds with both the language of the First Amended Complaint, which
`
`defines the accused products as including Lotame’s Spherical Platform “without limitation,” and
`
`with the claim charts accompanying the First Amended Complaint, which cite to a scattershot
`
`combination of Lotame and non-Lotame products. Additionally, AlmondNet’s assertion of
`
`apparatus claims in its original Complaint are fatal to its ability to recover past damages. Finally,
`
`by dismissing its indirect infringement claims, AlmondNet is without an infringement theory for
`
`at least the ’445 Patent, and its allegations as to that patent should be dismissed for that reason as
`
`well.
`
`II.
`
`ARGUMENT
`A.
`
`AlmondNet’s Mixed-and-Matched Infringement Allegations Do Not Satisfy
`the Pleading Requirements
`1.
`
`AlmondNet Failed to Identify An Accused Instrumentality that Meets
`All Claim Limitations of the Asserted Patents
`
`AlmondNet now attempts to sweep a suite of software and products offered by Lotame into
`
`one accused instrumentality: Lotame’s Spherical Platform. (D.I. 16 at ¶¶ 10–16.) AlmondNet
`
`argues that its First Amended Complaint “expressly accused a single overall product: ‘Lotame’s
`
`Spherical Platform product and services.’” (D.I. 23 at 9.)1 But the language of the First Amended
`
`Complaint and the accompanying claim charts belie AlmondNet’s arguments.
`
`
`1 This is an assertion notably absent from either of its Complaints, and inappropriate at this stage.
`See Com. of Pa. ex rel. Zimmerman v. PepsiCo, Inc., 836 F.2d 173, 181 (3d Cir. 1988) (“[I]t is
`axiomatic that the complaint may not be amended by the briefs in opposition to a motion to
`dismiss.”)
`
`1
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 6 of 13 PageID #: 599
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`The First Amended Complaint
`
`itself defines
`
`the
`
`term “Lotame’s Accused
`
`Instrumentalities” to “include without limitation Lotame’s Spherical Platform product and
`
`services that provide technology, services, and tools[.]” (D.I. 16 at ¶ 10 (emphasis added).)
`
`AlmondNet’s claim charts further show that Lotame’s Spherical Platform is just one of several
`
`product solutions offered by Lotame that AlmondNet accuses of infringement. For example,
`
`Lotame’s website distinctly lists the Spherical Platform separate from other “solutions” including
`
`Panorama Identity, Connected TV, and other data marketplace solutions, all of which appear in
`
`AlmondNet’s claim charts:
`
`Lotame Homepage, https://www.lotame.com/ (last visited October 1, 2024.)2 AlmondNet does
`
`not allege facts sufficient to support the assertion in its brief that the Spherical Platform is actually
`
`an amalgamation of all the products and services AlmondNet accuses in its First Amended
`
`Complaint and accompanying charts. At most, AlmondNet has alleged that Lotame’s Spherical
`
`
`
`
`2 AlmondNet never addresses this distinct listing of products and is incorrect to claim “there is
`no evidence that what Lotame alludes to constitute different or separate products.” (D.I. 23 at
`10.)
`
`2
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 7 of 13 PageID #: 600
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`Platform may include some other ancillary products and services. (D.I. 16 at ¶ 11.) The First
`
`Amended Complaint does not allege, nor provide facts to support the assertion, that Lotame’s
`
`Spherical Platform encompasses all Lotame products specifically named in AlmondNet’s claims
`
`charts, including Lotame’s Data Exchange, Lotame’s Data Stream, Lotame’s Lightning Tag,
`
`Lotame’s Panaroma ID, Lotame’s Spherical Platform, and Lotame’s Sync Tag. AlmondNet’s
`
`reason for doing this is evident from its claim charts: no individual Lotame product satisfies every
`
`claim limitation of the Asserted Patents.
`
`AlmondNet’s claim charts for the ’210 Patent (D.I. 16-4) and the ’445 Patent (D.I. 16-6)
`
`do not include a single reference to or mention of Lotame’s Spherical Platform. AlmondNet’s
`
`claim chart for the ’445 Patent further cites to non-Lotame products to support its infringement
`
`allegations. AlmondNet’s claim charts for the ’398 Patent (D.I. 16-2), ’249 Patent (D.I. 16-8), and
`
`’904 Patent (D.I. 16-10) cite to both features of the Spherical Platform and also features of other
`
`Lotame products to satisfy the recited claim limitations. And AlmondNet’s claim charts for the
`
`’249 and ’904 Patents further rely on features of other Lotame products not specifically accused
`
`of infringement for all claim limitations. Together, AlmondNet’s claim charts (D.I. 16-2, 16-4,
`
`16-6, 16-8, 16-10) cite features of at least six different Lotame products and a seventh product,
`
`Oracle BlueKai, that is not owned by Lotame. (See D.I. 21 at 9–11.) In other words, for the sole
`
`accused instrumentality that AlmondNet’s Answering Brief states that it accuses of infringement,
`
`Lotame’s Spherical Platform, AlmondNet neither establishes that the Spherical Platform
`
`encompasses all the different products it accuses nor that the Spherical Platform satisfies the
`
`recited claim limitations on its own. By taking discrete elements of different products and
`
`mashing them together, Lotame has not been provided notice as to what product or what activity
`
`is allegedly infringing.
`
`3
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 8 of 13 PageID #: 601
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`As explained in its Defendant’s Opening Brief, “[i]nfringement cannot be shown by a
`
`muddled hash of elements from different products.” CTD Networks, LLC v. Google, LLC, 688 F.
`
`Supp. 3d 490, 499 (W.D. Tex. 2023); Uniloc 2017 LLC v. Apple, Inc., No. 19-1904-WHO, 2019
`
`WL 8810168, at *5 (N.D. Cal. Dec. 16, 2019); ZitoVault v. IBM, No. 16-0962-M, 2018 WL
`
`2971179, at *3 (N.D. Tex. Mar. 29, 2018); GeoVector Corp. v. Samsung Elecs. Co., No. 16-2463-
`
`WHO, 2017 WL 76950, at *4 (N.D. Cal. Jan. 9, 2017); CAP Co. v. McAfee, Inc., No. 14-5068-JD,
`
`2015 WL 4734951, at *2 (N.D. Cal. Aug. 10, 2015). AlmondNet’s mix-and-match approach is
`
`inappropriate because it fails to allege direct infringement or “place the alleged infringer on notice
`
`of what activity ... is being accused of infringement.” Bausch & Lomb Incorporated v. SBH
`
`Holdings LLC, No. 20-1463-LPS, 2022 WL 856750, at *2 (D. Del. Mar. 23, 2022); see also D.I.
`
`23 at 8. Even assuming AlmondNet is only accusing one instrumentality, Lotame’s Spherical
`
`Platform, it has (repeatedly) failed to chart this sole identified accused instrumentality against the
`
`exemplary claims it selected, or to explain how or why Lotame’s Spherical Platform includes the
`
`other products it relies on for its infringement allegations. (See D.I. 21 at 10–11, table). As a
`
`result, AlmondNet’s claims of direct infringement fail, and should be dismissed.
`
`2.
`
`AlmondNet Must Provide Adequate Notice of its Infringement
`Theories Even if Only Asserting Method Claims
`
`Even if AlmondNet were not required to identify a particular product, or were permitted to
`
`mix and match different Lotame (and non-Lotame) products, AlmondNet does not allege that the
`
`distinct products are used in concert to practice the claimed methods. (D.I. 16 at ¶¶ 10–16.)
`
`AlmondNet cites to IP Commc’n Sols., LLC v. Viber Media (USA) Inc., to support the position that
`
`that a patentee asserting a method claim needs not identify an infringing product. No. 16-0134-
`
`GMS, 2017 WL 1312942 (D. Del. Apr. 5, 2017). But AlmondNet stretches IP Commc’n beyond
`
`its holding. The Court in IP Commc’n held that “[t]o require that [plaintiff] name a specific
`
`4
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`

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`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 9 of 13 PageID #: 602
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`infringing product would be nonsensical in this instance. It is unclear how [plaintiff] can be any
`
`more specific about what aspects of [defendant’s] technology infringe.” Id. at *3 (emphasis
`
`added). But in IP Commc’n, the plaintiff offered significantly more specificity to its infringement
`
`theory than AlmondNet provides here. In IP Commc’n, the plaintiff “describe[d] the functionality
`
`of [defendant’s] servers,” making clear that defendant’s “server” was infringing the claimed
`
`method through specific activities, e.g., storing phone numbers from an address book. Id. at *4.
`
`Here, AlmondNet has haphazardly mixed and matched features from products that even the First
`
`Amended Complaint acknowledges are distinct, without ever explaining which specific products
`
`are responsible for practicing individual steps of the claimed method, or how those products are
`
`used together to practice any claimed method.
`
`B.
`
`Any Claim for Past Damages Should be Dismissed
`
`AlmondNet’s original Complaint (D.I. 1) was not limited to the method claims of the
`
`Asserted Patents and did not properly comply with the marking statute. (See D.I. 1 at ¶¶ 12, 22,
`
`42, 49.) As such, AlmondNet should be foreclosed from recovering past damages.
`
`In AlmondNet’s original Complaint (D.I. 1), AlmondNet asserted all claims of the Asserted
`
`Patents; it did not limit its allegations to the method claims. (See D.I. 1 at ¶¶ 12, 22, 42, 49.)
`
`Instead, its original allegations encompassed method and apparatus claims for the ’398, ’210, ’249,
`
`and ’904 Patents: “On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`imports certain products and/or services (“Accused Instrumentalities”), such as, e.g., Panorama
`
`Identity and Lotame’s Spherical Platform, that directly infringe, literally and/or under the doctrine
`
`of equivalents, claims of the ’398 patent.” (Id. at ¶ 12 (emphasis added).)
`
`AlmondNet tacitly acknowledges that its original Complaint was not limited to the method
`
`claims by altering the allegations in its Amended Complaint to be directed at method claims only.
`
`(D.I. 16 at ¶ 19 (“On information and belief, Defendant makes, uses, offers for sale, sells, and/or
`
`5
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`

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`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 10 of 13 PageID #: 603
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`imports the Accused Instrumentalities (including Lotame’s Spherical Platform product and
`
`services) that directly infringe, literally and/or under the doctrine of equivalents, one or more
`
`method claims of the ’398 patent.”) (emphasis added).) But this tactical switch does not absolve
`
`AlmondNet from complying with the marking statute. See Michigan Motor Techs., LLC v.
`
`Bayerische Motoren Werke AG, 683 F. Supp. 3d 811, 834 (N.D. Ill. 2023). In Michigan Motor,
`
`as here, patentee amended its complaint “for the express purpose of avoiding the marking statute”
`
`by “chang[ing] its assertion of infringement to only method claims.” Id. There, the court found
`
`this “attempt to avoid the requirements of the marking statute by amending its complaint ... is not
`
`excused.” Id. The same should be true here. The court in Michigan Motor expressly considered
`
`Crown Packaging in this determination, noting “Crown Packaging says nothing about whether a
`
`patentee can avoid the patent marking statute by dropping any instrumentality claims mid-
`
`litigation.” Id.
`
`When a patent contains both apparatus and method claims, and when a patentee asserts
`
`both apparatus and method claims, the patentee is obliged to comply with the marking statute. See
`
`Crown Packaging Tech. v. Rexam Beverage Can, 498 F. Supp. 2d 718, 728 (D. Del. 2007), rev’d,
`
`559 F.3d 1308 (Fed. Cir. 2009); Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1539 (Fed.
`
`Cir. 1993) (holding that when both apparatus and method claims were asserted, patentee “was
`
`required to mark its product pursuant to section 287(a) in order to recover damages under its
`
`method claims prior to actual or constructive notice being given to” the alleged infringer). The
`
`patentee is not relieved of that duty simply by filing an Amended Complaint and narrowing to only
`
`assert method claims. See Crown Packaging, 498 F. Supp. 2d at 728; see also Siemens Mobility
`
`Inc. v. Westinghouse Air Brake Techs. Corp., No. 16-0284-LPS-CJB, 2018 WL 7893901, at *4
`
`(D. Del. Dec. 17, 2018) (“[Plaintiff] initially asserted an apparatus claim from the ’850 patent, so
`
`6
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 11 of 13 PageID #: 604
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`the marking statute is applicable to that patent.”); Michigan Motor, 683 F. Supp. 3d at 834
`
`(“Because the apparatus claims were once asserted, the marking requirement is not excused.”);
`
`Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 906 F. Supp. 2d 399, 407 (W.D. Pa. 2012)
`
`(holding apparatus claims were originally asserted and therefore the marking statute applied).
`
`The Federal Circuit’s reversal of the district court’s holding in Crown Packaging is based
`
`on factual circumstances that do not exist here. (D.I. 23 at 12.) On appeal, it was clarified that
`
`“the patentee only [ever] asserted method claims despite the fact that the patent contained both
`
`method and apparatus claims.” Crown Packaging, 559 F.3d at 1317.3 But here AlmondNet
`
`initially asserted both apparatus and method claims. Like American Medical, “both apparatus and
`
`method claims of the ’765 patent were asserted” and AlmondNet is therefore required to plead
`
`compliance with the marking statute. Id. (citing American Medical, 6 F.3d at 1538–39); see also
`
`Siemens Mobility, 2018 WL 7893901, at *4 (As AlmondNet “initially asserted an apparatus claim
`
`from the [asserted] patent[s], ... the marking statute is applicable.”).
`
`AlmondNet had the initial burden to show that it complied with the patent-marking statute.
`
`See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017).
`
`It did not meet that burden, plead any facts related to compliance with the marking statute in its
`
`original Complaint, or even mention 35 U.S.C. § 287. AlmondNet’s claims for past damages
`
`should be dismissed.
`
`
`3 The original counterclaims in Crown Packaging made clear that only the method claims of the
`’839 Patent were asserted. See Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., No. 05-
`608-KAJ, D.I. 17 (Counterclaims), at ¶¶ 7–9 (D. Del. Nov. 3, 2005) (“The ’839 Patent discloses
`and claims a method for necking an open end of a container including a cylindrical metal container
`such as can bodies.... Upon information and belief, a reasonable opportunity for discovery will
`produce evidence that can bodies that Crown USA has made in the United States are made by a
`method as claimed by the ’839 Patent.” (emphasis added)); see also U.S. Pat. No. 4,774,839 cls.
`1, 11, 20. In contrast, the original Complaint in this case alleged infringement of both method and
`apparatus claims.
`
`7
`
`

`

`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 12 of 13 PageID #: 605
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`C. Without Indirect Infringement, Claims for ’445 Patent Must Also Be
`Dismissed
`
`The voluntary dismissal of the indirect infringement claims of the ’445 Patent require the
`
`dismissal of the ’445 Patent in its entirety. Without an indirect infringement claim, AlmondNet
`
`cannot continue to assert the ’445 Patent. AlmondNet’s articulated theory for infringement of the
`
`’445 Patent requires the function and use of a third-party product called “Oracle BlueKai.” (See
`
`D.I. 16-6; D.I. 21 at 9.) Oracle BlueKai is a product owned and operated by a third-party not
`
`related to Lotame. (D.I. 21 at 9.) AlmondNet has not alleged any facts, and cannot allege any
`
`facts, that Oracle BlueKai is part of the suite of products and services that Lotame offers. It’s
`
`repeated inclusion in claim charts alleging Lotame’s infringement of AlmondNet’s patents is at
`
`odds with its claims that it only accuses one Lotame product of infringement. (E.g., D.I. 23 at 9
`
`(“AlmondNet has done so by pleading all aspects of infringement as being performed by one
`
`product, i.e., Lotame’s Spherical Platform.”) AlmondNet does not address this argument in either
`
`its First Amended Complaint or its Answering Brief. Indeed, the words “Oracle BlueKai” do not
`
`appear anywhere in AlmondNet’s First Amended Complaint or briefing, only its claim chart for
`
`the ’445 Patent. As AlmondNet has only alleged facts that Lotame infringes the ’445 Patent in
`
`concert with the actions of a third party, and it now dismisses the indirect infringement claims of
`
`the ’445 Patent, the ’445 Patent must be dismissed in its entirety.
`
`III. CONCLUSION
`
`For the reasons stated above, Defendant Lotame respectfully requests that the Court
`
`dismiss AlmondNet’s claims of infringement and claims for past damages.
`
`
`
`8
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`

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`Case 1:24-cv-00376-MN Document 25 Filed 10/01/24 Page 13 of 13 PageID #: 606
`
`Dated: October 1, 2024
`
`
`
`
`
`
`
`
`FISH & RICHARDSON P.C.
`
`By: /s/Grayson P. Sundermeir
`
`Susan E. Morrison (No. 4690)
`Grayson P. Sundermeir (No. 6517)
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19899-1114
`(302) 652-5070
`morrison@fr.com
`sundermeir@fr.com
`
`Aamir A. Kazi
`(GA Bar No. 104235)
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`(404) 892-5005
`kazi@fr.com
`
`Attorneys for Defendant Lotame Solutions, Inc.
`
`9
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`