Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 1 of 7 PageID #: 611
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ALMONDNET, INC., INTENT IQ, LLC, and
`DATONICS LLC,
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`Plaintiffs,
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`v.
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`LOTAME SOLUTIONS, INC.,
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`Defendant.
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`C.A. No. 24-376-MN
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`JURY TRIAL DEMANDED
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`ALMONDNET’S SUR-REPLY TO LOTAME’S MOTION TO DISMISS
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`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
`
`Attorneys for Plaintiffs
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`Dated: October 15, 2024
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`Of Counsel:
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`Reza Mirzaie
`Ben Wang
`James Milkey
`Amy Hayden
`James Tsuei
`Daniel Kolko
`Jason Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`bwang@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
`
`
`
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`

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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 2 of 7 PageID #: 612
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`I.
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`Lotame’s New Marking Argument Fails on the Facts and Law
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`Lotame’s opening brief acknowledged that “AlmondNet is only asserting the method
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`claims of these patents” but argued that was “no matter” because “the patents include both method
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`and apparatus claims.” (D.I. 21 at 15.) AlmondNet refuted this argument in opposition. It showed
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`that Lotame’s entire argument depended on a case and proposition that was reversed by the Federal
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`Circuit. (D.I. 23 at 8–9.) And because “AlmondNet is only asserting method claims” (as Lotame
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`acknowledged), it was not required to plead compliance with the marking statute. (Id. (citing
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`Crown Packaging, 559 F.3d 1308, 1316–17 (Fed. Cir. 2009).)
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`Faced with this controlling authority, Lotame pivots to a brand-new argument in reply. It
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`asserts that marking compliance is required because AlmondNet’s original complaint allegedly
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`asserted infringement of “all claims of the Asserted Patents,” including system claims from each
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`patent. This is false. AlmondNet’s original complaint charts one method claim for each asserted
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`patent. (See D.I. 1 at ¶¶ 16, 26, 36, 44, 51 (incorporating claim charts for independent claim 1 of
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`the ’398, ’210, ’445, ’249, and ’904 patents—all method claims). Although the complaint mentions
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`“one or more claims” of each patent, no system claims are identified in either the complaint or
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`claim charts. Lotame’s interpretation of the original complaint as asserting system claims for each
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`patent (allegedly because it asserts all claims across five patents) is unsupported.
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`Lotame’s interpretation is also undermined by the record. Before Lotame’s reply, neither
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`party characterized the original complaint as asserting system claims:
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` AlmondNet’s opposition: “The FAC makes clear that AlmondNet is (and always
`has) only asserting method claims of the Asserted Patents.” (D.I. 23 at 3.)1
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` Lotame’s opening brief said that AlmondNet’s amendments “clarify” the asserted
`claims; it never said AlmondNet changed the claims. (D.I. 21 at 15.) Indeed, the
`FAC attached identical claim charts as the original complaint.
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`1 All emphasis added unless otherwise noted.
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`1
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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 3 of 7 PageID #: 613
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` Neither Lotame’s opening brief nor its original motion argued that AlmondNet
`asserted system claims. (D.I. 21 at 15–16; D.I. 13 at 13). Rather, the entire argument
`was that the asserted patents include both method and apparatus claims and so
`compliance with the marking statute was required. (Id.)
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`Because AlmondNet is only asserting method claims, the Federal Circuit’s holding in Crown
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`Packaging applies squarely to this case. Lotame’s attempt to distinguish Crown Packaging falls
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`flat. It modifies a quote by adding “[ever]” and spills significant ink characterizing a district court
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`docket entry. (D.I. 25 at 7, n. 3.) But neither point appears in Federal Circuit’s decision. Thus, the
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`Court’s holding was in no way “based on” them. Even if Lotame’s arguments were relevant, the
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`same factual circumstances exist here. AlmondNet has only ever asserted method claims. And its
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`original complaint identifies and charts method claims (and no system claims).
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`Lotame’s reply is thus wrong on the facts and its motion fails for this reason alone. But
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`Lotame is also wrong on the law. Any purported ambiguity in the original complaint was resolved
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`and superseded by AlmondNet’s amended complaint. As a matter of law, the amended complaint
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`governs this case and this motion to dismiss. See In re Samsung Electronics Co., Ltd., 2 F.4th
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`1371, 1376 (Fed. Cir. 2021) (“Once the respondents filed their amended complaints, the original
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`complaints were ‘dead letters’ and ‘no longer performed any function in the cases.’”). Indeed, this
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`District has held that statements in a superseded complaint are not judicial admissions, nor can
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`they be treated as evidentiary admissions. See Prolitec Inc. v. ScentAir Technologies, LLC., C.A.
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`No. 20-984-WCB, 2024 WL 341342, *2–*3 (D. Del. Jan. 30, 2024) (Bryson, J.) (granting MIL to
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`exclude infringement allegations that were withdrawn in a superseded complaint).
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`Here, there are not even any “statements” in AlmondNet’s original complaint that assert
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`infringement of the system claims. Lotame’s argument rests on self-serving characterizations of
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`2
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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 4 of 7 PageID #: 614
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`the complaint (such as the purported belief that it asserts all claims across five patents). But there
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`is no basis, under the facts or law, to “bind” AlmondNet to Lotame’s attorney characterizations.
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`Lotame’s cited cases are inapposite. (D.I. 25 at 6–7.) They generally involve situations in
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`which the patentee expressly asserted system claims in the complaint, claim charts, infringement
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`contentions, etc. but subsequently removed those claims at a late stage of the litigation. Lotame’s
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`reliance on Michigan Motor (N.D. Ill.)—an out-of-circuit district court case—is likewise
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`unavailing. In Michigan Motor, the original complaint asserted and charted system claim 1 of the
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`’565 patent and system claim 1 of the ’122 patent.2 The patentee also expressly represented to the
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`court that it was “changing” its infringement allegations to method claims. Indeed, the patentee
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`served new claim charts that removed the system claims and added method claims.
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`None of these circumstances exist here. AlmondNet’s original complaint doesn’t list any
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`system claims (expressly or otherwise). And AlmondNet has never served any claim charts
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`mapping the system claims. Nor has AlmondNet represented to the Court that it previously asserted
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`system claims. Just the opposite: it made clear that “AlmondNet is (and always has) only asserting
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`method claims of the Asserted Patents.” (D.I. 23 at 3.) Accordingly, Michigan Motor is
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`distinguishable and cannot support dismissal of past damages in this case.
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`II.
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`Lotame’s New and Confusing “Indirect Infringement as a Necessity for Direct
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`Infringement” Argument also Fails
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`Lotame’s Reply argues for the first time that “[w]ithout an indirect infringement claim,
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`AlmondNet cannot continue to assert the ‘’445 Patent.” (D.I. 25 at 8.) This is a new argument;
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`Lotame’s original motion set forth separate arguments regarding direct infringement (D.I. 21 at 8-
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`2 See Michigan Motor’s Complaint (D.I. 1 & Exs. 4, 10), No. 22-cv-3804 (N.D. Ill. Jul. 22, 2022).
`Claim 1 of USP 6,581,565 recites “A device for controlling a torque output of an engine . . .”
`Claim 1 of USP 6,736,122 recites “An internal combustion engine . . .”
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`3
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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 5 of 7 PageID #: 615
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`10) and indirect infringement (id. at 11-16), and never implied that a dismissal of indirect
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`infringement claims would have any impact on direct infringement claims.
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`Lotame’s new argument fails. As an initial matter, it is contrary to common sense. Some
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`showing of direct infringement is a prerequisite for indirect infringement,3 not the other way
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`around, and Lotame cites no authority to the contrary.
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`Additionally, Lotame’s argument is based on the implicit assumption that Lotame’s
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`cooperation with or interaction with a third party cannot constitute direct infringement. Lotame
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`appears to have conflated the concept of indirect infringement with the distinct concept of divided
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`infringement, which can be implicated when different parties perform different steps of a claimed
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`method. See BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380 (Fed. Cir. 2007), overruled
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`on other grounds by Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir.
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`2012) (“Courts faced with a divided infringement theory have also generally refused to find
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`liability where one party did not control or direct each step of the patented process.”).
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`But even if Lotame had instead argued that AlmondNet’s claims rest on a “joint
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`infringement” theory, that would be incorrect. See BMC, 498 F.3d at 1381 (“A patentee can usually
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`structure a claim to capture infringement by a single party,” such as by “draft[ing] its claims to
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`focus on one entity.”); Nazomi Commc'ns, Inc. v. Nokia Corp., 739 F.3d 1339, 1345 (Fed. Cir.
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`2014) (“We have repeatedly distinguished a description of the environment in which a claimed
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`invention operates from a limitation on the claimed invention itself.”).
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`3 Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) (“There can
`be no inducement or contributory infringement without an underlying act of direct
`infringement.”)
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`4
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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 6 of 7 PageID #: 616
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`Here, claim 1 (the sole independent claim) of the ’445 explicitly recites a “method” that
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`recites two steps performed by a computer system: “(a) with a computer system automatically
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`storing… profile information associated with a visitor, as a result of electronic receipt from a
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`profile owner computer of indicia of the profile information,” and “(c) later, … with the computer
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`system… using the profile information… to electronically cause delivery of an electronic
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`advertisement to the visitor device.” (D.I. 16-5 at claim 1.) In other words, the method is performed
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`by the computer system alone, which AlmondNet has mapped to Lotame’s Spherical Platform. Id.
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`(“(b) wherein the profile owner computer is programmed to….”). Limitation (b) is thus a
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`“description of the environment in which a claimed invention operates,” and is not a method step
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`that must be performed by the “computer system” practicing the claimed method. See Nazomi, 739
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`F.3d at 1345; cf. BMC, 498 F.3d at 1381 (“In this case, for example, BMC could have [properly]
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`drafted its claims to focus on one entity. The steps of the claim might have featured references
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`to a single party's supplying or receiving each element of the claimed process.”). AlmondNet
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`properly maps the “profile owner computer” to third party computers such as those run by Oracle.
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`In sum, Lotame’s new argument sets forth no plausible reason why indirect infringement
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`would have any bearing on direct infringement. And even if Lotame’s new argument had asserted
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`divided infringement, it would still fail.
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`Dated: October 15, 2024
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`Of Counsel:
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`Reza Mirzaie
`Ben Wang
`James Milkey
`Amy Hayden
`James Tsuei
`Daniel Kolko
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`Respectfully submitted,
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`FARNAN LLP
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`/s/ Michael J. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 777-0300
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`5
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`Case 1:24-cv-00376-MN Document 27-1 Filed 10/15/24 Page 7 of 7 PageID #: 617
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`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`Attorneys for Plaintiffs
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`Jason Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`bwang@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
`
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`6
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