Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 1 of 7 PageID #: 619
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ALMONDNET, INC. and 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. 24-00376-MN
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`JURY TRIAL DEMANDED
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`Dated: October 29, 2024
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`DEFENDANT’S RESPONSE IN OPPOSITION TO PLAINTIFFS’
`OPPOSED MOTION FOR LEAVE TO FILE A SUR-REPLY
`IN OPPOSITION TO DEFENDANT’S MOTION TO DISMISS
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`
` 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
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`Aamir A. Kazi
`(GA Bar No. 104235)
`1180 Peachtree Street, NE, 21st Floor
`Atlanta, GA 30309
`(404) 892-5005
`kazi@fr.com
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`Attorneys for Defendant
`LOTAME SOLUTIONS, INC.
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 2 of 7 PageID #: 620
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .................................................................................................1
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`II.
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`LOTAME’S ARGUMENTS ARE NOT NEW .....................................................1
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`i
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 3 of 7 PageID #: 621
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cornell Univ. v. Illumina, Inc.,
`No. 10-0433-LPS-MPT, 2018 WL 11427960 (D. Del. Feb. 5, 2018) .......................................3
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`Statutes
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`35 U.S.C. § 287 ............................................................................................................................1, 2
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`ii
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 4 of 7 PageID #: 622
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`I.
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`INTRODUCTION
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`The arguments presented in Lotame’s reply brief (D.I. 25) were also presented in its
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`opening brief (D.I. 21). There is no basis to provide AlmondNet yet another bite at the same apple,
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`and its request for leave to submit additional briefing should be denied.
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`II.
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`LOTAME’S ARGUMENTS ARE NOT NEW
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`AlmondNet’s request for leave is based on two arguments which allegedly appear in
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`Lotame’s reply brief but not Lotame’s opening brief. AlmondNet is incorrect on both grounds.
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`First, AlmondNet contends Lotame’s arguments regarding past damages are new. (D.I. 27
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`at 2.) Not so. Lotame has consistently argued AlmondNet’s failure to mark under 35 U.S.C. § 287
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`precludes any past damages. Specifically, AlmondNet originally asserted all claims of the
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`Asserted Patents, including both apparatus and method claims. (See D.I. 25 at 5-6.) Confronted
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`with a motion to dismiss, including a dismissal of any claims for past damages, AlmondNet
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`amended its allegations to assert just the method claims of the Asserted Patents. (See D.I. 21 at 15
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`(“AlmondNet has amended its allegations of infringement in an attempt to clarify they are
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`directed to ‘one or more method claims’ of the ’398, ’210, ’445, ’249, and ’904 Patents.” (emphasis
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`added)). This tactical pivot, however, did not absolve AlmondNet of its responsibility to mark its
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`products in accordance with § 287. (See D.I. 21 at 15-16.) As Lotame explained in its second
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`motion to dismiss, the Asserted Patents include both apparatus and method claims, and
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`AlmondNet’s original assertion of all claims meant AlmondNet was thus required to mark if it
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`wanted to seek past damages. (D.I. 21 at 15-16; D.I. 25 at 5-7.)
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`AlmondNet claims these arguments are new by pointing to Lotame’s use of the word
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`“include[d].” (See D.I. 27 at 2 (“Lotame’s motion to dismiss was based on the theory that the
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`patents included both method and apparatus claims.”) (citing D.I. 21 at 15) (emphasis in original).)
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`1
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 5 of 7 PageID #: 623
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`Yet AlmondNet’s response ignored the uncontested fact that AlmondNet also originally asserted
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`both the method and apparatus claims. (See D.I. 25 at 5-7.) That Lotame pointed to AlmondNet’s
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`changed allegations in reply, and explained why those allegations also required AlmondNet to
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`comply with the marking statute, does not make Lotame’s arguments new. Lotame’s argument
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`remains, as set forth in its opening brief, that the “inclu[sion of] both method and apparatus claims”
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`in the patents asserted in their entirety against Lotame (even if the apparatus claims are later
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`dropped), means AlmondNet’s failure to mark precludes its ability to recover past damages. (See
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`D.I. 21 at 15-16.)
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`Second, Lotame’s argument the ’445 Patent should be dismissed in its entirety is not new.
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`Lotame explained in its opening brief how AlmondNet failed to properly plead direct infringement
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`(D.I. 21 at 8-10) and indirect infringement (id. at 11-15), including of the ’445 Patent. Lotame’s
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`opening brief made clear AlmondNet relied on mixing and matching various products, including
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`“features of Oracle BlueKai, a product offered by a third-party vendor,” such that no single Lotame
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`product directly infringed all limitations of the asserted claims. (D.I. 21 at 5; see id. at 9
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`(“AlmondNet mixes features from . . . one Lotame product and the product of a third party to
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`satisfy the claim limitations of the ’445 Patent.”).) AlmondNet therefore could not properly
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`maintain its claims for direct or indirect infringement of this patent. (See id.)
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`Recognizing the shortcomings of its indirect infringement allegations for the ’445 Patent,
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`Lotame dropped them prior to responding to Lotame’s motion. (D.I. 23 at 9.) But it should be no
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`surprise to AlmondNet that Lotame’s reply brief maintains the same challenge to the sufficiency
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`of AlmondNet’s remaining direct infringement allegations. (See D.I. 21 at 5, 9.) Nor is Lotame
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`required to anticipate that AlmondNet would drop its indirect infringement allegations and
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`preemptively “impl[y]” to AlmondNet the implications of those decisions, as AlmondNet appears
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`2
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 6 of 7 PageID #: 624
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`to suggest. (See D.I. 27 at 2-3 (“Lotame’s motion . . . never implied that a dismissal of indirect
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`infringement claims would have any impact on the direct infringement claims.”) (emphasis in
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`original).)
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`When arguments present in reply were properly raised in opening, as is the case here, this
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`District has denied granting leave to file a sur-reply. Cornell Univ. v. Illumina, Inc., No. 10-0433-
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`LPS-MPT, 2018 WL 11427960, at *6 (D. Del. Feb. 5, 2018) (“Because the court finds the issues
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`and arguments in . . . Cornell’s reply brief were either in its opening brief and/or in response to
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`Life Tech’s arguments in its answering brief, the court denies Life Tech’s motion to strike . . . and
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`determines no sur-reply is appropriate.”). Because the arguments presented in Lotame’s reply
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`brief were present in Lotame’s opening brief, Lotame respectfully requests the Court deny
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`AlmondNet’s Motion for Leave to File a Sur-Reply.
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`3
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`Case 1:24-cv-00376-MN Document 28 Filed 10/29/24 Page 7 of 7 PageID #: 625
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`Dated: October 29, 2024
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`FISH & RICHARDSON P.C.
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`By: /s/ Grayson P. Sundermeir
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`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
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`Attorneys for Defendant Lotame Solutions, Inc.
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`4
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