Case 1:18-cv-01855-RGA Document 30 Filed 09/05/19 Page 1 of 4 PageID #: 630
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`GEMAK TRUST,
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`RECKITT BENCKISER LLC,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`DEFENDANT’S OPPOSITION TO PLAINTIFF’S
`MOTION FOR LEAVE TO FILE SURREPLY
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`Plaintiff,
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`Defendant.
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`C.A. No. 18-1855-RGA
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`Reckitt Benckiser LLC’s (“RB”) reply brief fully and fairly replied to GEMAK Trust’s
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`(“GEMAK”) opposition to RB’s Motion for Judgment on the Pleadings (D.I. 25). GEMAK insists
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`a surreply is warranted for one reason: because RB allegedly raised for the first time in paragraph
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`2 of its reply that patents are read from the point of view of one skilled in the art. No surreply is
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`warranted.
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`It is a basic legal principle that patents are read from the point of view of one skilled in the
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`art. More importantly, however, and as is self-evident from the paragraph in question, RB’s
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`argument was directly responsive to “GEMAK[’s] argu[ment] that errors are evident or apparent
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`on the face of the patent because someone reading the claims would understand that the claims
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`violate 35 U.S.C. § 112 ¶ 5.” (D.I. 27, ¶ 2 (citing (D.I. 26, ¶ 2).) Because GEMAK made that
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`argument for the first time in its opposition, RB’s response, which was in keeping with the
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`argument it made in its motion that the errors were not evident from the face of the patent (D.I.
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`25, ¶¶ 9–10), was a fair reply point that did little more than explain how and why GEMAK’s
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`contrary argument was legally flawed. By suggesting RB represented in its motion that the Court
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`need not consider the perspective of one skilled in the art when interpreting patents (D.I. 29 at 1),
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`Case 1:18-cv-01855-RGA Document 30 Filed 09/05/19 Page 2 of 4 PageID #: 631
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`GEMAK conflates two different arguments, both of which were in RB’s motion. First, RB’s
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`motion argued that the Court can address the invalidity issue “without the need to engage in claim
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`construction, or analyze the details of the patent specification, or consult the knowledge of a person
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`of skill in the art, or assess any prior art.” (D.I. 25, ¶ 4.) Second, RB’s motion argued that the
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`standard for when a court may correct a patent is not met here because it was not evident from the
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`face of the patent how the claims should correctly read (i.e., because that the error was not
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`typographical or otherwise apparent simply by reading the patent). (D.I. 25, ¶¶ 10–11.)
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`These arguments are entirely consistent with one another. That is, while the fact that claims
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`4–13 are multiple dependent claims is clear based on the language of the claims without the need
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`to consult the knowledge of a person of skill in the art, the fact that the multiple dependency
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`constituted an error (and the appropriate way to correct that error) is not. The Court should deny
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`GEMAK’s motion. Trans Video Electronics, Ltd. v. Netflix, Inc., No. 12-1743-LPS, 2014 WL
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`900929, at *1 n.1 (D. Del., Mar. 4, 2014) (Burke, J.) (denying motion for leave to file sur-reply
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`because “Defendant did not raise ‘new arguments’ in its Reply brief regarding the Motion; instead,
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`the complained-of material was responsive to theories and arguments raised in Plaintiff’s
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`answering brief, which themselves were relevant to topics addressed in Defendant’s opening
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`brief”).
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`The Court should deny GEMAK’s request for a surreply also because it is GEMAK, not
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`RB, that seeks to advance entirely new arguments that should have appeared in an earlier brief.
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`GEMAK could have argued in its opposition that a person of skill in the art would see a clear error
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`in claims 10 and 11 and a clear way to correct that error. (D.I. 29-2, ¶ 2 (proposed surreply).) It
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`didn’t do that even though it would have been responsive to RB’s argument, in its motion, that
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`there are multiple equally plausible way to rewrite the claims, including claims 10 and 11. (D.I.
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`2
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`Case 1:18-cv-01855-RGA Document 30 Filed 09/05/19 Page 3 of 4 PageID #: 632
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`25, ¶ 10 (RB’s motion).) GEMAK instead elected to argue only that there is a clear error because
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`of the prosecution history (D.I. 26, ¶¶ 3-9), which is an erroneous reading of the law, as set forth
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`in RB’s reply (D.I. 27, ¶ 3.) Because GEMAK, not RB, is the party seeking to insert new
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`arguments after the proper time to do so, the Court should deny GEMAK’s motion.
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`Dated: September 5, 2019
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`YOUNG CONAWAY STARGATT
`& TAYLOR, LLP
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`______________________________
`Pilar G. Kraman (No. 5199)
`Robert M. Vrana (No. 5666)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`pkraman@ycst.com
`rvrana@ycst.com
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`Douglas J. Nash (admitted pro hac vice)
`John D. Cook (admitted pro hac vice)
`Kathryn D. Cornish (admitted pro hac vice)
`BARCLAY DAMON, LLP
`Barclay Damon Tower
`125 East Jefferson Street
`Syracuse, New York 13202
`(315) 425-2700
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`Attorneys for Defendant
`Reckitt Benckiser LLC
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`3
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`Case 1:18-cv-01855-RGA Document 30 Filed 09/05/19 Page 4 of 4 PageID #: 633
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`CERTIFICATE OF SERVICE
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`I, Pilar G. Kraman, hereby certify that on September 5, 2019, I caused to be
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`electronically filed a true and correct copy of the foregoing document with the Clerk of the
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`Court using CM/ECF, which will send notification that such filing is available for viewing and
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`downloading to the following counsel of record:
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`John S. Goetz, Esquire
`FISH & RICHARDSON P.C.
`601 Lexington Avenue, 52nd Floor
`New York, NY 10022
`goetz@fr.com
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`Susan E. Morrison
`Kelly Allenspach Del Dotto
`Casey M. Kraning
`FISH & RICHARDSON P.C.
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`morrison@fr.com
`kad@fr.com
`cmk@fr.com
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`Attorneys for Plaintiff
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`I further certify that on September 5, 2019, I caused a copy of the foregoing document
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`to be served by e-mail on the above-listed counsel.
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`Dated: September 5, 2019
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`01:24511705.1
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`/s/ Pilar G. Kraman
`Pilar G. Kraman (No. 5199)
`Robert M. Vrana (No. 5666)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`pkraman@ycst.com
`rvrana@ycst.com
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`Attorneys for Defendant
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