Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 1 of 28 PageID #: 17946
`
`
`
`
`Kenneth L. Dorsney
`302.888.6855
`kdorsney@morrisjames.com
`
`
`
`
`
`February 25, 2024
`
`
`
`VIA CM/ECF & HAND DELIVERY
`The Honorable Christopher Burke
`United States District Court
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`
`
`
`
`
`
`
`
`Midwest Energy Emissions Corp., et. al v. Arthur J. Gallagher & Co., et al.,
`C.A. No. 19-1334-CJB
`
`
`Dear Judge Burke:
`
` The Parties respectfully write pursuant to Your Honor’s oral order (D.I. 681). The Parties
`
`have been unable to agree on the substantive issue of whether MES lacks constitutional standing
`or the appropriate remedy. The Parties are continuing to confer on this matter and their respective
`positions are below:
`
`Plaintiffs’ Position:
`
`I. What is the parties’ dispute?
`On Friday at 12:06pm, local counsel for Defendants emailed Plaintiffs a letter arguing
`that “Plaintiff MES Inc.,” one of two plaintiffs in this case, “lacks constitutional standing and
`must be dismissed from this case immediately for lack of subject matter jurisdiction.” Ex. A at 1.
`According to the letter, the Court “previously declined to dismiss MES on the basis that ‘MES
`could hold exclusive rights to obtain patent infringement damages as to [the 147 patent] for a
`portion of the relevant time period’” and “the facts . . . have changed.” Id. The changed facts
`Defendants point to are that the ’147 patent is no longer at issue in the case and the damages
`period has narrowed. The letter also makes clear that the issue it is raising is “constitutional, not
`statutory.” Ex. A at 2 (emphasis added).
`
`Plaintiffs inquired as to exactly what Defendants contemplated should happen. Ex. B
`(email chain) at 13. Defendants then asked for dismissal of MES “prior to the commencement of
`trial because it will be more confusing to begin the trial with MES and then have it disappear as a
`party during the trial, and leaving it a party during the trial raises the risk of unnecessary error or
`confusion,” Ex. B (email chain) at 9–10, and asked Plaintiffs to join a letter to the Court
`informing it of the issue, id. at 7–8.
`
`In response to the letter, the Court sought information from the parties, and Defendants
`proposed a blind submission of the parties’ position. Ex. B at 3. Plaintiffs did not understand the
`Court to be requesting argument and instead—information—and continued to ask Defendants for
`more information about the nature of the dispute with limited success.
`
`T 302.888.6800
`F 302.571.1750
`500 Delaware Avenue, Suite 1500
`| Wilmington, DE 19801-1494
`Mailing Address P.O. Box 2306 | Wilmington, DE 19899-2306 www.morrisjames.com
`
`16574227/1
`
`

`

`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 2 of 28 PageID #: 17947
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 2
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`II. Is the challenge statutory or constitutional?
`
`A. It is statutory, and it is forfeited.
`
`The issue raised in Defendants’ letter, although framed as constitutional, is in fact
`statutory standing. The letter suggests that the Court declined to dismiss MES earlier in this case
`because of the presence of allegations about the ’147 patent and about MES’s potential
`entitlement to past damages. Ex. A at 1–2. But the Court’s previous ruling held that Defendants’
`original MES standing challenge—even though brought as a constitutional and statutory standing
`issue—was properly considered as an issue of statutory standing alone (i.e., whether MES
`qualifies as a patentee under 35 U.S.C. § 281). Compare D.I. 174 at 4 (challenging standing
`under Rule 12(b)(1)—lack of subject matter jurisdiction, which would be constitutional
`standing—and under Rule 12(b)(6), which would extend to statutory standing) with D.I. 279 at
`14 (resolving the issue as one of statutory standing under Rule 12(b)(6)).
`
`The Court’s holding is correct. See, e.g., Lone Star Silicon Innovations LLC v. Nanya
`Tech. Corp., 925 F.3d 1225, 1235–36 (Fed. Cir. 2019) (“We therefore firmly bring ourselves into
`accord with Lexmark and our sister circuits by concluding that whether a party possesses all
`substantial rights in a patent does not implicate standing or subject-matter jurisdiction.”);
`Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125 (2014); TransUnion
`LLC v. Ramirez, 594 U.S. 413, 426–27 (2021) (“For standing purposes, therefore, an important
`difference exists between (i) a plaintiff ’s statutory cause of action to sue a defendant over the
`defendant's violation of federal law, and (ii) a plaintiff ’s suffering concrete harm because of the
`defendant's violation of federal law. Congress may enact legal prohibitions and obligations. And
`Congress may create causes of action for plaintiffs to sue defendants who violate those legal
`prohibitions or obligations. But under Article III, an injury in law is not an injury in fact.”).
`
`The operative pleading in this case—the Final Pretrial Order—does not join any
`challenge to MES’s statutory standing, and this issue is forfeited. See D.I. 659.3, 659.5
`(Defendants’ statements of factual and legal issues to be tried not mentioning standing). The
`facts that Defendants now rely on—the dropping of the ’147 patent and the narrowing of the
`damages period—all occurred before this Pretrial Order was submitted for the Court’s entry, and
`there is no manifest injustice presented to Defendants. See Fed. R. Civ. P. 16(e) (“The court may
`modify the order issued after a final pretrial conference only to prevent manifest injustice.”). It
`is forfeited, and Defendants cannot resurrect it now.
`
`When asked why this issue was being raised on the eve of trial, Defendants responded
`that their challenge was “nonwaivable” because it implicated “subject matter jurisdiction.” Ex.
`B at 9. That, as explained above, is simply incorrect. Defendants also stated that they had “just
`fully appreciated [the issue] last night[, the night of Thursday, February 22,] in the course of trial
`prep.” Defendants’ failure to work up this standing issue until trial preparations is a decision that
`they made, and that decision resulted in their failure to timely raise the issue in the operative
`pleading in this case, the Final Pretrial Order. Allowing Defendants to undo that choice and add
`new issues to this trial would not prevent manifest injustice.
`
`

`

`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 3 of 28 PageID #: 17948
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 3
`
`
`B. To the extent the issue has any constitutional dimension, the Court need not decide
`it.
`
`Even accepting Defendants’ view that their arguments somehow implicate constitutional
`standing at this juncture, the Court need not dismiss MES. As the Supreme Court has repeatedly
`explained, “as in all standing inquiries, the critical question is whether at least one petitioner has
`‘alleged such a personal stake in the outcome of the controversy as to warrant his invocation of
`federal-court jurisdiction.’” Horne v. Flores, 557 U.S. 433, 445 (2009) (quoting Summers v.
`Earth Island Inst., 555 U.S. 488, 493 (2009)) (emphasis added). See also Town of Chester, N.Y.
`v. Laroe Ests., Inc., 581 U.S. 433, 439 (2017) (“[W]hen there are multiple plaintiffs: At least one
`plaintiff must have standing to seek each form of relief requested in the complaint.”); Bowsher v.
`Synar, 478 U.S. 714, 721 (1986) (concluding that one of three parties had standing, so the Court
`“need not consider the standing issue” as to the other two); Dir., Off. of Workers' Comp.
`Programs, U.S. Dep't of Lab. v. Perini N. River Assocs., 459 U.S. 297, 305 (1983) (holding that
`presence of one party with standing assures that controversy before Court is justiciable); Vill. of
`Arlington Heights v. Metro. Hous. Dev. Corp., 429 U.S. 252, 264 (1977) (“Because of the
`presence of this plaintiff [with standing], we need not consider whether the other individual and
`corporate plaintiffs have standing to maintain the suit.”); Know Your IX v. DeVos, No. CV RDB-
`20-01224, 2020 WL 6150935, at *3 (D. Md. Oct. 20, 2020) (collecting cases). ME2C has
`constitutional standing here, and, in the parties’ communications on this issue, Defendants have
`not suggested otherwise. Given that Defendants have not contested that ME2C has constitutional
`standing, and given that ME2C does have constitutional standing,1 the Court need not resolve
`MES’s standing. Precedent makes clear that this Court has the undisputably has the authority to
`decide the case as it stands now.
`
`C. The Court should also decline to dismiss MES because of the prejudice its dismissal
`would pose to ME2C.
`
`What is more, there is no prejudice to Defendants from having MES in this case.
`Plaintiffs have repeatedly asked Defendants what prejudice they may suffer by the inclusion of
`MES in the case. Defendants have only responded with a generalized concern that MES’s
`inclusion “raises the risk of unnecessary error or confusion.” Ex. B at 9–10. As explained
`above, there is simply no error in including MES in the case from a constitutional standing
`perspective, and there is no live statutory standing challenge in this case. And Defendants have
`not explained how, if at all, the evidence received or the arguments in the case would differ with
`MES out of the case. Without grounding their concern in specific evidence or arguments that
`may come up during the case, Defendants have offered no substantive reason why confusion
`would be presented by the inclusion of MES.
`
`
`1 There can be no question that ME2C has constitutional standing. As will be shown at trial but
`has been previewed to the Court in the pleadings filed thus far in this case, Defendants’ conduct
`have inflicted on ME2C a concrete, particularized, actual injury that is redressable by judicial
`relief.
`
`

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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 4 of 28 PageID #: 17949
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 4
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`
`At the same time, dismissing MES could present significant prejudice to ME2C. If
`Defendants are correct that there is an issue of constitutional standing here, constitutional
`standing is an unwaivable defense. Defendants have not agreed that ME2C has constitutional
`standing, but even if they did, Defendants could later argue that inclusion of MES was required
`and ME2C, standing alone, does not have constitutional standing.
`
`To be sure, in Plaintiffs view, ME2C has constitutional standing, with a concrete,
`particularized, actual injury caused by Defendants that is redressable by judicial relief. See
`TransUnion, 594 U.S. at 423. Plaintiffs also understand that ME2C has statutory standing based
`on the EERC’s assignment of the patents to ME2C as detailed in the Closing Agreement (PTX-
`54), which establishes that the Assignment of Patent Rights were executed and delivered to
`ME2C.
`
`But when Plaintiffs pointed Defendants to PTX-54 (attached as Ex. C), Defendants
`responded as follows:
`
`You identified PTX-54, the Closing Agreement as showing the basis for MES’s
`constitutional standing. The Closing Agreement states that “the Company,” defined
`collectively as ME2C and MES, has “the option to acquire the Patent Right” and
`that “the Company has elected to exercise” that option. PTX-054 at 1. However, the
`Closing Agreement later provides that the “Assignment of Patent rights” shall be
`“execute[d] and deliver[ed] to ME2C.” PTX-054 at 1. Similarly, Plaintiffs have
`alleged that ME2C owns “all rights, title, and interest” in the 114 and 517 patents.
`D.I. 406 ¶ 243. The assignments filed with the PTO, along with the accompanying
`Assignment agreements, show ME2C as the sole assignee. PTX-039; PTX-046. So,
`we don’t see any basis in PTX-054 for constitutional standing on the part of MES.
`
`See Ex. B at 1–2. As Defendants themselves quoted above, “the Company” is defined in that
`agreement as both MES and ME2C, which Defendants seem to imply creates a potential
`ambiguity in the contract. ME2C does not read the contract to be ambiguous, but to the extent
`Defendants or the Court read it that way, there is at least a possibility that MES may be a
`necessary party. And if MES was dismissed now and the Court were to later conclude inclusion
`of MES was necessary for constitutional standing, Plaintiffs would be severely prejudiced by the
`dismissal of MES.
`
`III. What should happen next?
`The answer to that question is nothing.
`
`At bottom, based on what Defendants have disclosed to Plaintiffs about their dispute,
`Defendants are urging an unpreserved and forfeited statutory standing challenge under the guise
`of constitutional standing to excuse their failure to preserve the issue. This dispute was
`presented with urgency to Plaintiff (demanding an answer to the initial letter within a few hours
`on the last business day before trial) and to the Court (asking to file a letter informing the Court
`of a dispute and filing such a letter late on the same day). But there is simply no urgency here.
`The defense is not constitutional; it is forfeited; and entertaining Defendants’ request, under
`
`

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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 5 of 28 PageID #: 17950
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 5
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`Defendants’ view of the law and their apparent view of the operative contract language, could
`ultimately harm Plaintiff. Defendants have not suggested they want a second, eve-of-trial
`continuance, but that would be extremely prejudicial to Plaintiff as well.
`
`What is more, if Defendants are sure that this issue is one of constitutional standing, ME2C’s
`constitutional standing—which appears to be unchallenged here—is sufficient for the Court to
`have subject matter jurisdiction here under significant Supreme Court precedent. And, of course,
`if there really is some Article III issue here, Defendants have declined to identify—at least to
`Plaintiffs at this time—any particular prejudice MES’s presence creates. Thus, there is no harm in
`proceeding as the parties had originally planned to—with bot
`
`CERT Defendants’ Position:
`
`
`Plaintiff MES Inc. lacks constitutional standing and must be dismissed from this case
`immediately for lack of subject matter jurisdiction. See Fed. R. Civ. P. 12(h)(3) (“If the court
`determines at any time that it lacks subject-matter jurisdiction, the court must dismiss the
`action.”).2 To satisfy the constitutional standing requirements of Article III, a plaintiff must allege
`and show a concrete and particularized injury that is actual and imminent. That injury must be
`fairly traced to the defendant and likely redressed by a judgment in its favor. Lujan v. Defenders
`of Wildlife, 504 U.S. 555, 560-61 (1992). In a case for patent infringement, “those who possess
`exclusionary rights in a patent suffer an injury when their rights are infringed.” Lone Star Silicon
`Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1234 (Fed. Cir. 2019).
`
`MES has no such exclusionary rights in the remaining asserted patents or any right to
`recover damages for alleged infringement in the time period at issue in this case. The Court
`previously declined to dismiss MES on the basis that “MES could hold exclusive rights to obtain
`patent infringement damages as to [the 147 patent] for a portion of the relevant time period.” D.I.
`279 at 16. The facts, however, have changed. MES is no longer pursuing an infringement claim
`for the 147 patent. Moreover, MES terminated any exclusive license it had to the 147 patent or
`related applications3 when the EERC assigned the patents-in-suit to ME2C. D.I. 406 ¶ 99. As the
`Court has recognized, the assignment of rights occurred on April 24, 2017. D.I. 279 at 14. As of
`that date, MES’s exclusive license was terminated. Regardless of whether it retained a right to
`recover damages for past infringement of the 147 patent, id. at 14-5, MES has not pled any
`exclusionary interest or right to recover for damages after April 24, 2017, nor is there any
`conceivable basis for it to do so. The Complaint is clear that ME2C owns “all rights, title, and
`interest” in the 114 and 517 patents, and that ME2C “holds all substantial rights pertinent to this
`suit, including the right to sue and recover for all past, current, and future infringement.” D.I. 406
`¶¶ 243, 315 (emphases added). MES is not alleged to hold any rights regarding the 114 and 517
`patents. As the case stands now, Plaintiffs are no longer asserting the 147 patent, and no right is
`
`
`2 “[S]ubject matter jurisdiction cannot be waived.” Medtronic Ave, Inc. v. Boston Scientific Corp., No. 98-
`478-SLR, 2004 WL 769365, at *4 (D. Del. Apr. 5, 2004). “A challenge to constitutional standing goes to
`the Court's subject matter jurisdiction and may be raised at any time.” Cirba Inc. v. VMWARE, Inc., No.
`CV 19-742-LPS, 2020 WL 7489765, at *4 n.4 (D. Del. Dec. 21, 2020).
`3 As the Court recognized, MES’s relevant rights were limited to the 147 patent as it was the only asserted
`patent (at that time) that issued prior to April 24, 2017. D.I. 279 at 14 n.10.
`
`

`

`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 6 of 28 PageID #: 17951
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 6
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`asserted to damages prior to at least July 2019.4 Either of those facts standing alone, much less
`both together, indisputably demonstrate that MES is not asserting and cannot assert a constitutional
`cognizable injury.
`
`When notified of this issue, Plaintiffs identified the Closing Agreement between ME2C,
`MES, and the EERC, PTX-054, as evidencing MES’s constitutional standing. Plaintiffs provided
`no explanation for how this document demonstrates constitutional standing on the part of MES.
`
`Plaintiffs did not provide any explanation because there is no reasonable explanation
`supporting their claim. The Closing Agreement states that “the Company,” defined collectively as
`ME2C and MES, has “the option to acquire the Patent Rights” and that “the Company has elected
`to exercise” that option. PTX-054 at 1. That statement, however, does not define any division or
`allocation of rights as between ME2C and MES. On the other hand, the Closing Agreement later
`provides that the “Assignment of Patent rights” shall be “execute[d] and deliver[ed] to ME2C.”
`PTX-054 at 1. That provision is wholly in accord with Plaintiffs’ allegations that ME2C owns “all
`rights, title, and interest” in the 114 and 517 patents. D.I. 406 ¶ 243 (emphasis added). And, indeed,
`the assignments filed with the PTO, along with the accompanying Assignment agreements, show
`ME2C as the sole assignee. PTX-039; PTX-046. Plaintiffs have identified no pleadings and no
`evidence to show that MES holds any title, interest, or rights to recover for infringement of the
`114 or 517 patents. Rather, the pleadings and evidence establish precisely the opposite.
`
`MES’s deficiency is of a constitutional, not statutory, nature. The issue is not whether MES
`has exclusionary rights that are sufficient to satisfy the requirements of 35 U.S.C. § 281. See Lone
`Star, 925 F.3d at 1235-36 (concluding that satisfying the “all substantial rights” test of § 281 does
`not go to standing or subject-matter jurisdiction). The issue is whether MES has any exclusionary
`rights at all sufficient to satisfy Article III. Id. at 1234. Indisputably, it does not.
`
`To the extent that Plaintiffs belatedly argue that MES has suffered some constitutionally
`sufficient harm other than harm to exclusionary rights, that argument should be rejected. To begin,
`although a limited number of district courts have entertained the argument that harms other than
`to exclusionary rights might be sufficient for Article III standing, the Federal Circuit has not
`endorsed that reasoning. Following Lonestar, the Federal Circuit confirmed that its prior decision
`“routinely held that constitutional standing requires at least one exclusionary right.” In re Cirba
`Inc., 2021 WL 4302979, at *3 (Sept. 22, 2021). The Federal Circuit noted that conferring Article
`III standing on a bare licensee (which MES is not even alleged to be) would be “a change in the
`law” “contrary to [its] precedent.” Id. The court concluded that it was not clear that Lone Star or
`the Supreme Court’s decision in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S.
`118 (2014), required it to alter its precedent that exclusionary rights were a touchstone for Article
`III standing. Id. Equally importantly, Plaintiffs have never alleged or adduced any evidence that
`
`4 Nor could they. “It is well established that the exclusive rights conferred by a United States patent do
`not take effect until the patent formally issues.” JAT Wheels, Inc. v. DB Motoring Grp., Inc., No. CV 14-
`5097-GW(AGRX), 2016 WL 9453798, at *2 (C.D. Cal. Feb. 11, 2016). In other words, “[p]atent rights
`are created only upon the formal issuance of the patent.” GAF Bldg. Materials Corp. v. Elk Corp. of
`Dallas, 90 F.3d 479, 483 (Fed. Cir. 1996). The earliest of the remining asserted patents in this case – the
`114 patent – issued on July 9, 2019.
`
`

`

`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 7 of 28 PageID #: 17952
`
`The Honorable Christopher J. Burke
`February 25, 2024
`Page 7
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`MES suffered any harm other than to the exclusionary rights it held at one time to the 147 patent.
`So, even if the legal argument didn’t stray beyond Federal Circuit law, it would have no factual
`basis. Accordingly, MES must be dismissed as a plaintiff immediately.
`
`Defendants contend that the Court should dismiss MES as a plaintiff immediately and prior
`to commencement of trial. Having been apprised of the constitutional defect in MES’s inclusion
`in this case, the Court is required to dismiss MES. See Fed. R. Civ. P. 12(h)(3). There is no basis
`for the Court to conduct a trial that includes (non-existent) claims over which it lacks jurisdiction.
`To the extent that Plaintiffs suggest there is no harm in moving forward with MES and resolving
`the issue later, they have the issue exactly backwards. There is no legal basis for moving forward
`with MES now and allowing it to participate in trial. The unknown effects of doing so can only be
`negative. This situation was created by Plaintiffs’ decision to resolve its claims against prior
`defendants and narrow the scope of its case. Nonetheless, Plaintiffs have identified no justification
`for moving forward with MES in the trial, and no sound reason why the issue cannot be quickly
`rectified by dismissing MES from the case.
`
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`
`
`Respectfully submitted,
`
`/s/ Kenneth L. Dorsney
`
`Kenneth L. Dorsney (#3726)
`
`
`
`cc: All counsel of record (via CM/ECF and electronic mail)
`
`

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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 8 of 28 PageID #: 17953
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`EXHIBIT A
`EXHIBIT A
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`a
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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 9 of 28 PageID #: 17954
`
`Kenneth L. Dorsney
`302.888.6855
`kdorsney@morrisjames.com
`
`
`
`February 23, 2024
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`Midwest Energy Emissions Corp., et. al v. Arthur J. Gallagher & Co., et al.,
`C.A. No. 19-1334-CJB
`
`
`
`
`
`
`
`
`VIA ELECTRONIC MAIL
`Jim Lennon
`Devlin Law Firm LLC
`1526 Gilpin Ave.
`Wilmington, DE 19806
`
`Re:
`
`
`Dear Jim,
`
`
`We write to raise an issue with Plaintiff MES Inc.’s constitutional standing to continue as
`a plaintiff in this case.
`
`Plaintiff MES Inc. lacks constitutional standing and must be dismissed from this case
`immediately for lack of subject matter jurisdiction. See Fed. R. Civ. P. 12(h)(3) (“If the court
`determines at any time that it lacks subject-matter jurisdiction, the court must dismiss the
`action.”).1 To satisfy the constitutional standing requirements of Article III, a plaintiff must allege
`and show a concrete and particularized injury that is actual and imminent. That injury must be
`fairly traced to the defendant and likely redressed by a judgment in its favor. Lujan v. Defenders
`of Wildlife, 504 U.S. 555, 560-61 (1992). In a case for patent infringement, “those who possess
`exclusionary rights in a patent suffer an injury when their rights are infringed.” Lone Star Silicon
`Innovations LLC v. Nanya Tech. Corp., 925 F.3d 1225, 1234 (Fed. Cir. 2019).
`
`MES has no such exclusionary rights in the remaining asserted patents or any right to
`recover damages for alleged infringement in the time period at issue in this case. The Court
`previously declined to dismiss MES on the basis that “MES could hold exclusive rights to obtain
`patent infringement damages as to [the 147 patent] for a portion of the relevant time period.” D.I.
`279 at 16. The facts, however, have changed. MES is no longer pursuing an infringement claim
`for the 147 patent. Moreover, MES terminated any exclusive license it had to the 147 patent or
`related applications2 when the EERC assigned the patents-in-suit to ME2C. D.I. 406 ¶ 99. As the
`Court has recognized, the assignment of rights occurred on April 24, 2017. D.I. 279 at 14. As of
`that date, MES’s exclusive license was terminated. Regardless of whether it retained a right to
`recover damages for past infringement of the 147 patent, id. at 14-5, MES has not pled any
`exclusionary interest or right to recover for damages after April 24, 2017, nor is there any
`
`1 “[S]ubject matter jurisdiction cannot be waived.” Medtronic Ave, Inc. v. Boston Scientific Corp., No. 98-
`478-SLR, 2004 WL 769365, at *4 (Apr. 5, 2004). “A challenge to constitutional standing goes to the
`Court's subject matter jurisdiction and may be raised at any time.” Cirba Inc. v. VMWARE, Inc., No. CV
`19-742-LPS, 2020 WL 7489765, at *4 n.4 (D. Del. Dec. 21, 2020).
`2 As the Court recognized, MES’s relevant rights were limited to the 147 patent as it was the only asserted
`patent (at that time) that issued prior to April 24, 2017. D.I. 279 at 14 n.10.
`
`F 302.571.1750
`T 302.888.6800
`| Wilmington, DE 19801-1494
`500 Delaware Avenue, Suite 1500
`Mailing Address P.O. Box 2306 | Wilmington, DE 19899-2306 www.morrisjames.com
`
`
`
`

`

`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 10 of 28 PageID #: 17955
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`February 23, 2024
`Page 2
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`conceivable basis for it to do so. As the case stands now, Plaintiffs are no longer asserting the 147
`patent, and no right is asserted to damages prior to at least July 2019. Either of those facts standing
`alone, much less both together, indisputably demonstrate that MES is not asserting and cannot
`assert a constitutional cognizable injury.
`
`To be clear, MES’s deficiency is of a constitutional, not statutory, nature. The issue is not
`whether MES has exclusionary rights that are sufficient to satisfy the requirements of 35 U.S.C. §
`281. See Lone Star, 925 F.3d at 1235-36 (concluding that satisfying the “all substantial rights” test
`of § 281 does not go to standing or subject-matter jurisdiction). The issue is whether MES has any
`exclusionary rights at all sufficient to satisfy Article III. Id. at 1234. Indisputably, it does not.
`Accordingly, MES must be dismissed as a plaintiff immediately.
`
`Please confirm by 3:00 pm today, February 23, that Plaintiffs will act immediately to
`remove MES as a plaintiff from this case. Otherwise or if Plaintiffs have not responded by that
`time, we intend to raise the issue to the Court before close of business today.
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`cc: All Counsel of Record (via electronic mail)
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`Sincerely,
`/s/ Kenneth L. Dorsney
`Kenneth L. Dorsney (#3726)
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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 11 of 28 PageID #: 17956
`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 11 of 28 PagelD #: 17956
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`EXHIBIT B
`EXHIBIT B
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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 12 of 28 PageID #: 17957
`
`Aisha Haley
`Kenneth L. Dorsney; Justin Nemunaitis; Cortlan S. Hitch; Jim Lennon
`@IP Para; Peter Mazur; Adrienne Dellinger; Brad Caldwell; Jason Cassady; Austin Curry; Daniel Pearson; Warren
`McCarty; Richard Cochrane; midwest@caldwellcc.com; psykes@bradley.com; bcwilson@bradley.com;
`jdyess@bradley.com; jzurlo@bradley.com; kmcbride@bradley.com; amrobinson@bradley.com
`RE: Midwest v. CERT
`Saturday, February 24, 2024 21:19:30
`image001.png
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Hi Ken,
`
`I’m just a little confused as to what the dispute is here. It seems like you’re just contesting
`standing for MES, but because ME2C has standing, the Court does not need to address the
`standing of any other plaintiffs in this case. What exactly is the relief you would be seeking
`from the Court?
`
`In any event, as we’ve offered before, if you think that including MES in the case would cause
`some prejudice to Defendants or impact the trial in any meaningful way, please let us know
`what that is. We’d be happy to work with you on mitigating whatever prejudice you may be
`worried about.
`
`Best,
`Aisha
`
`From: Kenneth L. Dorsney <KDorsney@morrisjames.com>
`Sent: Saturday, February 24, 2024 18:27
`To: Justin Nemunaitis <jnemunaitis@caldwellcc.com>; Cortlan S. Hitch <CHitch@morrisjames.com>;
`Jim Lennon <jlennon@devlinlawfirm.com>
`Cc: @IP Para <MJIPPara@morrisjames.com>; Peter Mazur <PMazur@devlinlawfirm.com>; Adrienne
`Dellinger <adellinger@caldwellcc.com>; Brad Caldwell <bcaldwell@caldwellcc.com>; Jason Cassady
`<jcassady@caldwellcc.com>; Austin Curry <acurry@caldwellcc.com>; Daniel Pearson
`<dpearson@caldwellcc.com>; Warren McCarty <wmccarty@caldwellcc.com>; Aisha Haley
`<ahaley@caldwellcc.com>; Richard Cochrane <rcochrane@caldwellcc.com>;
`midwest@caldwellcc.com; psykes@bradley.com; bcwilson@bradley.com; jdyess@bradley.com;
`jzurlo@bradley.com; kmcbride@bradley.com; amrobinson@bradley.com
`Subject: Re: Midwest v. CERT
`
`Justin,
`
`You identified PTX-54, the Closing Agreement as showing the basis for MES’s constitutional
`standing. The Closing Agreement states that “the Company,” defined collectively as ME2C
`and MES, has “the option to acquire the Patent Right” and that “the Company has elected to
`exercise” that option. PTX-054 at 1. However, the Closing Agreement later provides that the
`“Assignment of Patent rights” shall be “execute[d] and deliver[ed] to ME2C.” PTX-054 at 1.
`Similarly, Plaintiffs have alleged that ME2C owns “all rights, title, and interest” in the 114 and
`
`

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`Case 1:19-cv-01334-CJB Document 694 Filed 03/04/24 Page 13 of 28 PageID #: 17958
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`517 patents. D.I. 406 ¶ 243. The assignments filed with the PTO, along with the
`accompanying Assignment agreements, show ME2C as the sole assignee. PTX-039; PTX-046.
`So, we don’t see any basis in PTX-054 for constitutional standing on the part of MES.
`
`Best,
`
`Ken
`
`Kenneth L. Dorsney | Partner
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801-1494
`Phone: 302.888.6855 | Fax: 302.571.1750
`morrisjames.com | kdorsney@morrisjames.com
`Facebook | LinkedIn | Twitter
`
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`
`From: Justin Nemunaitis <jnemunaitis@caldwellcc.com>
`Sent: Saturday, February 24, 2024 4:40:20 PM
`To: Kenneth L. Dorsney <KDorsney@morrisjames.com>; Cortlan S. Hitch
`<CHitch@morrisjames.com>; Jim Lennon <jlennon@devlinlawfirm.com>
`Cc: @IP Para <MJIPPara@morrisjames.com>; Peter Mazur <PMazur@devlinlawfirm.com>; Adrienne
`Dellinger <adellinger@caldwellcc.com>; Brad Caldwell <bcaldwell@caldwellcc.com>; Jason Cassady
`<jcassady@caldwellcc.com>; Austin Curry <acurry@caldwellcc.com>; Daniel Pearson
`<dpearson@caldwellcc.com>; Warren McCarty <wmccarty@caldwellcc.com>; Aisha Haley
`<ahaley@caldwellcc.com>; Richard Coc