IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE AKER BIOMARINE ANTARCTIC AS, Plaintiff, v. OLYMPIC HOLDING AS, RIMFROST AS, EMERALD FISHERIES AS, RIMFROST USA, LLC, AVOCA INC., and BIORIGINAL FOOD & SCIENCE CORP., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) C.A No. 16-035-LPS-CJB REPLY BRIEF IN SUPPORT OF DEFENDANTS OLYMPIC HOLDING AS’, RIMFROST AS’ EMERALD FISHERIES AS’, AND AVOCA INC.’S MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION PURSUANT TO FED. R. CIV. P. 12 (B)(2) AND OLYMPIC HOLDING AS’, RIMFROST AS’, AND EMERALD FISHERIES AS’ MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM PURSUANT TO FED. R. CIV. P. 12 (B)(6) OF COUNSEL: Ronald J. Baron John T. Gallagher James F. Harrington HOFFMAN & BARON, LLP 6900 Jericho Turnpike Syosset, NY 11791 (516) 822-3550 Michael I. Chakansky HOFFMAN & BARON, LLP 6 Campus Drive Parsippany, NJ 07054 (973) 331-1700 Dated: July 26, 2016 John W. Shaw (No. 3362) Karen E. Keller (No. 4489) Nathan R. Hoeschen (No. 6232) SHAW KELLER LLP 300 Delaware Avenue, Suite 1120 Wilmington, DE 19801 (302) 298-0700 jshaw@shawkeller.com kkeller@shawkeller.com nhoeschen@shawkeller.com Attorneys for Defendants Olympic Holding AS, Rimfrost AS, Emerald Fisheries AS, and Avoca Inc. Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 1 of 15 PageID #: 778 i TABLE OF CONTENTS Page(s) I. NATURE AND STAGE OF THE PROCEEDINGS ......................................................... 1 II. ARGUMENT ...................................................................................................................... 1 A. Aker Has Not Plausibly Alleged Sufficient Facts To Subject Olympic Holding, Rimfrost AS, Emerald Fisheries or Avoca To Personal Jurisdiction In Delaware ........................................................................................ 1 1. Aker’s Allegations of Introducing Infringing Products into the U.S. Are Inconsistent with other Allegations Set Forth in Aker’s Complaint ........................................................................................ 1 2. Aker’s Agency and Alter-Ego Arguments Fail to Support the Exercise of Personal Jurisdiction Over Any of the Norwegian Entities or Avoca......................................................................................... 3 3. Personal Jurisdictional Over Olympic Holding, Rimfrost AS and Emerald Fisheries Is Not Proper Under Fed. R. Civ. P. 4(k)(2) .......... 5 B. Aker’s Indirect and Willful Infringement Claims Are Deficient and Not Supported by the Factual Allegations in the Complaint .................................. 6 1. Aker’s Complaint Fails to Plead Induced Infringement ............................. 6 2. Aker’s Contributory Infringement Claim Should Be Dismissed ................ 8 3. Aker’s Claims of Willful Infringement Are Deficient ................................ 9 III. CONCLUSION ................................................................................................................. 10 Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 2 of 15 PageID #: 779 ii TABLE OF AUTHORITIES Cases Page(s) ACE & Co. v. Balfour Beatty PLC, 148 F.Supp.2d 418 (D. Del. 2001) .............................................................................................. 4 Alloc, Inc. v. Int’l. Trade Commission, 342 F.3d 1361 (Fed. Cir. 2003)................................................................................................... 9 Applied Biosystems, Inc. v Cruachem, Ltd., 772 F. Supp. 1458 (D. Del. 1991) ........................................................................................... 3, 4 Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) .................................................................................................................... 8 Ashcroft v. Iqbal, 556 U.S. 662 (2009) .................................................................................................................... 7 Bell Atlantic Corp. v. Twombly, 550 U.S. 554 (2007) .................................................................................................................... 7 DNA Genotek, Inc. v. Spectrum DNA, C.A. No. 15-661-SLR, 2016 U.S. Dist. LEXIS 13379 (D. Del. Feb. 4, 2016) ........................... 4 DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006)................................................................................................... 6 Fowler v. UPMC Shadyside, 578 F.3d 203 (3d Cir. 2009)........................................................................................................ 7 Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010)............................................................................................... 8, 9 Gevo, Inc. v. Butamax Advanced Biofuels LLC, C.A. No. 12-1724-SLR, 2013 U.S. Dist. LEXIS 94568 (D. Del. July 8, 2013) ......................... 4 Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011).................................................... 6 Halo Electronics, Inc. v. Pulse Electronics, Inc., 2016 U.S. LEXIS 3776 (June 13, 2016) ..................................................................................... 9 i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010)..................................................................................................... 6 Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 3 of 15 PageID #: 780 iii Kolber v. Body Central Corp., 967 F.Supp.2d 1061 (D. Del. 2013) ............................................................................................ 2 Limelight Networks Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) ................................................................................................................ 7 McRo, Inc. v. Rockstar Games, Inc., C.A. No. 12-1513-LPS-CJB, 2014 U.S. Dist. LEXIS 34161 (D. Del. March 17, 2014) ......... 10 Neology, Inc. v. Kapsch Trafficcom IVHS, Inc., C.A. No. 13-2052-LPS, 2014 U.S. Dist. LEXIS 131568 (D. Del. Sept. 19, 2014) .................. 10 Pragmatus AV, LLC v. TangoMe, Inc., C.A. No. 11-1092-LPS-CJB, 2013 U.S. Dist. LEXIS 19075 (D. Del. Feb. 13, 2013) ............... 8 Pragmatus Telecome LLC v. Ford Motor Co., C.A. No. 12-92-RGA, 2012 U.S. Dist. LEXIS 93112 (D. Del. July 5, 2012) ............................ 8 Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d. 1285 (Fed. Cir. 2009).................................................................................................. 5 Telcordia Techs., Inc. v. Alcatel S.A., C.A. No. 04-874-GMS, 2005 U.S. Dist. LEXIS 10194 (D. Del. May 27, 2005) ....................... 4 Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012)................................................................................................... 6 Touchcom, Inc. v. Bereskin and Parr, 574 F.3d 1403 (Fed. Cir. 2009)................................................................................................... 5 Statutes 35 U.S.C. §271(b) ........................................................................................................................... 7 35 U.S.C. §271(c) ........................................................................................................................... 8 Rules Fed. R. Civ. P. 4(k)(2)..................................................................................................................... 5 Fed. R. Civ. P. 12(b)(6)................................................................................................................. 10 Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 4 of 15 PageID #: 781 I. NATURE AND STAGE OF THE PROCEEDINGS On January 22, 2016 Aker Biomarine Antarctic AS (“Aker”) commenced this patent infringement action against Olympic Holding AS (“Olympic Holding”), Rimfrost AS, Emerald Fisheries AS (“Emerald Fisheries”), Rimfrost USA, LLC (“Rimfrost USA”), Avoca Inc. (“Avoca”) and Bioriginal Food & Science Corp. (“Bioriginal”) alleging infringement of U.S. Patent Nos. 9,028,877 and 9,078,905 (“the patents-in-suit”) (D.I. 1). On June 2, 2016, the Court So Ordered a Stipulation filed by Aker extending its time to file its First Amended Complaint and oppose Defendant’s motions to dismiss to June 24, 2016 and extending Defendant’s time to respond to the First Amended Complaint and file Reply Briefs in support of their respective Motions to Dismiss to July 26, 2016 (D.I. 27). On June 24, 2016, Aker filed its First Amended Complaint (D.I. 29), its Opposition to Bioriginal’s Motion to Dismiss (D.I. 30) and its Opposition to the Norwegian Defendants’ Motion to Dismiss (D.I. 31). For ease of reference by the Court, Defendants have provided a redline version of Aker’s First Amended Complaint. (See Chakansky Declaration, Exhibit A.) II. ARGUMENT A. Aker Has Not Plausibly Alleged Sufficient Facts To Subject Olympic Holding, Rimfrost AS, Emerald Fisheries or Avoca To Personal Jurisdiction In Delaware Despite the filing of Aker’s First Amended Complaint, Aker still has failed to meet its burden to plead facts sufficient to show that specific or general jurisdiction exists under the Delaware long-arm statute over non-residents Olympic Holding, Rimfrost AS, Emerald Fisheries AS or Avoca. 1. Aker’s Allegations of Introducing Infringing Products into the U.S. Are Inconsistent with other Allegations Set Forth in Aker’s Complaint Apparently acknowledging the insufficiency of its original Complaint, Aker amended the Jurisdiction and Venue portion of its Complaint to make additional allegations in support of Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 5 of 15 PageID #: 782 2 personal jurisdiction. In ¶ 12 of the First Amended Complaint, Aker alleges that the Court has personal jurisdiction over Rimfrost AS because it shipped “infringing products into the U.S. to Rimfrost USA.” Similarly, in ¶ 14 of the First Amended Complaint, Aker alleges that Emerald Fisheries “intentionally places infringing product into an established distribution channel and knows, or reasonably should have foreseen, that a termination point of this channel was Delaware.” However, the characterization of “infringing product” sold or shipped by Rimfrost AS or Emerald Fisheries is inconsistent with Aker’s allegations of infringement. Aker’s own allegations acknowledge that none of the moving parties herein have imported any “infringing products” into the U.S. or Delaware. A cause of action should be dismissed when, as in this case, conclusory allegations are contradicted by further allegations in a Complaint. See, e.g., Kolber v. Body Central Corp., 967 F.Supp.2d 1061, 1067 (D. Del. 2013). Count I alleges infringement of the `877 Patent, which includes only method claims. Independent Claims 1 and 11 are both methods of producing krill oil and include the steps of treating krill to denature lipases and extracting oil from the denatured krill product. Throughout the allegations in Count I, Aker alleges that Rimfrost USA, Bioriginal, and Costco are alleged to have offered for sale the Accused Products. (D.I. 29 ¶¶ 57, 58, 59, 60 and 61.) Regarding the movants in the instant motion, Aker alleges that krill meal produced aboard the Juvel by Olympic Holding, Rimfrost AS and Emerald Fisheries, is shipped to Rimfrost USA in the U.S. by Rimfrost AS, processed in North Carolina at Avoca to extract the oil, and provided to Bioriginal, who redistributes to customers the composition for use in practicing Aker’s patented process. (D.I. 29 ¶¶ 53, 54 and 63; D.I. 31, Exs. C, H and K.) Thus, after the unsupported assertion in the jurisdiction section, the Complaint acknowledges the krill product imported to Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 6 of 15 PageID #: 783 3 and processed in North Carolina by the moving parties herein is, in fact, a raw material and not an “infringing product.” Similarly, Count II of the First Amended Complaint alleges infringement of U.S. Patent 9,078,905. Claim 1 of the `905 Patent recites, “Encapsulated krill oil comprising: a capsule containing an effective amount of krill oil, said krill oil comprising from about 3% to about 15% w/w ether phospholipids.” Again, Aker alleges that only Rimfrost USA and Bioriginal have sold the product through Costco. (D.I. 29 ¶¶ 77 and 81.) Aker again asserts that, “The krill meal produced aboard Juvel, shipped to Rimfrost USA in the U.S. by Rimfrost AS, processed at Avoca, and provided to Bioriginal, who redistributes to customers is a composition for use in practicing Aker’s patented processes, constituting a material part of the infringing products….” (D.I. 29 ¶ 82.) By Aker’s own admission, neither Olympic Holding, Rimfrost AS, Emerald Fisheries, nor Avoca sell any encapsulated krill oil into Delaware that infringes the `905 Patent. Thus, Count II also acknowledges the krill product imported to and processed in North Carolina by the moving parties herein is, in fact, a raw material and not an “infringing product.” 2. Aker’s Agency and Alter-Ego Arguments Fail to Support the Exercise of Personal Jurisdiction Over Any of the Norwegian Entities or Avoca Aker has amended the Jurisdiction and Venue portion of its First Amended Complaint (¶¶ 10-18) to allege an “agency relationship” between Rimfrost AS and Emerald Fisheries and Rimfrost USA. However, no facts are alleged to support this so-called agency relationship. For Aker to establish that personal jurisdiction is proper over Olympic Holding, Rimfrost AS, Emerald Fisheries or Avoca based upon a agency relationship, Aker must plausibly allege facts directed to the following factors: (1) the extent of overlap of officers and directors; (2) methods of financing; (3) the division of responsibility for day-to-day management; and (4) the process by which each corporation obtains its business. Applied Biosystems, Inc. v Cruachem, Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 7 of 15 PageID #: 784 4 Ltd., 772 F. Supp. 1458, 1463 (D. Del. 1991). Aker largely ignores these agency factors and, what little is alleged, runs counter to other allegations set forth in its Complaint. The conclusory assertions regarding control set forth in ¶13 (“controls the actions”) and ¶15 (“operating arm of”) added in Aker’s First Amended Complaint are insufficient to support Aker’s jurisdiction arguments. Gevo, Inc. v. Butamax Advanced Biofuels LLC, C.A. No. 12- 1724-SLR, 2013 U.S. Dist. LEXIS 94568, at *9-10 (D. Del. July 8, 2013). Also, the allegation that the Norwegian defendants “have shared the same chairman” in ¶ 16 added in the First Amended Complaint is insufficient to support the exercise of personal jurisdiction over Olympic Holding, Rimfrost AS and/or Emerald Fisheries. Telcordia Techs., Inc. v. Alcatel S.A., C.A. No. 04-874-GMS, 2005 U.S. Dist. LEXIS 10194, at *13 (D. Del. May 27, 2005). Aker also alleges that Bioriginal is the exclusive distributor of Rimfrost Krill Products (D.I. 29 ¶ 38) and argues in its brief this demonstrates Rimfrost AS has control over Bioriginal. However, partnering with another party that sells an allegedly infringing product in Delaware alone is insufficient to confer personal jurisdiction. DNA Genotek, Inc. v. Spectrum DNA, C.A. No. 15-661-SLR, 2016 U.S. Dist. LEXIS 13379, at *9 (D. Del. Feb. 4, 2016). In addition, even if the allegations regarding an agency relationship between the Norwegian entities were assumed to be true, this allegation still fails to establish any connection with the State of Delaware. As mentioned above and discussed further below, none of the Norwegian entities introduces any infringing products into Delaware. Thus, any allegation of an agency relationship between Norwegian entities, whose conduct is essentially all outside of the U.S., is irrelevant to the question of personal jurisdiction in Delaware. ACE & Co. v. Balfour Beatty PLC, 148 F. Supp. 2d 418, 425 (D. Del. 2001) (“agency theory requires not only that the Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 8 of 15 PageID #: 785 5 precise conduct shown… be attributable to the parent, but…that the jurisdictional conduct take place in Delaware”). 3. Personal Jurisdiction Over Olympic Holding, Rimfrost AS and Emerald Fisheries Is Not Proper Under Fed. R. Civ. P. 4(k)(2) Aker asserts for the first time in its Opposition Brief that, to the extent that this Court finds that the Norwegian parties, i.e. Olympic Holding, Rimfrost AS, and Emerald Fisheries, lack sufficient contacts in Delaware, each of the requirements of Rule 4(k)(2) is met. No allegations to support this contention appear in Akers’s First Amended Complaint. Aker acknowledges in its Opposition Brief that, to satisfy the requirements of personal jurisdiction under Fed. R. Civ. P. 4(k)(2), they must demonstrate: “(1) the case arises under federal law and is not pending before the court pursuant to the court’s diversity jurisdiction; (2) the foreign defendant lacks sufficient contacts with any single state to subject it to personal jurisdiction in any state; and (3) the foreign defendant has sufficient contacts with the United States as a whole to comport with constitutional notions of due process.” (D.I. 31, pg. 14.) Aker has failed to demonstrate requirements 2 and 3. In deciding whether due process permits the exercise of personal jurisdiction under Rule 4(k)(2), the Court “must consider whether ‘(1) defendant has purposefully directed its activities at residents of the forum, (2) the claims arises out of or relates to the defendant’s activities with the forum, and (3) assertion of personal jurisdiction is reasonable and fair.’” Touchcom, Inc. v. Bereskin and Parr, 574 F.3d 1403, 1416 (Fed. Cir. 2009) (citing Synthes v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d. 1285, 1297 (Fed. Cir. 2009)). Aker acknowledges that essentially all of the activities of the Norwegian defendants occur overseas. In Aker’s Opposition Brief, it asserts that the denatured krill is prepared on board the vessel Juvel which is owned by Emerald Fisheries and purportedly controlled by Rimfrost AS and Olympic Holding. Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 9 of 15 PageID #: 786 6 The denatured krill is then shipped by Rimfrost AS to Rimfrost USA in United States. (D.I. 31, p.5.) Thus, even according to Aker’s own allegations, only Rimfrost AS has any alleged connection with the United States, which consists of importing a non-infringing product, i.e., denatured krill product, into the United States. In addition, Aker alleges Rimfrost USA has its principal place of business in North Carolina (D.I. 29 ¶ 7). Thus, any alleged connection that Rimfrost AS may have with the United States through its importation of krill product or the joint venture to form Rimfrost USA, occurs in the State of North Carolina, not Delaware. Accordingly, Aker has also failed to demonstrate that Rimfrost AS lacks sufficient contacts with any single state to subject it to personal jurisdiction in any state. B. Aker’s Indirect and Willful Infringement Claims Are Deficient and Not Supported by the Factual Allegations in the Complaint 1. Aker’s Complaint Fails to Plead Induced Infringement Under 35 U.S.C. §271(b), “whoever actively induces infringement of a patent shall be liable as an infringer.” “To prove induced infringement, the patentee ‘must show direct infringement, and that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.’” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012) (quoting i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 851 (Fed. Cir. 2010)). “[I]nduced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). “[I]nducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.” DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006). Despite Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 10 of 15 PageID #: 787 7 having the opportunity to correct its deficiencies, Aker’s First Amended Complaint still fails to satisfy the minimum pleading standard. In its First Amended Complaint, Aker makes only vague and conclusory allegations concerning the intent of the alleged inducers. For example, Aker alleges, “Rimfrost AS has notice that offers for sale and sales by Rimfrost USA, Bioriginal and Costco constitute direct infringement, and specifically intends for them to directly infringe through sales of the Infringing Products.” (D.I. 29 ¶¶ 59, 78.) Similar allegations are made with respect to Avoca (¶¶ 61, 80), Olympic Holding (¶¶ 58, 77), and Emerald Fisheries (¶¶ 60, 79). However, such general allegations are far from sufficient to satisfy the pleading requirements for inducement. A plausible claim does more than merely allege entitlement to relief; it must also demonstrate the basis for that “entitlement with its facts.” Fowler v. UPMC Shadyside, 578 F.3d 203, 211 (3d Cir. 2009) (citations omitted). Thus, Plaintiff’s “obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’requires more than labels and conclusions, and a formulaic recitation of a cause of action’s elements will not do.’” Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 555 (2007) (citation omitted); accord Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.”). Accordingly, Aker has failed to satisfy the minimum pleading standard. Furthermore, as noted above, the claims being asserted in the ‘877 patent are method claims. The Supreme Court has held that method claims are not infringed under §271(b) unless all their steps are carried out by a single entity because a patent owner’s rights extend only to the claimed combination of steps. Limelight Networks Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014). Inducing someone to perform less than all of the steps of a method claim does not violate the patent owner’s rights. Id. In this case, Aker acknowledges in its complaint that no Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 11 of 15 PageID #: 788 8 single entity performs all of the steps set forth in Claims 1 or 11 of the ‘877 patent. Accordingly, Aker’s allegations of indirect infringement under §271(b) must be dismissed in connection with the ‘877 patent. 2. Aker’s Contributory Infringement Claim Should Be Dismissed To establish contributory infringement, the patent owner must demonstrate: 1) that there is direct infringement; 2) that the accused infringer had knowledge of the patent; 3) that the component has no substantial non-infringing uses; and 4) the component is a material part of the invention. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (citing 35 U.S.C. §271(c)). The patent holder must prove the defendant “knew that the combination for which [its] component was especially designed was both patented and infringing.” Id. (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964)). The allegations set forth in Aker’s First Amended Complaint are insufficient to state a claim for contributory infringement. Aker’s First Amended Complaint broadly asserts that the importation of the krill meal and its processing somehow constitute a material part of the infringing products. However, there are no factual allegations on how the krill meal is a component or material for use in a patented process, constituting a material part of the invention. See Pragmatus AV, LLC v. TangoMe, Inc., C.A. No. 11-1092-LPS-CJB, 2013 U.S. Dist. LEXIS 19075, at *44 (D. Del. Feb. 13, 2013) (Complaint lacks “detail that would flesh out the factual underpinning supporting such elements even had they been asserted.”) In addition, the broad allegation that the krill meal is not suitable for substantial non- infringing use is insufficient. See Pragmatus Telecome LLC v. Ford Motor Co., C.A. No. 12-92- RGA, 2012 U.S. Dist. LEXIS 93112, at *5 (D. Del. July 5, 2012) (“[S]ome facts would put some Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 12 of 15 PageID #: 789 9 flesh on the bones, and might, or might not, make the allegations plausible. Until such facts are pled, however, the Complaint fails to state a claim for indirect infringement.”). Aker also fails to allege knowledge of the infringement by the moving defendants. Aker must allege, in addition to the knowledge of the asserted patents, that the moving defendants knew that the use of their component in the accused combination would be infringing. Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1330 (Fed. Cir. 2010). This allegation is absent from Aker’s complaint. It merely asserts “that the imported krill meal is specially made or specially adapted for use in infringing the Asserted Patents,” but fails to state that the moving defendants knew this. See TangoMe, 2013 U.S. Dist. LEXIS 19075, at *42-43. Furthermore, as discussed above, there is no explanation on how the various steps of the method claims in the ‘877 patent are infringed by a single entity. It is settled law that a claim of indirect infringement, whether induced or contributory, must identify an underlying act of direct infringement by a third party. Alloc, Inc. v. Int’l. Trade Commission, 342 F.3d 1361, 1374 (Fed. Cir. 2003). 3. Aker’s Claims of Willful Infringement Are Deficient The Supreme Court has recently explained , “Awards of enhanced damages . . . are not to be meted out in a typical infringement case, but are instead designed as ‘punitive’ or ‘vindictive’ sanctions for egregious infringement behavior.” Halo Electronics, Inc. v. Pulse Electronics, Inc., 2016 U.S. LEXIS 3776, at *14 (June 13, 2016). Aker fails to make any such allegations. To the contrary, in the First Amended Complaint, Aker vaguely asserts “Defendants have willfully infringed…and continue to willfully infringe” and that this case is “an egregious and exceptional case of willful infringement.” (See D.I. 29 ¶¶ 40, 41, 69, 70, 88 and 89.) Such conclusory allegations do not sufficiently articulate how the moving Defendants’ actions Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 13 of 15 PageID #: 790 10 amounted to an “egregious” case of infringement of the asserted patents. Id.; see, e.g., Neology, Inc. v. Kapsch Trafficcom IVHS, Inc., C.A. No. 13-2052-LPS, 2014 U.S. Dist. LEXIS 131568, at *25-26 (D. Del. Sept. 19, 2014); and McRo, Inc. v. Rockstar Games, Inc., C.A. No. 12-1513- LPS-CJB, 2014 U.S. Dist. LEXIS 34161, at *24-27 (D. Del. March 17, 2014). III. CONCLUSION All causes of action against Olympic Holding, Rimfrost AS, Emerald Fisheries, and Avoca should therefore be dismissed with prejudice pursuant to Fed. R. Civ. P. 12(b)(2). In addition, Aker’s claims of induced, contributory and willful infringement should be dismissed with prejudice under Rule 12(b)(6). Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 14 of 15 PageID #: 791 11 OF COUNSEL: Ronald J. Baron John T. Gallagher James F. Harrington HOFFMAN & BARON, LLP 6900 Jericho Turnpike Syosset, NY 11791 (516) 822-3550 Michael I. Chakansky HOFFMAN & BARON, LLP 6 Campus Drive Parsippany, NJ 07054 (973) 331-1700 Dated: July 26, 2016 /s/ Nathan R. Hoeschen John W. Shaw (No. 3362) Karen E. Keller (No. 4489) Nathan R. Hoeschen (No. 6232) SHAW KELLER LLP 300 Delaware Avenue, Suite 1120 Wilmington, DE 19801 (302) 298-0700 jshaw@shawkeller.com kkeller@shawkeller.com nhoeschen@shawkeller.com Olympic Holding AS, Rimfrost AS, Emerald Fisheries AS, and Avoca Inc. Case 1:16-cv-00035-LPS-CJB Document 38 Filed 07/26/16 Page 15 of 15 PageID #: 792
