Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 1 of 34 PageID #: 2213
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`KROY IP HOLDINGS, LLC,
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`Plaintiff,
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`v.
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`GROUPON, INC.,
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`Defendant.
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`Civil Action No. 17-1405-MN-CJB
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`David E. Moore, Bindu A. Palapura, and Brandon R. Harper, POTTER ANDERSON &
`CORROON, LLP, Wilmington, DE; David L. Hecht, Conor B. McDonough, and James Zak,
`HECHT PARTNERS, New York, NY, Attorneys for Plaintiff.
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`Steven J. Balick and Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE; Thomas L.
`Duston, Tiffany D. Gehrke, Ryan N. Phelan, Kwanwoo Lee, Raymond R. Ricordati III and
`Chelsea Murray, MARSHALL, GERSTEIN AND BORUN LLP, Chicago, IL, Attorneys for
`Defendant.
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`MEMORANDUM OPINION
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`December 2, 2022
`Wilmington, Delaware
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 2 of 34 PageID #: 2214
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`BURKE, United States Magistrate Judge
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`In this patent infringement action filed by Plaintiff Kroy IP Holdings, LLC (“Kroy” or
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`“Plaintiff”) against Defendant Groupon, Inc. (“Groupon” or “Defendant”), presently before the
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`Court is Defendant’s motion to dismiss, filed pursuant to Federal Rule of Civil Procedure
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`12(b)(6) (“Motion”). (D.I. 117) For the reasons that follow, the Court orders that the Motion is
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`GRANTED.
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`I.
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`BACKGROUND
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`Plaintiff filed suit against Defendant on October 6, 2017, alleging that Defendant
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`infringed United States Patent No. 6,061,660 (the “'660 patent”), which claims a method and
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`system for providing incentive programs over a computer network. (D.I. 1 at ¶¶ 9-10) More
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`specifically, the '660 patent discloses an incentive builder program with an award fulfillment
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`system that permits multiple sponsors to customize and market incentive programs through a
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`central market place using an interface. (Id.) In its original Complaint, Plaintiff asserted 13
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`“exemplary” claims of the '660 patent against Defendant: claims 1, 10, 16-21, 25, and 27-30.
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`(Id. at ¶¶ 43-44 & ex. 3) 1
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`In October 2018, Defendant timely filed two inter partes review petitions (the “IPRs”),
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`challenging 21 total claims: claims 1, 7, 10, 12, 14, 16-21, 25, 27-30, 67-69, 87, and 101 of the
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`'660 patent (the “Invalidated Claims”) with the United States Patent and Trademark Office’s
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`1
`The original '660 patent issued on May 9, 2000, with 15 claims. ('660 patent)
`The patent thereafter went through an ex parte reexamination, and a reexamination certificate
`was issued on February 6, 2015. In the reexamination, claims 1, 2, 4, 7 and 14 were determined
`to be patentable as amended, claims 3, 5, 6, 8-13 and 15 were not reexamined, and new claims
`16-115 were added. (Id.) The '660 patent is found on the docket in this case, (D.I. 1, ex. 1), and
`herein the Court will simply cite to the “'660 patent.” The non-reexamined claims are found at
`the end of the original '660 patent, while the remaining relevant claims are found in the Ex Parte
`Reexamination Certificate for the '660 patent. (Tr. at 10)
`2
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 3 of 34 PageID #: 2215
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`(“PTO”) Patent Trial and Appeal Board (“PTAB”). (IPR2019-00044, Paper 1 at 1 (P.T.A.B.
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`Oct. 10, 2018); id., Paper 10 at 1 (P.T.A.B. Jan. 3, 2019); IPR2019-00061, Paper 1 at 1 (P.T.A.B.
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`Oct. 10, 2018)) This included all 13 of the “exemplary” claims identified by Plaintiff in its
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`Complaint, plus eight additional claims of the patent. 2 In IPR2019-00044, Defendant relied on
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`U.S. Patent No. 5,816,918 (“Kelly”) as its primary reference; according to Defendant, Kelly
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`disclosed a “system deploying promotional games over a wide area network, like the internet[,]”
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`in which “players us[e] game units to interact with a ‘host’ server that provides promotional
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`games, including games that may be supplied by a plurality of sponsors.” (IPR2019-00044,
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`Paper 10 at 4, 16-17) In that same IPR, Defendant also relied on Microsoft® FrontPage
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`Unleashed (1st ed. 1996) (“Stanek”), U.S. Patent No. 5,890,175 (“Wong”), and U.S. Patent No.
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`5,905,895 (“Halter”) as secondary references. (Id. at 3-4) In IPR2019-00061, Defendant relied
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`on U.S. Patent No. 5,710,887 (“Chelliah”) as its primary reference; according to Defendant,
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`Chelliah disclosed an “electronic commerce system with an ‘Incentives Subsystem’ to create and
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`host incentives programs on behalf of sponsors (i.e., stores).” (IPR2019-00061, Paper 1 at 4, 20)
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`Defendant also relied on Halter and U.S. Patent No. 6,035,280 (“Christensen”) as secondary
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`references. (Id. at 3-4)
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`On February 6, 2019, a few months after Defendant filed its IPR petitions, Plaintiff filed
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`an Amended Complaint in this case. (D.I. 76) In the Amended Complaint, Plaintiff now
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`asserted not only the same 13 claims as it did in its original Complaint, but it also added an
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`2
`Defendant’s counsel stated that at the time Defendant filed these IPR petitions,
`the 13 claims referenced in the original Complaint were the only claims that Plaintiff had
`indicated it would assert against Defendant in this case. (Tr. at 13-14) Since the '660 patent had
`115 claims after reexamination, and since it is “not practical to pursue that many claims in the
`[PTO, Defendant]” took the 13 “exemplary” claims asserted against it in the original Complaint,
`added the eight above-referenced “additional [claims,]” and then filed the IPR petitions as to 21
`claims in total. (Id.; see also id. at 108)
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`3
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 4 of 34 PageID #: 2216
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`additional 22 newly-asserted claims: claims 12, 75-76, 87-89, 91-93, 95-97, 100-04, and 107-11.
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`(D.I. 76 at ¶¶ 49, 63-64) Because they were first raised after Defendant’s IPR filing deadline had
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`passed, nearly all of these 22 newly-asserted claims were not included in Defendant’s IPR
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`petitions.
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`In April 2019, the PTAB instituted IPR as to both IPR petitions and on all 21 challenged
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`claims of the '660 patent. (D.I. 93 at 1) And in May 2019, the parties jointly stipulated that the
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`instant case should be stayed, pending the issuance of Final Written Decisions by the PTAB in
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`both IPR proceedings. (Id.)
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`On April 16, 2020, the PTAB issued Final Written Decisions in both IPRs, determining
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`that all of the Invalidated Claims were invalid. See Groupon, Inc. v. Kroy IP Holdings, LLC,
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`IPR2019-00061, 2020 WL 1900402 (P.T.A.B. Apr. 16, 2020) (hereinafter “Groupon I” or
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`“IPR2019-00061”); Groupon, Inc. v. Kroy IP Holdings, LLC, IPR2019-00044, 2020 WL
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`1900398 (P.T.A.B. Apr. 16, 2020) (hereinafter “Groupon II” or “IPR2019-00044”). Plaintiff
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`appealed, but it did not seek to lift the stay of the instant case at that time. (D.I. 96) And on June
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`14, 2021, the United States Court of Appeals for the Federal Circuit summarily affirmed the
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`PTAB’s decisions, pursuant to Federal Circuit Rule 36 (“Rule 36”). Kroy IP Holdings, LLC v.
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`Groupon, Inc., 849 F. App’x 930 (Fed. Cir. 2021).
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`In IPR2019-00061, the PTAB and Federal Circuit invalidated all of the Invalidated
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`Claims with the exception of claims 10 and 12, on the grounds that either Chelliah anticipated
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`these claims or that Chelliah in combination with Christensen rendered the claims obvious.
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`Groupon I, 2020 WL 1900402, at *1, *25. And in IPR2019-00044, the PTAB and Federal
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`Circuit invalidated all of the Invalidated Claims as obvious in light of Kelly and one or more of
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`4
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 5 of 34 PageID #: 2217
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`the relevant secondary references (i.e., Stanek, Halter and/or Wong). Groupon II, 2020 WL
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`1900398, at *1, *27.
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` Following the Federal Circuit’s affirmance, the instant case remained stayed. Plaintiff
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`informed this Court that it was determining whether to proceed on the asserted claims that had
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`not been at issue in the IPR (the “Additional Claims”). (D.I. 99) After Plaintiff obtained new
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`outside counsel in the case, (D.I. 101), the parties asked this Court for additional time to address
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`the case’s status, (D.I. 102). In November 2021, Plaintiff informed Defendant that it intended to
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`pursue the Additional Claims; both sides agreed that discovery should remain stayed, pending a
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`decision on whether Plaintiff was collaterally estopped from litigating the Additional Claims
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`here. (D.I. 104 at 2-3)
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`In December 2021, Plaintiff next sought leave to file a Second Amended Complaint (the
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`“Operative Complaint”). (D.I. 107) United States District Judge Maryellen Noreika, to whom
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`this case is otherwise assigned, granted-in-part and denied-in-part the motion to amend on March
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`2, 2022. The Operative Complaint, which was filed on March 10, 2022, now limited the present
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`action to only 14 asserted claims: claims 91-93, 95-97, 100, 103-04, and 107-11 (the “Newly
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`Asserted Claims”). (D.I. 111 at ¶¶ 48-80) Plaintiff asserted both direct infringement (Count I)
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`and indirect infringement (Count II) of the Newly Asserted Claims. (Id.)
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`Defendant then filed the instant Motion, seeking dismissal of the Operative Complaint,
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`on April 7, 2022. (D.I. 117) On April 12, 2022, the parties consented to the Court’s jurisdiction
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`to conduct all proceedings on and enter a final order on the Motion. (D.I. 119) Briefing on the
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`Motion was completed on April 28, 2022, (D.I. 121), and the Court heard oral argument on the
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`Motion on October 12, 2022.
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`5
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 6 of 34 PageID #: 2218
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`II.
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`LEGAL STANDARD
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`Pursuant to Rule 12(b)(6), a party may move to dismiss the plaintiff’s complaint based
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`upon the failure to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). The
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`sufficiency of pleadings for non-fraud cases is governed by Federal Rule of Civil Procedure 8,
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`which requires “a short and plain statement of the claim showing that the pleader is entitled to
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`relief[.]” Fed. R. Civ. P. 8(a)(2).
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`In order to survive a motion to dismiss pursuant to Rule 12(b)(6), “a complaint must
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`contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its
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`face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal quotation marks and citation
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`omitted). In assessing such a motion, the court first separates the factual and legal elements of a
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`claim, accepting “all of the complaint’s well-pleaded facts as true, but [disregarding] any legal
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`conclusions.” Fowler v. UPMC Shadyside, 578 F.3d 203, 210-11 (3d Cir. 2009). Second, the
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`court determines “whether the facts alleged in the complaint are sufficient to show that the
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`plaintiff has a ‘plausible claim for relief.’” Id. at 211 (quoting Ashcroft, 556 U.S. at 679).
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`A Rule 12(b)(6) movant may also challenge a pleading by invoking an affirmative
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`defense, as Defendant does here. (Tr. at 16) 3 The Court may dismiss a claim pursuant to Rule
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`12(b)(6) in light of an affirmative defense, but only where the well-pleaded factual allegations in
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`the complaint (along with the other materials that the Court may properly consider), construed in
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`the light most favorable to the plaintiff, clearly suffice to establish the defense. See Jones v.
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`3
`Collateral estoppel is an affirmative defense. United Therapeutics Corp. v.
`Liquidia Techs., Inc., Civil Action No. 20-755-RGA, 2022 WL 1503923, at *1 (D. Del. May 12,
`2022). This defense can be adjudicated at the motion to dismiss stage. M & M Stone Co. v.
`Pennsylvania, 388 F. App’x 156, 162 (3d Cir. 2010).
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`6
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 7 of 34 PageID #: 2219
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`Bock, 549 U.S. 199, 215 (2007); Wilson Wolf Mfg. Corp. v. Sarepta Therapeutics, Inc., Civil
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`Action No. 19-2316, 2020 WL 7771039, at *2 n.1 (D. Del. Dec. 30, 2020). 4
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`III. DISCUSSION
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`Defendant’s primary basis for dismissal of the Operative Complaint is its assertion that
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`Plaintiff is collaterally estopped from alleging infringement of the Newly Asserted Claims. (D.I.
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`118 at 6-21) 5 In addressing this issue, the Court will first discuss the law relating to collateral
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`estoppel in the patent context. Thereafter, it will address the parties’ arguments on the merits,
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`explaining why Defendant’s Motion in this regard is well taken.
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`A.
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`Collateral Estoppel
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`The doctrine of collateral estoppel, also referred to as “issue preclusion,” serves to
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`“‘preclude parties from contesting matters that they have had a full and fair opportunity to
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`litigate,’ which ‘protects their adversaries from the expense and vexation attending multiple
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`lawsuits, conserves judicial resources, and fosters reliance on judicial action by minimizing the
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`possibility of inconsistent decisions.’” Voter Verified, Inc. v. Election Sys. & Software LLC, 887
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`4
`Defendant requested that the Court take judicial notice of the PTAB’s Final
`Written Decisions and the Federal Circuit’s order affirming those decisions, (D.I. 118 at 4), and
`Plaintiff did not object. Herein, the Court will do so. See Princeton Digital Image Corp. v.
`Konami Digital Ent. Inc., Civil Action No. 12-1461-LPS-CJB, 2017 WL 239326, at *3 n.7 (D.
`Del. Jan. 19, 2017).
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`Defendant also sought dismissal of the Operative Complaint, in whole or in part,
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`on two other bases: (1) that the Newly Asserted Claims lack an inventive concept and are patent
`ineligible under 35 U.S.C. § 101 (“Section 101”), (D.I. 118 at 22); and (2) that Count II of the
`complaint, via which Plaintiff asserts indirect infringement, fails to allege a direct infringer and
`should therefore be dismissed. (Id. at 23-24) Below, the Court will explain why it concludes
`that dismissal of the Operative Complaint is warranted due to Defendant’s affirmative defense of
`collateral estoppel. In light of this, the Court need not and will not address the other two issues
`raised by Defendant. (That said, the Court notes for the record that in its answering brief,
`Plaintiff had agreed to dismiss Count II with prejudice.). (D.I. 120 at 8)
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` 5
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`7
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 8 of 34 PageID #: 2220
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`F.3d 1376, 1382 (Fed. Cir. 2018) (quoting Mont. v. United States, 440 U.S. 147, 153-54 (1979)).
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`When assessing the doctrine in a patent case, a district court must apply regional circuit law to
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`the general procedural question of whether collateral estoppel applies, while applying Federal
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`Circuit law to questions “involving substantive issues of patent law, issues of [collateral
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`estoppel] that implicate substantive patent law issues, or issues of [collateral estoppel] that
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`implicate the scope of [the Federal Circuit’s] own previous decisions.” See Soverain Software
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`LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1314 (Fed. Cir. 2015). The
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`United States Court of Appeals for the Third Circuit has identified four standard requirements
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`that must be met in order for the doctrine of collateral estoppel to apply: “(1) the identical issue
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`was previously adjudicated; (2) the issue was actually litigated; (3) the previous determination
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`was necessary to the decision; and (4) the party being precluded from relitigating the issue was
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`fully represented in the prior action.” Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458
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`F.3d 244, 249 (3d Cir. 2006) (internal quotation marks and citation omitted).
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`The Federal Circuit has held that when the PTAB issues a final judgment on the
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`invalidity of a patent claim, this will have an issue-preclusive effect on any pending or co-
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`pending district court actions involving that same patent claim (even though the district court and
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`PTAB, inter alia, require a patent challenger to meet different burdens of proof in order to
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`establish invalidity). See XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018);
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`cf. MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376-77 (Fed. Cir. 2018) (applying
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`collateral estoppel based on a PTAB decision, and stating that “[i]t is well established that
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`collateral estoppel, also known as issue preclusion, applies” when the same issue is before a
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`court and an administrative agency) (citing B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.
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`Ct. 1293, 1303 (2015)). The Federal Circuit has further held that “[c]omplete identity of claims
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`8
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 9 of 34 PageID #: 2221
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`is not required to satisfy the identity-of-issues requirement for claim preclusion.” Soverain, 778
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`F.3d at 1319; see also Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed.
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`Cir. 2013) (“Our precedent does not limit collateral estoppel to patent claims that are identical.”).
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`Rather, the inquiry in that instance hinges on the “identity of the issues that were litigated.”
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`Ohio Willow Wood Co., 735 F.3d at 1342 (emphasis in original). In other words, if “the
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`differences between the unadjudicated patent claims and adjudicated patent claims do not
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`materially alter the question of invalidity, collateral estoppel applies.” Id. (emphasis added).
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`Therefore, when one considers these two lines of authority together, it follows that: (1) if
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`the PTAB issues a final judgment invalidating a patent claim; and (2) if another claim in the
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`same patent is at issue in a district court litigation; and (3) if any differences between the two
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`claims do not materially alter the question of invalidity regarding the district court claim; then
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`(4) the patentee will be collaterally estopped from litigating the district court claim (assuming the
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`other requirements of the collateral estoppel doctrine are met). See M2M Solutions LLC, et al. v.
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`Sierra Wireless Am., Inc. et al., Civil Action No. 14-1102-RGA, D.I. 213 at 5-7 (D. Del. Mar.
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`31, 2021) (granting summary judgment on collateral estoppel grounds regarding patent claims
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`that were not materially different from claims in the same patent that had been previously
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`invalidated by the PTAB); Intellectual Ventures I LLC v. Lenovo Grp. Ltd., 370 F. Supp. 3d 251,
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`257 (D. Mass. 2019) (“PTAB decisions have a collateral-estoppel effect in district court on
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`unadjudicated claims that do not ‘materially alter the question of invalidity.’”) (citation omitted);
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`see also (Tr. at 24-26). 6
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`6
`This articulation of the law is not disputed by either side here. Plaintiff
`acknowledged at oral argument that collateral estoppel can, under certain circumstances, apply to
`bar litigation of patent claims that were not invalidated in an IPR proceeding, but which are not
`materially different from the claims that were invalidated in such a proceeding. (Tr. at 77, 82)
`Indeed, a number of district courts have granted motions to dismiss on the basis of collateral
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 10 of 34 PageID #: 2222
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`B.
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`Discussion
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`The parties’ primary dispute regarding the Motion relates to the first collateral estoppel
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`requirement: whether “the identical issue was previously adjudicated.” 7 As noted above,
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`estoppel, wherein the claims at issue were not identical to, but not materially different from,
`previously-invalidated/ineligible claims. See, e.g., NetSoc LLC v. Oath, Inc., No. 18-CV-12267
`(RA), 2020 WL 419469, at *5-8 (S.D.N.Y. Jan. 24, 2020); Arunachalam v. Exxon Mobil Corp.,
`CIVIL NO. 6:19-CV-00171-ADA, 2019 WL 10303695, at *2-4 (W.D. Tex. June 26, 2019).
`Here, the key dispute between the parties is over whether, in fact, each of the Newly Asserted
`claims is materially different from an invalidity perspective than certain Invalidated Claims.
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` 7
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`In its answering brief, Plaintiff also raised an issue relating to the third collateral
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`estoppel requirement: whether the previous determination was necessary to the decision. Here,
`Plaintiff argued that because the Federal Circuit summarily affirmed the PTAB’s Final Written
`Decisions pursuant to Rule 36, this precludes application of the collateral estoppel doctrine.
`(D.I. 120 at 4-5) More specifically, Plaintiff asserts that collateral estoppel cannot apply because
`the “Rule 36 affirmance here was silent as to which aspects of the multiple independent grounds
`relied on by the PTAB [to invalidate the Invalidated Claims] were those the Federal Circuit
`approved of or not.” (Id. at 4)
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`In response, however, Defendant explained why the fact of the Rule 36 affirmance does
`not impede its collateral estoppel argument. Defendant argued, and the Court agrees, that the
`fact of the Rule 36 affirmance is immaterial here because Plaintiff cannot show how the
`affirmance could have been premised on a ground that would not collaterally estop the assertion
`of any Newly Asserted Claim. (D.I. 121 at 4-6; see also D.I. 118; Tr. at 59-64); cf. Phil-Insul
`Corp. v. Airlite Plastics Co., 854 F.3d 1344, 1356-57 (Fed. Cir. 2017) (noting that a Rule 36
`judgment can be utilized for collateral estoppel purposes, so long as there is “no uncertainty as to
`whether the precise issue was raised and determined [by the Federal Circuit] in the prior suit”);
`A.H. ex rel. Hubbard v. Midwest Bus Sales, Inc., 823 F.3d 448, 455 (8th Cir. 2016) (noting that
`even if a state court jury’s general verdict meant that the jury’s decision of no liability could
`have been premised on one of two independent grounds, collateral estoppel applied to preclude
`the instant suit in federal court against the defendant, because either of those grounds led to a
`determination that the defendant could not be liable in the instant suit).
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`During oral argument, the Court asked Plaintiff’s counsel to point out an example of how
`the Rule 36 summary affirmance created the possibility that the Federal Circuit could have
`affirmed the PTAB’s judgment of invalidity as to an Invalidated Claim on a ground that would
`not collaterally estop Plaintiff from litigating a Newly Asserted Claim. (Tr. at 98-102)
`Plaintiff’s counsel acknowledged that he could not do so, and stated that he was “not aware” of
`this having occurred here. (Id. at 101) In light of this, the Court rejects Plaintiff’s argument that
`Defendant has failed to establish the applicability of the third collateral estoppel requirement.
`(Id. at 29 (Defendant’s counsel noting that “every conceivable ground upon which the Federal
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 11 of 34 PagelD #: 2223
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`Defendant contends that Plaintiff is collaterally estopped from raising the Newly Asserted
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`Claims because those Claimsare not materially different from the Invalidated Claimsfor
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`invalidity purposes. Below, the Court will assess each of the Newly Asserted Claims, explaining
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`why it agrees with Defendantthat Plaintiff is collaterally estopped from litigating those claims in
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`this case.
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`1.
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`Newly Asserted Claims 111 & 95
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`Newly Asserted Claim 111 is nearly identical to Invalidated Claim 14. (D-I. 118 at 7-8)
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`The PTAB foundthat claim 14 wasinvalid as: (1) anticipated by Chelliah, Groupon I, 2020 WL
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`1900402, at *15; (2) obvious over Chelliah and Christensen,id. at *22; (3) obvious over Kelly
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`and Stanek, GrouponIT, 2020 WL 1900398,at *14; and (4) obvious over Kelly and Wong,id. at
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`*21. Claims 14 and 111 are reproduced below:
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`Newly Asserted Claim 111
`Invalidated Claim 14
`A methodof incentive program generation,
`A method ofincentive program generation,
`comprising:
`comprising:
`providing a host computer connected to a
`providing a host computer connected to a
`network for hosting a sponsor having a
`network for hosting a sponsor having a
`sponsor computer connected to the network;
`sponsor computer connected to the network;
`providing an incentive program builder
`providing an incentive program builder
`application, running on the host computer:
`application, running on the host computer;
`providing a database of objects associated
`providing a database of objects associated
`with parameters of said incentive program
`with parameters of said incentive program
`builder application:
`builder application:
`providing an interface of the incentive
`providing an interface of the incentive
`program builder application for sponsor entry|program builder application for sponsor entry
`of parameters for an incentive program,
`of parameters for an incentive program,
`wherein the sponsor builds an incentive
`wherein the sponsor builds an incentive
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`
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`Circuit could have premisedits affirmance would invalidate the claims that the plaintiff is
`asserting”); see also id. at 32, 34)
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`It is not disputed that the second and fourth collateral estoppel requirements have been
`met. And so for the remainderof this opinion, the Court will focus on the parties’ arguments
`aboutthe first requirement.
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`11
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`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 12 of 34 PageID #: 2224
`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 12 of 34 PagelD #: 2224
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`Newly Asserted Claim 111
`program byinteracting with the incentive
`program builder application:
`program builder application;
`receivingfirst input from a plurality of
`receivingfirst input from a plurality of
`sponsors corresponding to the parameters for|sponsors corresponding to the parameters for
`creating a plurality of incentive programs
`creating a plurality of incentive programs
`associated with the plurality of sponsors via
`associated with the plurality of sponsors via
`the interface of the incentive program builder|the interface of the incentive program builder
`application from a plurality of sponsors;
`application from a plurality of sponsors;
`receiving second input from a consumer
`receiving second input from a consumer
`selecting an incentive program from among
`selecting an incentive program from among
`the plurality of incentive programs;
`the plurality of incentive programs;
`issuing an award to the consumer
`issuing an award to the consumer
`correspondingto the selected incentive
`correspondingto the selected incentive
`program;
`program;
`receiving a requestto validate the award from|receiving a request to validate the award; and
`a sponsor amongthe plurality of sponsors
`associated with the selected incentive
`program: and
`validating the award.
`
`Invalidated Claim 14
`
` program by interacting with the incentive
`
`
`
`validating the award.
`
`('660 patent, Reexamination Certificate, cols. 2:33-61, 10:11-36)
`
`Asfor Newly Asserted Claim 95, it is nearly identical to Invalidated Claim 87. The
`
`PTAB found claim 87 invalid as: (1) anticipated by Chelliah, Groupon J, 2020 WL 1900402,at
`
`*18; (2) obvious over Chelliah and Christensen, id. at *22; (3) obvious over Kelly and Stanek,
`
`GrouponII, 2020 WL 1900398, at *15; and (4) obvious over Kelly and Wong,id. at *25.
`
`Claims 87 and 95 are reproduced below:
`
`Newly Asserted Claim 95
`A method of incentive program generation,
`comprising:
`comprising:
`a network; a sponsor computer connected to‘|providing a host computer connected to a
`the network; a host computer connected to the|network for hosting a sponsor having a
`network, the host computer having a server:
`sponsor computer connected to the network;
`an incentive program builder application,
`providing an incentive program builder
`running on the server;
`application, running on the host computer|];
`a database of objects associated with
`providing a database of objects associated
`parameters of the incentive program builder
`with parameters of said incentive program
`application; and
`builder application;
`an interface of the incentive program builder|providing an interface of the incentive
`application for sponsor entry
`of parameters
`program builder application for sponsorent
`
`Invalidated Claim 87
`
` A system for incentive program generation,
`
`
`
`12
`
`

`

`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 13 of 34 PageID #: 2225
`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 13 of 34 PagelD #: 2225
`
`
`
`Invalidated Claim 87
`for an incentive program, wherein the sponsor
`builds an incentive program byinteracting
`with the incentive program builder
`application,
`wherein the host computer is provided by a
`host, the host computer configured to allow
`the sponsorto offer the incentive program to a
`consumer,
`wherein the host, the sponsor, and the
`consumerare different entities,
`wherein the host and the sponsorare different
`individuals or corporate entities,
`wherein the incentive program is a promotion
`of the sponsor offered to the consumer and
`facilitated by
`the host,
`wherein an interface of a website of the host
`receives consumer interaction to participate in
`the incentive program,
`wherein the consumer interaction comprises a
`consumerrequest to search for promotions
`from amonga plurality of promotions offered
`to the consumerby a plurality of sponsors.
`
`Newly Asserted Claim 95
`of parameters for an incentive program,
`wherein the sponsor builds an incentive
`program byinteracting with the incentive
`program builder application,
`wherein the host computer is provided by a
`host, the host computer configured to allow
`the sponsorto offer the incentive program to a
`consumer,
`wherein the host, the sponsor, and the
`consumerare different entities, and
`wherein the host and the sponsorare different
`individuals or corporate entities,
`wherein the incentive program is a promotion
`of the sponsor offered to the consumer and
`facilitated by
`the host; and
`receiving consumerinteraction through a
`website of the host to participate in the
`incentive program,
`wherein the receiving comprises: receiving a
`consumerrequest to search for promotions
`from among a plurality of promotions offered
`to the consumerby a plurality of sponsors.
`
`
`
`('660 patent, Reexamination Certificate, cols. 5:56-6:19, 7:4-34)
`
`Defendant argued that Newly Asserted Claims 111 and 95 are essentially “identical” to
`
`their respective Invalidated Claims, and thus, that collateral estoppel should apply. (D.I. 118 at
`
`7-8, 11-12 (emphasis omitted)) In response, Plaintiff noted that the respective claims are not
`
`literally identical, asserting that “at least one entire element differs between”the respective
`
`Invalidated and Newly Asserted Claims. (D.I. 120 at 6)® It suggested that these differences will
`
`make a difference whenassessing the first collateral estoppel requirement.
`
`In this opinion, the Court will only address the arguments that Plaintiff actually
`8
`madein its briefing regarding asserted material differences between the Invalidated Claims and
`the Newly Asserted Claims. (D.I. 120 at 5-6) As will becomeclear, those arguments were few
`in number, as they took upless than one full page of Plaintiff's answering brief. (/d.; see also
`Tr. at 5 (Plaintiff's counsel stating that Plaintiff “did not accept the implication to go claim by
`claim [in explaining why particular Newly Asserted Claims were materially different from an
`invalidity perspective from certain Invalidated Claims]”’); id. at 79-80) To the extent there are
`
`13
`
`

`

`Case 1:17-cv-01405-MN Document 127 Filed 12/02/22 Page 14 of 34 PageID #: 2226
`
`
`other differences between a particular Invalidated Claim and Newly Asserted Claim that Plaintiff
`did not identify as material in its briefing, the Court will assume those differences are not
`relevant to the collateral estoppel issues discussed herein. Plaintiff has waived any argument to
`the contrary. (Tr. at 81-82 (Plaintiff’s counsel agreeing that it must make arguments in its
`briefing if it wishes the Court to consider those arguments in resolving the Motion); id. at 85
`(same)); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. App’x 950, 954 (Fed. Cir.
`2014) (“It is well established that arguments that are not appropriately developed in a party’s
`briefing may be deemed waived.”); see also Kiger v. Mollenkopf, Civ. No. 21-409-RGA, 2021
`WL 5299581, at *2 n.2 (D. Del. Nov. 15, 2021) (deeming arguments not made in the plaintiff’s
`answering brief regarding a motion to dismiss to be waived); Freed v. St. Jude Med., Inc., 364 F.
`Supp. 3d 343, 351 n.6 (D. Del. 2019) (same).
`
`
`At times during oral argument, Plaintiff’s counsel suggested that one reason why the
`arguments on this point in its briefing were not more developed is that “there were page limits
`here.” (Tr. at 72; see also id. at 78) But pursuant to this Court’s Local Rules, Plaintiff could
`have filed an answering brief of up to 20 pages (or, to the extent that 20 pages was not sufficient,
`Plaintiff could have sought leave of the Court to permit additional pa