Ameranth, Inc. v. ChowNow, Inc.

Opinion

I 2 | FILED 3 AUG 19 2021 4 CLERK. U.S, DISTRICT COURT / SOUTHERN DISTRICT_OF CALIFORNIA 5 BY 43 DEPU 6

g UNITED STATES DISTRICT COURT 10 11 || AMERANTH, INC.,a Delaware ) Case No.: 3:20-cv-02167-BEN-BLM 12 corporation, ) «aes ) ORDER DENYING PLAINTIFF’S Plaintiff, 13 ) MOTION TO: ) ) DISMISS THE COUNTERCLAIM 15 oN INC., a Delaware ) FOR(A) FAILURE TO STATE A □□ ) CLAIM AND (B) LACK OF Defendant. ) SUBJECT MATTER | | Mao TT ) JURISDICTION AND 18 || CHO INC., a Del ) Corporation.” C-, a Delaware ) 2) REMAND TO STATE COURT 19 ) PURSUANT TO 28 U.S.C. § Counter-claimant, ) 1447(c) ) v. 21 ) [ECF No. 12, 13, 15, 19, 20, 24, 28, 29, 2 AMERANTH, INC., a Delaware ) 30] corporation, ) 23 Counter-defendant. ) 25 Plaintiff/Counter-defendant Ameranth, Inc., a Delaware corporation (“Plaintiff” o1 26 ||“Ameranth”) brings this action for breach of a patent licensing agreement agains 27 || Defendant/Counter-claimant ChowNow, Inc., a Delaware corporation (“Defendant” o1 28 ||““ChowNow”), ECF No. 1; see also ECF No. 12-1 at 6:3-4. -|-

1 Before the Court are the following Motions: Plaintiff's Motion to (1) Dismiss for (a) 2 ||Failure to State a Claim for Relief and (b) Lack of Subject Matter Jurisdiction and (2) 3 ||Remand to State Court, ECF No. 12 (the “Motions”). Defendant opposed both motions. 4 || ECF No. 19. Plaintiff replied. ECF No. 24. The Motions were submitted on the papers 5 || without oral argument pursuant to Civil Local Rule 7.1(d)(1) and Rule 78(b) of the Federal 6 || Rules of Civil Procedure. ECF No. 25. After considering the papers submitted, supporting 7 ||documentation, and applicable law, the Court DENIES both of Plaintiff's Motions. 8 ii. BACKGROUND 9 A judge in this district recently noted that this is by no means the first patent 10 ||infringement case brought by Ameranth and will undoubtedly not be the last. See, e.g., 11 ||Ameranth, Inc. v. Domino’s Pizza, Inc., No. 3:12-cv-00733-DMS-WVG, 2021 WL 12 ||409725, at *1 (S.D. Cal. Feb. 5, 2021), reconsideration denied, No. 12CV0733 DMS 13 [|(WVG), 2021 WL 1853553 (S.D. Cal. May 10, 2021) (listing forty-three (43) patent 14 ||infringement cases filed by Ameranth in the Southern District of California).! The instant 15 ||case arises from Ameranth’s ownership of several patents licensed to Defendant. See 16 || generally ECF No. 1. Defendant eventually ceased paying royalties to Plaintiff on the basis 17 ||that, inter alia, it believed it did not practice the patents covered by the underlying license 18 agreement and most of those patents had been declared invalid. 7d. Plaintiff contends that 19 ||Defendant’s failure to continue paying royalties constitutes a breach of the agreements 20 between the parties. Jd. 21 22 The Court takes judicial notice of the fact that as of the date of this order, PACER 93 ||Shows a total of 52 cases in which the plaintiff is Ameranth, Inc. FED. R. EVID. 201(b, (1)-(2) (providing that at any stage of a proceeding, courts may take judicial notice of (1. 24 facts not subject to reasonable dispute and “generally known within the trial court’: 95 territorial jurisdiction” and (2) adjudicative facts, which “can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned”); see 26 || also Asdar Group v. Pillsbury, Madison & Sutro, 99 F.3d 289, 290 n.1 (9th Cir. 1996 97 (taking judicial notice of court records); Langer v. Kiser, 495 F. Supp. 3d 904, 911 (S.D Cal. 2020) (taking judicial notice of the fact that “PACER shows a total of 1,498 cases ir 28 || which the plaintiff is named ‘Chris Langer’ throughout all courts on PACER”). ~2.

1 A. Statement of Facts” 2 Plaintiff is a San Diego-based online and mobile food ordering technology and 3 || software company that provides web and mobile data synchronization solutions as part of 4 |lits food and beverage technology systems to restaurants throughout the United States. 5 Complaint, ECF No. 1-2 (“Compl.”) at 3:6-9°; see also Motion to Dismiss and Remand, 6 || ECF No. 12-1 (“Mot.”) at 7:12-14. The United States Patent and Trademark Office 7 || (“USPTO”) issued multiple utility patents to Plaintiff, including Patent Nos. 6,384,850 (the 8 || “850 Patent”), 6,871,325 (the “325 Patent”), 6,982,733 (the “733 Patent’), 8,146,077 (the 9 1|“077 Patent”), 9,009,060 (the “060 Patent”), and 9,747,651 (the “651 Patent”) 10 || (collectively, the Licensed Patents”). Plaintiff also has other related patent applications 11 pending. Mot. at 7:14-17; see also Opposition to Motion to Dismiss and Remand, ECF 12 ||No. 19 (“Oppo.”) at 7:25-28. These patents pertain to a “synchronous communications 13 || system and method for generation of computerized menus.” Cross-Complaint, ECF No. 14 15 oo. □ 2 In its order, the Court primarily relies on facts stated in both Plaintiffs Motions as 16 || well as Defendant’s Opposition given these appear to be facts neither party disputes. The 17 || majority of the facts set forth are also taken from the operative pleadings Plaintiff seeks tc dismiss or disputes (e.g., Defendant’s notice of removal and Defendant’s counterclaims). 18 || and for purposes of ruling on Plaintiffs’ Motions, the Court assumes the truth of the 19 allegations pled and liberally construes all allegations in favor of the non-moving party. Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). 20 || Additional facts were also taken from the relevant licensing agreements and document: 91 || telied upon in the pleadings. See, e.g., Rosen v. Uber Techs., Inc., 164 F. Supp. 3d 1165. 1171 (N.D. Cal. 2016) (providing that “[f]or purposes of a Rule 12(b)(6) motion...the court 22 |! can falso] ‘augment’ the facts and inferences from the body of the complaint with ‘date 43 points gleaned from documents incorporated by reference into the complaint, matters □□ public record, and facts susceptible to judicial notice’”); Pension Ben. Guar. Corp. v. White 24 || Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993) (“Otherwise, a plaintiff with < 95 || legally deficient claim could survive a motion to dismiss simply by failing to attach < dispositive document on which it relied”). 26 Unless otherwise indicated, all page number references are to the ECF-generated 77 |}page number contained in the header of each ECF-filed document. All references to an ECF-generated filing number preceded by a case number differing from the present case 28 refer toa filing on the docket in the case number that precedes that “ECF No.” reference. -3-

1 || 1-4 (“Cross-Compl.”) at 4:11-13. Plaintiff readily admits that it licenses “its patents to 2 || dozens of companies in the hospitality industry.” Mot. at 7:17-18. 3 Defendant is also an online and mobile food ordering company that provides food 4 beverage ordering technology systems and services to restaurants throughout the 5 || United States, including in San Diego, California. Compl. at 3, | 4. Defendant provides 6 || its local restaurant customers with Software as a Service tools to help them grow their 7 || business by allowing them to process an unlimited number of customer orders through their 8 || own websites and mobile applications for a fixed monthly cost. Cross-Compl. at 3, § 2. 9 1. Initial Lawsuit 10 On May 18, 2012, Plaintiff sued ChowNow in the Southern District of California in 11 || Ameranth, Inc. v. ChaowNow, LLC, Case No. 3:12-cv-01201-JLS-NLS (“ChowNow I’), 12 || alleging three counts of infringement pertaining to the 850, 325, and 077 patents, arising 13 || out of Defendant’s alleged use of Plaintiffs three aforementioned patents. ChowNow I, 14 || ECF No. 1; see also Mot. at 7:22-23; Oppo. at 7:19-22. This case was voluntarily dismissed 15 pursuant to Rule 41{a}(1) of the Federal Rules of Civil Procedure (“FRCP”), with 16 || prejudice, due to a settlement between the parties. ChowNow J, ECF No. 8. 17 2. ChowNow I Settlement Resulting in Licensing Agreements 18 On June 22, 2012, as part of the settlement reached in ChowNow J, Plaintiff anc 19 || Defendant entered into an original licensing agreement pursuant to which Plaintiff grantec 20 ||anon-exclusive license* to Defendant to certain patents owned by Plaintiff in consideratior 21 Defendant’s agreement to (1) mark its system with Plaintiff's patents; (2) submi 22 || quarterly reports to Plaintiff of Defendant’s royalty producing activities within the Field: 23 4 “Tn a patent license, a patent owner grants to someone else permission to tread upor 24 || the patent owner’s property rights without legal consequence.” Amelia Smith Rinehart 95 || The Federal Question in Patent-License Cases, 90 Ind. L.J. 659, 660 (2015) (noting tha “Tw]hen one of the parties to a patent license decides to seek remedies from the other party 26 || for alicense harm, ... [i]n most cases, the patent owner brings her suit against the licenses 97 |\in federal court, alleging that the licensee breached the license contract and, as a result now infringes the patent” because “|t}he license agreement, by its very nature, implicate: 28 patent issues”). 4.

1 || of Use®; and (3) make royalty payments to Plaintiff.’ Mot. at 8:3-7; Oppo. at 8:9-15; see 2 Compl. at 3:13-17; Licensing Agreement, ECF No. 14-1 at 3, § 2.1.1. The licensing 3 ||agreement (the “Licensing Agreement’) pertained to the 850 Patent, 325 Patent, 733 4 || Patent, and 077 Patent. ECF No. 14. 5 This Licensing Agreement does not preclude Plaintiff from suing Defendant for 6 || patent infringement arising out of Defendant’s use of the Licensed Patents outside the Field 7 \|of Use or for Defendant’s discontinuation of royalty payments, which would cause the 8 || Agreement to terminate. Other sections of the Agreement, such as Section 2.2.1, governing 9 || Plaintiff's “Release of Claims” confirm this: 10 Ameranth hereby releases and forever discharges, and covenants not to sue ChowNow ... from any and all claims, causes of action 11 . . . known or unknown, actual or potential, suspected or 12 unsuspected,. . . which Claims have been, or could have been, made as of the Effective Date of this Agreement, or which might 13 14 The definition of “Fields of Use” is ultimately not helpful to the issues at hand, but 15 || because it is referenced throughout both parties’ briefing as well as this order, the Court notes that both Agreements define the term as pertaining to electronic food ordering: 16 17 “Fields of Use” shall mean use for: (a) hosting menus and receiving and processing orders for food and beverages from 18 . consumers, caterers, delivery services, and other third party 19 aggregators and food service providers, and (b) payment/gift card processing via a wireless handheld computing device— 20 including any of the uses in subsections ( a)-(b) by any of the following means: (i) online, including on its own and third party websites, (11) on mobile devices, including through mobile 22 websites and mobile applications, (iii) in call centers operated by 93 ChowNow or third parties, (iv) on platforms such as game consoles, cable boxes, DVD and Blu-Ray players, web enabled 24 televisions, media players, and other web enabled devices, (v) on 25 web and social media platforms such as Linked-In, Facebook, My Space, and Four Square, and (vi) on other synchronized 26 devices or platforms that may be developed in the future. 27 Licensing Agreement, ECF No. 14-1 at 2q, § 1.2; First Amended Agreement, ECF No. 14- 28 111 (“FAA”) at 2, § 1.2. -5-

i be made at any time in the future, that arise out of, or relate to, directly or indirectly, the alleged infringement, prior to the 2 Effective Date, of the Licensed Patents by any ChowNow .. . 3 product, device, article of manufacture, service or system used or to be used in the Field of Use. 4 Licensing Agreement, ECF No. 14-1 at 3, § 2.2.1 (emphasis added). Thus, the release ° only applied to infringement occurring before the Agreement within the Field of Use. See 6 id.; see also id. at 5, § 3.1 (providing that “[t]he Patent License grant set forth herein to ChowNow is limited to the Fields of Use”). 8 On December 20, 2013, Plaintiff and Defendant entered into the First Amended License Agreement (the “FAA”’), the operative contract in dispute in this lawsuit, which 10 pertains to the same four Licensed Patents, contains similar terms, and provides Defendant with non-exclusive licensing rights in exchange for Defendant’s obligation to pay certain running royalties. Mot. at 8:8-14; Oppo. at 8:16-22; Compl. at 3:21-28. Both the Licensing 13 Agreement and FAA (collectively, the “Agreements”) contain a provision, Section 5.3, stating that “[t]he Royalty Payments shall no longer be due if all claims under the Licensed Patents are finally held invalid and/or the Licensed Patents are held to be unenforceable 16 (after all appeals are exhausted) prior to the due date for such Royalty Payments.” Licensing Agreement, ECF No. 14 at 7, FAA, § 5.3; see also Compl. at 4:14-18 (quoting 18 same). Additionally, pursuant to Section 6.3 of the FAA, if one party “materially defaults 19 in the performance of any provision of this Agreement,” the non-defaulting party may 20 provide written notice to the defaulting party, and if the defaulting party fails to cure the 21 default “within sixty (60) days of provision of such notice, the Agreement will terminate.” 22 FAA at 8, § 6.3. Upon termination of the Agreements “for any reason, all rights granted 23 to ChowNow under Section 2 of this Agreement, and any responsibility of ChowNow to 24 make future payments to Ameranth beyond the date of termination, will immediately 2 ° terminate.” Jd. at 8, § 6.4. Thus, based on these provisions, if one party, like Defendant, 26 breached the Agreements and failed to cure that breach within sixty days, the Agreements terminated, “all bets were off,” and Plaintiff could sue Defendant for patent infringement.

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1 3. Federal Circuit Invalidation of Three of the Licensed Patents 2 In 2016, the Federal Circuit (1) affirmed the PTAB’s determination that “[c]laims 1- 3 || 11 of the 850 patent, claims 1-10 of the 325 patent, and claims 1-16 of the 733 patent are 4 |j all unpatentable under § 101” and (2) reversed the PTAB’s determinations that the other 5 ||claims were patentable. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1245 (Fed. Cir. 6 ||2016).° A few years later, in Ameranth, Inc. v. Domino’s Pizza, LLC, 792 F. App’x 780, 7 || 782, 788 (Fed. Cir. 2019), cert. denied, No. 19-1351, 2020 WL 5882297 (U.S. Oct. 5, 8 2020), the Federal Circuit affirmed the district court’s entry of judgment that claims 1, 6- 91/9, 11, and 13-18 of Plaintiff's 077 Patent were “patent ineligible.” Thus, the 10 || aforementioned claims have been adjudicated as unpatentable, and this Court is bound by 11 those rulings. See, e.g., Pfaffv. Wells Electronics, Inc., 5 F.3d 514, 518 (Fed. Cir. 1993) 12 (providing that “where a determination of the scope of patent claims was made in a prior 13 ||case, and the determination was essential to the judgement there on the issue of 14 j/infringement, there is collateral estoppel in a later case on the scope of such claims.”). 15 || Further, the United States Supreme Court denied Plaintiffs petition for writ of certiorari 16 October 5, 2020, declining to reverse the ruling of invalidity as to the 077 Patent. ECF 17 || No. 18 at 7:18-20. Thus, the only remaining valid patents appear to be the 060 Patent and 18 |/the 651 Patents, which were not subject to either licensing agreement. See ECF No. 14 - 19 || 14-1. However, the 060 and 651 Patents “claim priority from the applications that issued 20 the °077, °733, and/or ’850 Patents.” Cross-Compl. at 7:18-21. Because these patents 21 ||claim priority from the 077, 733, and 850 Patents, they fall under the Agreements’ based 22 || upon their plain language. However, within the past year, a court in Delaware invalidated 23 651 Patent. See, e.g., Natera, Inc. v. ArcherDX, Inc., No. CV 20-125-LPS, 2020 WL 24 6043929, at *7 (D. Del. Oct. 13, 2020) (finding that even after applying Ameranth’s We These adjudications on the merits bind this district with respect to the validity of the |i claims adjudicated in that case. Yong v. INS, 208 F.3d 1116, 1119 n. 2 (9th Cir. 2000) 97 ||C[O]nce a federal circuit court issues a decision, the district courts within that circuit are bound to follow it and have no authority to await a ruling by the Supreme Court before 28 applying the circuit court’s decision as binding authority....”). _7-

1 || proposed construction to the 651 Patent for an “information management and synchronous 2 ||communications system for use in the hospital services industry,” the claims are not 3 || patentable). As a result, only the 060 Patent appears to remain at issue.’ 4 4, ChowNow’s Post-Invalidation Default under the Agreements 3 Defendant claims that in 2018, it concluded that it finally had sufficient resources to 6 || evaluate its alleged use of Plaintiff's Licensed Patents in the ChowNow Platform, and as a 7 result of this investigation, “ceased making royalty payments to [Plaintiff] after April 30, 8 || 2018—the payment due date for the first quarter of 2018.” Oppo. at 8:24-9:7. 9 On August 31, 2018, Plaintiff served Defendant with a written Notice of Default of 10 |} ————___________ ll 7 Although the Natera decision is from another district court, and as such, is not binding precedent on this Court, the Court accepts its conclusion as to patent invalidity on 12 || the basis of the doctrine of defensive non-mutual collateral estoppel. The doctrine of non- 13 || mutual defensive collateral estoppel “precludes a plaintiff from contesting an issue it has previously litigated and lost in another case against a different defendant.” Pharm. Care 14 || Memt. Ass’nv. D.C., 522 F.3d 443, 446 (D.C. Cir. 2008) (noting that “[t]he preclusion [in 15 ||that case] is defensive because the defendant invokes the bar against the plaintiffs claims”); see also Soverain Software LLC v. Victoria’s Secret Direct Brand Memt., LLC. 16 || 778 F.3d 1311, 1313, 1320 (Fed. Cir. 2015) (holding the invalidity of the asserted claims 17 two patents-in-suit was established by issue preclusion), The Supreme Court has explicitly held that the defense of issue preclusion applies to a defendant “facing a charge 18 || of infringement of a patent that has once been declared invalid,” even though the party 19 |jasserting the defense was not a party to the action where the patent was invalidated, Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, □□□□□ 20 || (1971); see also Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1577 (Fed. Cir. 1994) 31 order to apply issue preclusion, the Federal Circuit requires the party seeking to apply preclusion to meet four conditions: “(1) identity of the issues in a prior proceeding; (2) the 22 |/issues were actually litigated; (3) the determination of the issues was necessary to the 43 ||resulting judgment; and, (4) the party defending against preclusion had a full and fan opportunity to litigate the issues.” Soverain, 778 F.3d at 1315. 24 Here, the Court concludes that (1) the validity of the 651 Patent was litigated in the 25 || Natera proceeding; (2) that issue was actually litigated; (3) the U.S. District Court for the District of Delaware made a determination on the merits; and (4) the party defending 26 || against preclusion, which in this case, would be Plaintiff, had a full and fair opportunity tc 77 || litigate the issues in that court. Thus, any attempt to dispute the invalidity of the 651 Paten is barred by issue preclusion, or more specifically, the doctrine of defensive non-mutua 28 || collateral estoppel. -8-

|| License Agreement for Failure to Pay Royalties. Compl. at 6:4-5. On September 28, 2018, 2 || Plaintiff's legal counsel sent another letter to Defendant demanding that the parties engage 3 mediation by no later than November of 2018, as required by section 9.2.2 of the FAA. 4 ||Compl. at 6:15-17. 5 On October 11, 2018, Defendant’s legal counsel sent Plaintiff a responsive letter. 6 at 6:19-20. Subsequently, on November 1, 2018, representatives for both Ameranth 7 ChowNow met but were unable to resolve their dispute. /d. at 7:9-11. 8 The 077, 733, 325, and 850 Patents expired on September 21, 2019. Cross-Comp!. 9 8:27-28. As Plaintiff notes, “[u]nder section 6.1, the license agreements remain in effect 10 until-all of the Licensed Patents expire, unless otherwise terminated earlier.”*® Mot. at 9:13- 11 Plaintiff admits that the remaining 060 Patent “is a continuation in part of the ‘077 12 ||Patent, which is one of the patents specifically identified in section 1.3 of the License 13 || Agreement,” and “[t[hus, the ‘060 patent is one of the Licensed Patents under the License 14 || Agreement” even though the other patents specifically mentioned in the FAA are no longer 15 || valid (either due to judicial declaration or expiration). Mot. at 9:25-28. Further, the 060 16 || Patent issued on April 24, 2015, before the expiration of the patents preceding it. See also 17 || Mot. at 15:25-28 (stating that “[i]t is undisputed that, as of the filing date of the Complaint, 18 ||Ameranth holds patents and patent claims that have not been found invalid or 19 unenforceable, including but not limited to all claims of the ‘060 patent.”). 20 B. Procedural History 21 On October 1, 2020, Plaintiff filed suit against Defendant in the San Diego Superiot 22 ||Court, Ameranth, Inc. v. ChowNow, Inc., San Diego Superior Court Case No. 37-2020- 23 00034944-CU-BC-CTL, alleging causes of action for (1) breach of written contract; (2) 24 declaratory relief; and (3) unjust enrichment, while also seeking damages, declaratory 25 |{relief, and costs. Compl. at 1-12. The declaratory relief sought to require Defendant to 26 7 So long as any single patent under a licensing agreement remains valid, the licensee must continue paying royalties until all covered patents have been held invalid or expire. 28 || Brulotte v. Thys Co., 379 US. 29, 29 (1964). _9-

1 || provide quarterly reports and pay Plaintiff royalty payments through October 1, □□□□□□ 2 || which Plaintiff alleges were required under the FAA. Compl. at 11:1-7. 3 On November 4, 2020, Defendant timely filed a General Denial and Statement of 4 || Affirmative Defenses in the state court action, asserting affirmative defenses pertaining to 5 ||Defendant’s non-infringement of the Licensed Patents, the invalidity of the Licensed 6 ||Patents, patent misuse, and preemption by federal law. Answer, ECF No. 1-3 (“Ans.”). 7 ||That same day, Defendant also filed a cross-complaint, seeking declaratory judgments 8 pursuant to 28 U.S.C. § 2201, pleading five causes of action for a declaration of non- 9 jiinfringement of the 077, 060, and 651 Patents as well as a declaration of invalidity of the 10 ||077 and 060 Patents. Cross-Compl. at 1-31. Also on November 4, 2020, after filing its 11 |}General Denial and Cross-Complaint in the San Diego Superior Court, Defendant filed a 12 ||Notice of Removal, asserting that the federal court “has original jurisdiction under 28 13 U.S.C. §§ 1331 and 1338,” and that removal is proper “pursuant to 28 U.S.C. §§ □□□□ □□□□ 14 1446, and 1454.” ECF No. 1 at 4:11-13. 15 On November 19, 2020, Plaintiff timely filed the instant Motions. See Mot. On 16 |) December 7, 2020, Defendant opposed. See Oppo. On December 11, 2020, Plaintiff filed 17 |lits reply. Reply, ECF No. 24 (“Reply”). 18 On December 7, 2020, Defendant filed amended counterclaims, containing the same 19 |\claims for relief as its cross-complaint filed in the superior court while adding eight 20 |/additional claims for relief for (1) declaration of invalidity as to the 651 Patent; (2) 21 \|unenforceability of the 077 Patent; (3) declaration of unenforceability of the 060 Patent; 22 ||(4) declaration of unenforceability of the 651 Patent; (5) bad faith enforcement of patents, 23 U.S.C. § 2; (6) bad faith enforcement of patents through a pattern of sham litigation, 15 24 ||U.S.C. § 2; (7) violation of California’s Unfair Competition Law, Cal. Bus. & Prof. Code This date is significant as Defendant contends that Plaintiff is waiving its right to 26 |} future potential royalties because “Ameranth is well aware that its final patent, the ‘060 97 ||Patent, is invalid, and it does not want to put the validity of this last patent at issue in federal court, where the other five patents in the family were previously invalidated.” Oppo. at 28 |] 10:11-15. -10-

I 17200; and (8) unjust enrichment. ECF No. 18. 2 On February 16, 2021, Defendant filed a Notice of Supplemental Authority in 3 || Support of Plaintiff’ Motion. ECF No. 28. On June 24, 2021, Defendant provided another 4 ||Notice Supplemental Authority. ECF No. 29. On June 25, 2021, Plaintiff filed an 5 || Objection to Defendant’s second Notice of Supplemental Authority. ECF No. 30. 7 A. Motion to Dismiss 8 1. Lack of Subject Matter Jurisdiction (FRCP 12(b)()) 9 FRCP 12(b)(1) allows a defendant to seek dismissal of a claim or lawsuit by 10 |/asserting the defense of lack of subject matter jurisdiction. FED. R. Civ. P. 12(b)(1). In 11 ||patent cases, Federal Circuit precedent governs the determination of whether the court 12 ||possesses subject matter jurisdiction. See Minnesota Mining & Mfg. Co. v. Norton Co., 13 ||929 F.2d 670, 672 (Fed. Cir. 1991); see also 3M Co. v. Avery Dennison Corp., 673 F.3d 14111372, 1377 (Fed. Cir. 2012) (“Whether an actual case or controversy exists so that a district 15 ||court may entertain an action for a declaratory judgment of non-infringement and/or 16 invalidity is governed by Federal Circuit law.”). 17 Federal courts: are courts of limited jurisdiction; however, district courts possess 18 || “original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of 19 United States.” 28 U.S.C. § 1331. Consequently, district courts are presumed to lack 20 || jurisdiction unless the Constitution or a statute expressly provides otherwise. Stock West, 21 v. Confederated Tribes, 873 F.2d 1221, 1225 (9th Cir. 1989). Article III of the United 22 || States Constitution limits the subject matter jurisdiction of federal courts to (1) legal and 23 || equitable cases “arising under this Constitution, the Laws of the United States, and Treaties 24 ||made” and (2) controversies, inter alia, to which the United States is a party, between twe 25 ||or more states, and citizens of different states. U.S. CONST. ART. II, § 2. The “case o1 26 |jcontroversy” requirement of Article III requires courts to find that a case presents a 27 ||“justiciable” controversy by determining that (1) the plaintiff has demonstrated standing 28 || ‘including ‘an injury that is concrete, particularized, and imminent rather than conjectural -l1-

1 hypothetical,’” and (2) the case is “ripe,” or in order words, “not dependent on 2 ‘contingent future events that may not occur as anticipated, or indeed may not occur at 3 |Jall.’” Trump v. New York, ---S.Ct.---, No. 20-366, 2020 WL 7408998, at *2 (U.S. Dec. 18, 4 ||2020); see also Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118, 128 n.8 (2007) (noting 5 || that standing and ripeness become the same question when a licensee seeks a declaration 6 || of invalidity). An appropriate action for declaratory relief qualifies as a case or controversy 7 within Article III. MediImmune, 549 U.S. at 118, 128. 8 As to the requirement that a case arises under a law of the United States, generally, 9 || federal subject matter jurisdiction exists due to statutory authorization resulting from the 10 || presence of a federal question, see 28 U.S.C. § 1331, or complete diversity between the 11 || parties, see 28 U.S.C. § 1332.!° Additionally, in 2011, Congress enacted the Leahy-Smith 12 || American Invents Act (the “AIA”), which amended 28 U.S.C. sections 1338 (“Section 13 || 1338”) and 1295(a)(1) as well as added section 1454 (“Section 1454”) to provide federal 14 courts “with a broader range of. . . jurisdiction over claims arising under the patent laws 15 ||even when asserted in counterclaims.” Vermont v. MPHJ Technology Instruments, LLC, 16 |) 803 F.3d 635, 643-44 (Fed. Cir. 2015). As amended, Section 1338 vests district courts 17 || with “original jurisdiction of any civil action” that (1) arises “under any Act of Congress 18 |/relating to patents, plant variety protection, copyrights and trademarks” or (2) asserts “a 19 claim of unfair competition when joined with a substantial and related claim under □□□□□□ 20 patent .. . or trademark laws.” 28 U.S.C. § 1338(a)-(b). Section 1454, in turn, provides 21 || for removal of patent cases to federal court by providing that “[a] civil action in which any 22 party asserts a claim for relief arising under any Act of Congress relating to patents .. . 23 ||may be removed to the district court of the United States for the district and division 24 ||embracing the place where the action is pending... . in accordance with section 1446,” 25 ||28 U.S.C. § 1454(a)-(b). Further, Section 1338(a) even goes so far as to prohibit states 26 || 27 ||'° | Because both parties to this case are Delaware corporations, no diversity □□ citizenship exists sufficient to create diversity jurisdiction. See 28 U.S.C. § 1332; see alsc 28 || Hertz Corp. v. Friend, 559 U.S. 77, 92-93 (2010). -12-

1 ||courts from handling patent cases by providing: “No State court shall have jurisdiction over 2 claim for relief arising under any Act of Congress relating to patents...” - 3 If a court determines at any time it lacks subject matter-jurisdiction under Article ITI 4 ||or a federal statute, it “must dismiss the action.” FED. R. Civ. P. 12(h)(3). “Dismissal for 5 of subject matter jurisdiction is appropriate if the complaint, considered in its entirety, 6 its face fails to allege facts sufficient to establish subject matter jurisdiction.” Jn re 7 Dynamic Random Access Memory (DRAM) Antitrust Litig., 546 F.3d 981, 984-85 (9th Cir. 8 2008). The party seeking to establish federal jurisdiction bears the burden of establishing 9 McNutt v. Gen. Motors Acceptance Corp. of Indiana, 298 U.S. 178, 189 (1936). 10 2. Failure to State a Claim (FRCP 12(b)(6)) 11 Under FRCP 12(b)(6), a complaint must be dismissed when a plaintiff's allegations 12 || fail to set forth a set of facts which, if true, would entitle the complainant to relief. Bell 13 Corp. v. Twombly, 550 U.S. 544, 555 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 679 14 ||(2009) (holding that a claim must be facially plausible to survive a motion to dismiss). The 15 || pleadings must raise the right to relief beyond the speculative level; a plaintiff must provide 16 “more than labels and conclusions, and a formulaic recitation of the elements of a cause of 17 || action will not do.” Twombly, 550 U.S. at 555 (citing Papasan v. Allain, 478 U.S. 265, 18 ||286 (1986)). On a motion to dismiss, a court accepts as true a plaintiffs well-pleaded 19 || factual allegations and construes all factual inferences in the light most favorable to the 20 |) plaintiff. See Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 21 1/2008). However, a court is not required to accept as true legal conclusions couched as 22 || factual allegations. Iqbal, 556 U.S. at 678. 23 In evaluating a Rule 12(b)(6) motion, review is ordinarily limited to the contents of 24 ||the complaint and material properly submitted with it. Van Buskirk v. Cable News 25 || Network, Inc., 284 F.3d 977, 980 (9th Cir. 2002); Hal Roach Studios, Inc. v. Richard Feiner 26 || & Co., Inc., 896 F.2d 1542, 1555 n.19 (9th Cir. 1990). However, under the incorporatior 27 || by reference doctrine, the court may also consider documents “whose contents are allegec 28 ||in a complaint and whose authenticity no party questions, but which are not physically -{3-

1 |j attached to the pleading” without converting a motion to dismiss to a motion for summary 2 judgment. Branch v. Tunnell, 14 F.3d 449, 454 (9th Cir. 1994), overruled on other grounds 3 || by Galbraith v. Cnty. of Santa Clara, 307 F.3d 1119, 1121 (9th Cir. 2002). The court may 4 such a document as “part of the complaint, and thus may assume that its contents are 5 ||true for purposes of a motion to dismiss under Rule 12(b)(6).” United States v. Ritchie, 6 F.3d 903, 908 (9th Cir. 2003). “Plaintiffs may plead themselves out of court by 7 ||attaching exhibits inconsistent with their claims because the court may disregard 8 || contradictory allegations.” Phillips & Stevenson, California Practice Guide: Federal Civil 9 || Procedure Before Trial § 9:212a (The Rutter Group April 2020); Johnson v. Fed. Home 10 || Loan Mortg. Corp., 793 F.3d 1005, 1007-08 (9th Cir. 2015) (noting that courts “need not 11 |) accept as true allegations contradicting documents that are referenced in the complaint”). 12 ||Courts may also consider any statements made in a pleading or motion, including 13 || concessions made in plaintiffs response to the motion to dismiss as well as in response to 14 other pleading or motion. FED. R. Crv, P. 10(c). 15 B. Motion to Remand 16 A motion to remand challenges the propriety of an action’s removal to federal court. 17 U.S.C, § 1447. A motion to remand is “the functional equivalent of a defendant’s 18 motion to dismiss for lack of subject-matter jurisdiction” under FRCP 12(b)(1). See Leite 19 Ilv. Crane Co., 749 F.3d 1117, 1122 (Oth Cir. 2014). “Like plaintiffs pleading subject-matter 20 || jurisdiction under Rule 8{a)(1), a defendant seeking to remove an action may not offer 21 ||mere legal conclusions; it must allege the underlying facts supporting each of the 22 ||requirements for removal jurisdiction.” Leite, 749 F.3d at 1122. 23 “Except as otherwise expressly provided by Act of Congress,” where a plaintiff files 24 state court a civil action over which the district courts of the United States have origina’ 25 jurisdiction, the defendant may remove that case “to the district court of the United States 26 || for the district and division embracing the place where such action is pending.” 28 U.S.C 27 1441(a). However, removing a case does not deprive another party “of his right to move 28 ||to remand the case.” 28 U.S.C. § 1448. Courts strictly construe the removal statute agains -|4-

1 ||removal jurisdiction, and the defendant always has the burden of establishing that removal 2 proper. Provincial Gov’t of Marinduque v. Placer Dome, Inc., 582 F.3d 1083, 1087 (9th 3 2009); Luther v. Countrywide Home Loans Servicing, LP, 533 F.3d 1031, 1034 (9th 4 || Cir. 2008). 5 Where a party bases removal solely on Section 1454, the district (1) must “remand 6 || all claims that are neither a basis for removal under subsection (a) nor within the original 7 supplemental jurisdiction of the district court under any Act of Congress,” and “may, 8 |}under the circumstances specified in section 1367(c), remand any claims within the 9 supplemental jurisdiction of the district court under section 1367.” 28 U.S.C. § 1454(d) 10 ||(emphasis added). District courts may decline to exercise supplemental jurisdiction over 11 ||related claims where (1) the related “claim raises a novel or complex issue of State law,” 12 ||(2) “the claim substantially predominates over the claim or claims over which the district 13 court has original jurisdiction,” (3) “the district court has dismissed all claims over which 14 has original jurisdiction,” or exceptional circumstances, there are other 15 ||compelling reasons for declining jurisdiction.” 28 U.S.C. § 1367(c). “The decision to 16 ||retain jurisdiction over state law claims is within the district court’s discretion, weighing 17 factors such as economy, convenience, fairness, and comity.” Brady v. Brown, 51 F.3d 18 816 (Oth Cir. 1995). Further, district courts do not need to “articulate why the 19 || circumstances of [the] case are exceptional” to dismiss state-law claims pursuant to 28 20 |1U.S.C. section 1367(c)(1)-(3). See San Pedro Hotel Co., Inc. v. City of L.A., 159 F.3d 470, 21 ||478-79 (9th Cir, 1998)). 23 Federal “subject matter jurisdiction in patent cases is, surprisingly, one of the 24 ||thorniest issues in all of civil procedure.” Paul R. Gugliuzza, Rising Confusion Aboui 25 || "Arising Under" Jurisdiction in Patent Cases, 69 Emory L.J.459, 461 (2019). With respect 26 ||to Plaintiff's complaint, Plaintiff could either (1) file a breach of contract claim □□□ 27 ||Defendant’s failure to meet its royalty obligations (as it did in the San Diego Superior 28 ||Court) or (2) sue for patent infringement because Defendant’s breach of the licensing -15-

1 |jagreement allowed Plaintiff to terminate the Agreements and pursue infringement. See 2 ||FAA, ECF No, 14-1 at 8, §§ 6.3-6.4. In the former, there would be no federal question in 3 well-pleaded complaint,!! only in Defendant’s answer, which would raise defenses of 4 ||patent invalidity and non-infringement. However, affirmative defenses do not create 5 || federal question jurisdiction. Akiachak Native Cmty. v. United States DOI, 827 F.3d 100, 6 || 107 (D.C. Cir. 2016). In the latter, federal question appears in the well-pleaded complaint 7 \junder 28 U.S.C. § 1338, which grants federal jurisdiction over “any civil action relating to 8 |/patents.” In this case, however, Defendant did not just plead invalidity and non- 9 ||infringement as an affirmative defense, it also filed counterclaims, which the Court 10 || analyzes asifthey were their own complaint. See FED. R. CIv. P. 8. In those counterclaims, 11 Defendant seeks to invalidate the Licensed Patents, which raises a federal question under 13 In its Motions, Plaintiff asks the Court to dismiss Defendant’s counterclaims seeking 14 |\declaratory judgments of patent non-infringement and invalidity pursuant to FRCP 15 |} 12(b)(1) and 12(b)(6) on the grounds that they fail to state a claim for relief. Mot. at 2:7- 16 1/18. Plaintiff asks the Court to (1) dismiss Defendant’s counterclaims for failure to state a 17 claim for relief because Defendant cannot infringe patents that it has a license to use, so it 18 not plausible that Defendant could infringe on the Licensed Patents; (2) dismiss 19 || Defendant’s counterclaims for lack of subject matter jurisdiction because the counterclaims 20 ||seek a declaration of patent non-infringement (claims for relief 1 through 3) and patent 21 |\invalidity (claims for relief 4 through 6), but Defendant lacks standing to pursue such 22 ||claims, resulting in the absence of a justiciable case or controversy; and (3) remand the 23 to the San Diego Superior Court pursuant to 28 U.S.C. § 1447(c) due to the lack □□□ 24 || federal subject matter jurisdiction. Jd. at 2:7-18. 25 Defendant opposes by arguing that infringement is not the issue in this case, rather 26 |} a7 The well-pleaded complaint rule makes the plaintiff the master of his or het complaint by allowing the plaintiff to avoid federal jurisdiction by exclusively relying on 28 |! state law. See Caterpillar, Inc. v. Williams, 482 U.S. 386, 392 (1987). -16-

1 invalidity is, and if the patents are invalid, Defendant does not owe royalties, meaning that 2 || patent law is a central issue to the resolution of Plaintiff's claims for owed royalties. See 3 || generally Oppo. at 6:2-16. Defendant also notes that its filing of Amended counterclaims 4 ||mooted Plaintiff's Motion to Dismiss. /d. at 6:24-28. Plaintiff replies by reiterating that 5 because Defendant’s counterclaims present no “forward looking controversy” due to 6 |; Plaintiff's covenant not to sue for royalties after the date it filed suit, there is no justiciable 7 \|controversy; (2) Defendant’s Amended Counterclaims should not be considered for 8 ||purposes of determining this motion to remand; (3) Plaintiff's Complaint does not raise 9 |lissues of federal law; (4) that Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) 10 || did not abrogate the Super Sack “covenant not to sue” doctrine or eliminate the Lear test; 11 Defendant’s Counterclaims do not create a basis for federal jurisdiction because in 12 |/reality, the counterclaims are affirmative defenses, and federal jurisdiction may not be 13 ||created from defenses; and (6) the Splick-It decision is distinguishable because it “did not 14 |/involve a covenant not to sue for contractual or infringement liability.” See Reply at 5-14. 15 First, the Court considers Plaintiff's Motion to Remand the Case because if the Court 16 lacks jurisdiction, it also lacks the authority to decide the motions to dismiss. See, e.g., 17 ex rel, Reuter v. Medtronic, Inc., 996 F. Supp. 2d 671, 675 n.2 (S.D. Ohio 2014) 18 || (noting that the plaintiff's “motion to remand must be resolved before the motion to 19 || dismiss, because if remand is appropriate, then the state court should decide the motion to 20 || dismiss”). However, because a motion to remand challenges the propriety of an action’s 21 ||removal to federal court, 28 U.S.C. § 1447, the frame of reference when ruling on it is the 22 ||four corners of the operative pleadings at the time of removal, see Gracier v. Edwards 23 || Dental Supply Co., 86 F. Supp. 956, 957-58 (N.D. Cal. 1949) (citing 28 U.S.C. § 1447(c); 24 || St. Paul Mercury Indemnity Co. v. Red Cab Co., 308 U.S. 283 (1939)). In this case, that 25 || frame of reference would be the original complaint and original counterclaims but not the 26 ||amended counterclaims. Although the issue is complex, the Court finds that a basis for 27 || federal question jurisdiction exists, making remand improper. 28 Next, the Court considers Plaintiff's Motion to Dismiss for Lack of Subject Matter -17-

1 || Jurisdiction. However, the Court finds that Defendant’s Amended Complaint mooted that 2 |{motion, Thus, the Court DENIES that motion as well. 3 A. Plaintiff’s Motion to Remand 4 A motion to remand may be brought due either to (1) lack of subject matter 5 jurisdiction or (2) any defect in the removal procedure. See 28 U.S.C. § 1447(c). Plaintiff 6 || does not appear to take issue with the manner in which Defendant removed the action. As 7 \\such, it appears Plaintiff's grounds for remand arise solely due to an alleged lack of subject 8 ||matter jurisdiction. Plaintiff challenges the propriety of Defendant’s removal by arguing 9 |/that (1) Plaintiff's underlying complaint does not give rise to claims making removal 10 || appropriate; (2) affirmative defenses fail to create a basis for removal as a matter of law; (3) Plaintiff's counterclaims fail to provide a basis for removal due to □□□□□□□□□□□ 12 ||covenant not to sue for future royalties, which defeats creation of the live case or 13 || controversy required for the Court to assert Article III jurisdiction. See generally Mot. 14 Defendant responds that the Court should deny Plaintiff's Motion to Remand 15 || because it properly removed this case given (1) both its non-infringement and invalidity 16 ||counterclaims (which are not mooted by Plaintiff's limited covenant not to sue) and 17 || Plaintiffs originally asserted claims arise under the federal patent laws; (2) claims arising 18 |) under the patent laws must be brought in a federal court; and (3) even if this Court found 19 || that some of Plaintiff's claims do not arise under federal patent law, it would still have 20 ||supplemental jurisdiction over those claims because Plaintiff's claims “are so related” to 21 ||Defendant’s cross-claims “that they form part of the same case or controversy.” Oppo. 22 12:16-13:2 (citing 28 U.S.C. § 1367(a)); see also Bahrampour v. Lampert, 356 F.3d 23 ||969, 978 (9th Cir. 2004) (“A state law claim is part of the same case or controversy when 24 |\it shares a common nucleus of operative fact with the federal claims and the state and 25 federal claims would normally be tried together.”) (internal quotation marks omitted). 26 Both parties to this case have filed claims seeking declaratory relief. An appropriate 27 |jaction for declaratory relief qualifies as a case or controversy within Article III. 28 || Medimmune, 549 U.S. at 128. Further, Section 1338 vests district courts with “original -18-

1 jurisdiction of any civil action” that arises “under any Act of Congress relating to patents.” 2 1128 U.S.C. § 1338(a)-(b). Section 1454 also provides federal courts “with a broader range 3 . . . jurisdiction over claims arising under the patent laws even when asserted in 4 ||counterclaims.” Vermont, 803 F.3d at 643-44. Thus, the Court finds the issue of whether 5 ||Plaintiff’s complaint raises federal question jurisdiction does not settle the question 6 || because if Defendant’s counterclaims give rise to jurisdiction, removal was still proper. 7 1. Whether Plaintiff’s Complaint Gives Rise to Federal Jurisdiction 8 Plaintiff argues that Defendant’s basis for removal was incorrect: Defendant 9 ||removed on the basis that it is necessary to an adjudication of Plaintiff's complaint for 10 || breach of the of the Agreements is a determination of patent infringement and patent 11 |/invalidity. Mot. at 13:9-12. However, Plaintiff contends that while the issue of patent 12 || validity might be relevant to whether Defendant would owe royalties in the future, “such 13 |) potential future invalidations do not affect ChowNow’s liability for royalty fees owed for 14 ||period [sic] prior to any such final adjudications of invalidity.” Jd. at 15:20-23. Thus, 15 || according to Plaintiff, “because the causes of action of Ameranth’s complaint are expressly 16 || limited to the time before October 1, 2020, and because Ameranth has covenanted not to 17 \|sue for royalties that might otherwise be owed for period [sic] of time after October |, 18 ||2020, the question of the determination of validity of the Ameranth patents is wholly 19 || irrelevant to Ameranth’s state law claims, and provides no basis for federal subject □□□□□□ 20 ||jurisdiction.” Jd. at 15:24-16:5. In sum, Plaintiff's position is that its (1) “complaint 21 expressly alleges that the parties’ rights and obligations under the license agreement are 22 ||not dependent on the issue of whether ChowNow’s product practices the elements of the 23 ||claims of Ameranth’s patents,”; (2) the Agreements base Defendant’s obligation to pay 24 ||royalties on whether its activities fall within the Fields of Use rather than on whethet 25 || Defendant practices the claimed inventions; and (3) as a result, Plaintiff's state law claim: 26 ||do not necessitate determination of federal issues of patent infringement or validity. Jd 27 || 16:26-17:7 (citing Compl. at § 8). 28 Plaintiff's first argument asserts that the Agreements base Defendant’s “obligatior -19-

1 || to pay royalties on ChowNow’s product deployments and commercial activities within the 2 fields of use, and not on whether ChowNow practices the claimed inventions.” Mot. at 3 17:2-5. Thus, Ameranth contends that “adjudication of [its] state law claims does not 4 || necessitate determination of federal issues of patent infringement or validity, and there is 5 basis to remove this action to federal court on any such ground.” Jd. at 17:5-7. 6 ||Defendant responds that Plaintiffs “strained interpretation of the Amended License 7 || Agreement it both wrote and recharacterized in its Complaint is irrelevant at this stage of 8 || the litigation because disputes over the merits of a case, particularly contract interpretation, 9 not relevant to a court’s jurisdictional determination.” Oppo. at 20:13-21:2 (citing 10 || Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301, 1310 (Fed. Cir. 2011) cholding “that 11 dispute between PTI and Tessera—as to whether the license agreement requires royalty 12 || payments to be tied to valid patent coverage—is sufficient to support declaratory judgment 13 jurisdiction,” while “leav[ing] the merits-based arguments to the district court to consider 14 remand”); see also MedImmune, 549 U.S. at 135-36 (“[E|ven if respondents were 15 || correct that the licensing agreement... precludes this suit, the consequence would be that 16 ||respondents win this case on the merits—not that the very genuine contract dispute 17 ||disappears, so that Article III jurisdiction is somehow defeated.”)). According to 18 || Defendant, under MedImmune and Powertech, federal jurisdiction is present for this case. 19 As a jurisdictional cross-check, the Court may consider the plain language of the 20 || Agreements. Where a court does not rely on the interpretation of a contract but rather looks 21 the plain language of the agreements the parties provide (in a manner similar to the 22 |treview the Supreme Court performed in Med/mmune), it may look to such language in 23 ruling on a motion to dismiss. Jd. (citing Medimmune, 549 U.S. at 121 (citing to language 24 || of a licensing agreement in a case reviewing a motion to dismiss)). Thus, the Court finds 25 proper to look to the language of the Agreements, which neither party seems to dispute. 26 The Agreements, state that “[d]uring the term of this Agreement, and subject to full 27 timely payment of all amounts due to Ameranth[,] ... Ameranth hereby grants tc 28 || ChowNow a non-exclusive, non-transferable ... worldwide license ... under the □□□□□□□□ -20-

1 || Patents within the Field of Use.” FAA at 3, § 2.1.1. In other words, Defendant only owes 2 |jroyalties for practicing Plaintiff's Licensed Patents within the Fields of Use, but if 3 ||Defendant performs activities within the Fields of Use without implicating Plaintiff's 4 Licensed Patents, Defendant would owe no royalties. This reading is bolstered by Section 5 ||5.2 of the FAA, which states that Defendant is only obligated “to pay [Plaintiff] a running 6 ||royalty . . . for the Patent License [under the Licensed Patents within the Field of Use] 7 || granted in [Section] 2.1 [discussed below] for all activities falling within the Fields of Use.” 8 FAA at 6, § 5.2. Defendant points out that “[b]y its own language, Section 5.2 is intended 9 lito be read in conjunction with Section 2.1.1, which clarifies that [Plaintiff] granted 10 [Defendant] a Patent License ‘under the Licensed Patents within the Field [sic] of □□□□□ 11 Oppo. at 18:28-19:3 (citing FAA at 6, at § 2.1.1). Thus, Defendant argues that □□□□□□□□□□□ 12 ||“own claims arise under federal patent laws” because 28 U.S.C. § 1338(a) makes clear that 13 federal district courts have original jurisdiction of “any civil action arising under any Act 14 ||of Congress relating to patents.” Jd. at 18:3-6. 15 As outlined below, the Court agrees that royalty obligations are contingent upon 16 || Defendant practicing the Licensed Patents within the designated Field of Use, which would 17 require the Court to interpret the Licensed Patents as well as whether Defendant performs 18 activities falling within the scope of their claims. A case qualifies as arising under federal 19 ||1aw where (1) federal law creates the cause of action or (2) in a “special and small category 20 |\of cases,” arising under jurisdiction still lies. Vermont, 803 F.3d at 645 (quoting Gunn v. 21 || Minton, 568 U.S. 251, 258 (2013)). As to the latter category, which applies to this case, 22 ||courts find “federal jurisdiction over a state law claim” if, after applying the Gunn test, “a 23 || federal issue ts: (1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable 24 |/of resolution in federal court without disrupting the federal-state balance approved by 25 ||Congress.” AntennaSys, Inc. v. AOYR Techs., Inc., 976 F.3d 1374, 1381 (Fed. Cir. 2020). 26 Many courts, including the Federal Circuit Court of Appeals, have applied the Gunn 27 to determine that a breach of contract claim brought in state court arises under federal 28 where the case depends on a finding the defendant infringed on the plaintiff's patents. -21-

1 || See, e.g., Jang v. Boston Sci. Corp., 767 F.3d 1334, 1336-38 (Fed. Cir. 2014) (finding, after 2 ||applying the Gunn test, that federal subject matter jurisdiction existed where “[a]lthough 3 |/this case arises from a [state law breach of contract] claim [for royalties under a patent 4 || license], rather than directly as a patent infringement claim, [plaintiff's] right to relief. . . 5 ||depends on an issue of federal patent law—whether the [products] sold by [defendants] 6 would have infringed [plaintiff's patents]”) (internal quotation marks omitted); Levi 7 Strauss & Co. v. Aqua Dynamics Sys., No. 15-cv-04718-WHO, 2016 U.S. Dist. LEXIS 8 ||46738, at *13-14 (N.D. Cal. Apr. 6, 2016) (noting that by applying the Gunn test, “courts 9 ||have repeatedly held that a state-law-based breach of contract claim arises under federal 10 || law where it depends on a finding that the defendant has infringed the plaintiffs patents”). 11 Defendant argues that this case meets all four factors of the Gunn test for the “special 12 |;and small category of cases,” but that only the first factor is in dispute. Oppo. at 18:19-22. 13 ||Defendant also contends that contrary to Plaintiff's arguments, Plaintiff's claims 14 ||‘‘necessarily raise” issues of whether Ameranth’s patents are valid, and if they are, whether 15 || Defendant’s platform infringes the Patents-in-Suit. /d. at 18:22-24. Plaintiff, on the other 16 || hand, relies on the case of Jn re Oximetrix, Inc., □□□ F.2d 637 (Fed. Cir. 1984) as support 17 || for why the Court should remand this case. Reply at 6:25-7:21. In Oximetrix, the Federal 18 Circuit denied the defendant-licensee’s petition for a writ of mandamus seeking an order 19 |/requiring the district court to vacate its order remanding a case filed by the licensor for 20 breach of contract under a licensing agreement requiring royalty payments. 748 F.2d at 21 The breach of contract action was removed to the federal court after trial but prior to 22 ||the issuance of a statement of decision; however, the district court later granted the 23 || plaintiffs motion to remand finding that federal courts do “not have ‘exclusive jurisdiction 24 patent claims’ that may arises in a state court action” under the version of Section 25 || 1338 at that time. /d. at 641-42. However, not only is Oximetrix distinguishable in that 26 defendant based its arguments for federal jurisdiction on affirmative defenses rather 27 counterclaims, but Plaintiff also fails to address the fact that this case preceded the 28 ||2011 amendments to the AIA, which expanded federal court jurisdiction over patent cases. -22-

1 || See, e.g., Vermont, 803 F.3d at 643-44 (noting that these changes “were intended to provide 2 ||federal courts ... with a broader range of jurisdiction; that is, with jurisdiction over claims 3 || arising under the patent laws even when asserted in counterclaims, rather than in an original 4 }jcomplaint”). Based on the 2011 amendments, any authority remanding a case prior to 2011 5 ||has questionable application to the case at hand. 6 More importantly, Plaintiff failed to direct the Court to authority directly criticizing 7 || Oximetrix. For example, in Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 8 F.2d 476, 479 (Fed. Cir. 1993), the Federal Circuit cited to Oximeztrix as a prior opinion 9 || denying federal jurisdiction but also noted that Oximetrix did not involve “a cause of action 10 which plaintiffs right to relief depended upon resolution of a substantial question of 11 |}patent law.” Thus, the Additive Controls court held that the district court correctly 12 determined that the plaintiffs business disparagement claim arose under federal patent law 13 || because the plaintiff's right to relief depended upon the resolution of a substantial patent 14 ||law question. This was because the allegedly disparaging statement was that the 15 || plaintiff infringed on the patent-in-suit; however, in order to prove the disparagement case, 16 || the plaintiff must provide it did not infringe the patent. Jd. at 478. Asa result, the plaintiff s 17 ||right to relief necessarily depended “upon resolution of a substantial question of patent law, 18 that proof relating to infringement is a necessary element of Alcon’s business 19 \|/disparagement claim.” /d. Similarly, in this case, whether Defendant owes Plaintiff 20 |\royalties for using Plaintiff's patents necessarily depends upon resolution of a substantial 21 ||question of patent law in that proof relating to patent validity and infringement are 22 ||necessary elements of Plaintiff's claim for breach of contract: If the Licensed Patents are 23 ||not valid, Defendant does not owe royalties after the date it provide Lear notice (describec 24 |ibelow). If the Defendant does not practice the Licensed Patents, it neither infrmges not 25 ||owes royalties. Thus, this case is inapposite from the authority relied on by Plaintiff in its 26 ||Motions to argue its complaint does not raise federal question jurisdiction.” 38 a The majority of the non-binding cases Plaintiff cites involved licensing agreement:

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1 This Court finds Plaintiff's Complaint implicates federal question jurisdiction. As 2 described below, federal jurisdiction also exists to adjudicate Defendant’s counterclaims. 3 2. Whether _Defendant’s Affirmative Defenses _and_Counterclaims 4 Provide a Basis for Federal Subject-Matter Jurisdiction 5 Plaintiff argues that Defendant’s second asserted basis for removal (e.g., 6 Defendant’s own affirmative defenses and cross-complaints) are not a “claim to relief,” 7 and as such, fail to provide a basis for removal. Mot. at 17:19-27 (citing, inter alia, 8 9 that did not require the licensee to practice the claims of the patent in order to incur royalty obligations. See, e.g., Broadband iTV, Inc. v. OpenTV, Inc., No. 17-CV-06647-SK, 2018 10 || WL 4927935, at *5, 7 (N.D. Cal. Feb. 22, 2018) (granting the plaintiff's motion to remand 11 after dismissing the defendant’s declaratory relief claims for non-infringement where the scope of the applicable license agreement was not limited to patent rights but also included 12 ||copyrights, trademarks, and trade secrets, albeit relying predominantly on law preceding 13 ||the 2011 amendments to the AJA in arriving at its holding); Qualcomm, 2017 WL 5985598. *1, 21-22 (granting the counterdefendant’s partial motion to dismiss a count of the 14 || defendants-counterclaimants’ counterclaims where “[b]ecause the royalty rates in the 15 ||SULAs are not contingent on patent invalidity or noninfringement, there is no case o1 controversy because any declaration of the Nine Additional Patents-in-Suit would not 16 conclusively resolve the dispute regarding royalties owed to Qualcomm”); □□□□□□□□□□ 17 Tech., Inc. v. Tessera, Inc., No. C 10-945 CW, 2013 WL 12324116, at *12, 19 (N.D, Cal. Apr. 15, 2013) (finding “that, as a result of the supplemental covenant [not to sue], there is 18 continuing case or controversy in this litigation” and dismissing “the case for lack 19 ||Jurisdiction” where “the licensing agreement “did not tie the royalty obligation tc coverage” of the patents); Verance Corp. v. Digimarc Corp. (Delaware), No. CIV.A. 10- 20 |/831, 2011 WL 2182119, at *1, 7 (D. Del. June 2, 2011), dismissed, 465 Fed. App’x 934 31 (Fed. Cir. 2012) (granting the defendant-licensor’s motion to dismiss pursuant to □□□□ 12(b)(1} where “the License Agreement [was] not contingent on the validity of the patent 22 |! and, thus, a declaration of invalidity or non-infringement would not obviate Verance’: 43 ||royalty obligation under its terms as a matter of federal patent law”). Thus, the aforementioned cases found jurisdiction did not exist while noting that the obligation tc 24 pay royalties did not depend on the validity of the patents. In Medimmune, on the othe 25 hand, the Supreme Court held that the case and controversy requirements had been met by a licensee’s claim for declaratory judgment as to patent invalidity and the licensing 26 agreement itself provided that royalties were not owed if the patents were declared invalid 97 ||549 U.S. at 130-31. In this case, just as in Med/mmune, the plain janguage of the Agreements indicates royalties are not owed if the Licensed Patents are invalid. See FAA 28 at 7, § 5.3; see also Compl. at 4:14-18 (quoting same). -24.

1 ||Comm’ty v. U.S. Dept. of Labor, 827 F.3d 100, 107 (D.C. Cir. 2016) (noting that 2 ||“affirmative defenses made ‘[i]n respon[se] to a pleading’ are not themselves claims for 3 relief’’)). Plaintiff elaborates that Defendant “fails to state claims for non-infringement and 4 |!lacks standing to assert such claims in light of its status as a licensee.” /d. at 17:13-14. 5 || According to Plaintiff, no justiciable controversy exists regarding patent validity because 6 ||it “has covenanted not to sue ChowNow for any royalty obligations beyond October 1, 7 ||2020, and ChowNow never complied with the ‘Lear doctrine’ by challenging the validity 8 Ameranth’s patents prior to October 1, 2020 (the only period for which Ameranth seeks 9 \lrecovery of royalties).” Jd. at 17:14-19. The Court addresses whether Defendant’s 10 |\ affirmative defenses create a basis for federal jurisdiction followed by whether Defendant’s 11 ||counterclaims provide a basis for federal jurisdiction as well. 12 a. Affirmative defenses 13 Section 1454 provides for removal of patent cases to federal court by providing that 14 civil action in which any party asserts a claim for relief arising under any Act of 15 |i Congress relating to patents.” 28 U.S.C. § 1454(a)-(b). As Plaintiff points out, the statute 16 not address whether affirmative defenses create a removable controversy. Mot. at 17 || 17:23-25. Plaintiff argues that “[i]t is well settled law that a case may not be removed to 18 || federal court on the basis of a federal defense.” Jd. at 17:25-27 (citing Caterpillar, 482 19 ||U.S. at 393). However, Defendant does not base its removal on its affirmative defenses. 20 || See ECF No. | at 4,912. Rather, Defendant pleads that it “has asserted Cross-Claims [sic] 21 || for relief and affirmative defenses arising under an Act of Congress relating to patents, and 22 ||removal .. . is authorized by at least 28 U.S.C. 3 1454, which allows patent law 23 || counterclaims, or in this case, cross-claims, to serve as a basis for removal to federal court.” 24 In other words, although Defendant references the fact that it has pled affirmative 25 || defenses, it relies only on its counterclaims as the basis for removal. Thus, the Court rejects 26 || Plaintiff’ s argument that Defendant relied on its affirmative defenses as a basis for removal 27 Plaintiff advances a similar but different argument that Plaintiff's counterclaims □□□ 28 ||non-infringement and invalidity are actually affirmative defenses, so the Court shoulc -25-

1 ||dismiss the counterclaims as redundant of Defendant’s affirmative defenses. Mot. at 2 17:22-28. Plaintiff argues that “[i]f the question of whether [Defendant]’s products 3 || practiced the claims of [Plaintiff]’s patents was relevant to the issue of [Defendant]’s claim 4 collect royalties under the License Agreement (which it is of), it would be properly 5 ||raised as an affirmative defense, not a cross-complaint.” at 19:23-18 (citing □□□□ 6 || Constr., Inc. v. Universal Plumbing, 18 Cal. App. 4th 376, 391-92 (1993) “Given... the 7 || fact that declaratory relief by means of a cross-complaint may be denied when the same 8 issue is raised by an affirmative defense, ... absent something more than the allegations in 9 amended cross-complaint in this case, such a claim may not be pursued where the 10 |}employer has not intervened in the civil suit.”).)° Plaintiff claborates that because 11 || affirmative defenses fail to provide a basis for federal jurisdiction, the Court should remand 12 ||the case. /d. at 17:22-28. Defendant does not respond to this specific argument addressing 13 || whether its counterclaims are really affirmative defenses but rather generally argues that 14 |/1ts counterclaims provide a basis for federal question jurisdiction. See generally Oppo. 15 “Patent invalidity can be a counterclaim and/or an affirmative defense to patent 16 infringement.” Deniece Design, LLC v. Braun, 953 F. Supp. 2d 765, 773 (S.D. Tex. 2013). 17 || Claims for patent invalidity qualify as compulsory counterclaims in response to a claim 18 |/arising under patent law. In re Rearden LLC, 841 F.3d 1327, 1331 (Fed. Cir. 2016). 19 ||Meanwhile, invalidity also qualifies as “an affirmative defense that ‘can preclude 20 ||enforcement of a patent against otherwise infringing conduct.’” Commil USA, LLC v. 21 || Cisco Sys., Ine., 575 U.S. 632, 644 (2015) (quoting 6A Chisum on Patents § 19.01, p. 19- 22 ||5 (2015)). Even though invalidity and non-infringement counterclaims are compulsory in 23 ||response to a complaint raising patent issues, some courts have noted the absence of 24 || “authority that allows parties to assert an affirmative counterclaim for declaratory relief. . 25 26 The case Plaintiff relies on for this proposition is a California workers’ compensation 97 that is inapposite, and also said “declaratory relief by means of a cross-complaint may [not must] be denied when the same issue is raised by an affirmative defense.” □□□□□□ 18 28 Cal. App. 4th at 391-92. -26-

1 ||. while simultaneously asserting an affirmative defense on precisely the same grounds.” 2 || L-3 Comme’ns Corp. v. Jaxon Eng’g & Maint. Inc.,69 F. Supp. 3d 1136, 1145 (D. Colo. 3 ||2014) (noting the defendant’s “counterclaim sought only declaratory relief, making it 4 essentially indistinguishable from an affirmative defense,” and therefore, because it was 5 |! duplicative from the pending affirmative defense, it was “properly dismissed”). Instead, 6 ||FRCP &(c) permits courts to treat a counterclaim as an affirmative defense where a party 7 ||has mistakenly designates a defense as a counterclaim.’ FED. R. Crv. P. 8(c)(2) (“Ifa party 8 || mistakenly designates a defense as a counterclaim, or a counterclaim as a defense, the court 9 || must, if justice requires, treat the pleading as though it were correctly designated, and may 10 |jimpose terms for doing so.”); see also Rayman v. Peoples Savings Corp., 735 F. Supp. 842, 11 |/851-53 (N.D. IIL 1990) (denying the defendant’s motion for leave to file a declaratory 12 |) judgment counterclaim in a securities case because it was really an affirmative defense cast 13 a counterclaim). 14 This Court finds it would be improper to treat Defendant’s counterclaims as 15 || affirmative defenses, and subsequently, remand to the state court for three reasons. First, 16 }| “[u]nlike an affirmative defense, a counterclaim for patent invalidity survives the dismissal 17 ||of patent infringement claims and presents a standalone issue.” Epic Games, Inc. v. 18 || Acceleration Bay LLC, No. 4:19-CV-04133-YGR, 2020 WL 1557436, at *1 (N.D. Cal. 19 1, 2020) (citing Cardinal Chem. Co. v. Mortin Int’l, Inc., 508 U.S. 83, 100-03 n.11 20 ||(1993) (“Although it is often more difficult to determine whether a patent is valid thar 21 || whether it has been infringed, .. . [a] company once charged with infringement must remair 22 ||concerned about the risk of similar charges if it develops and markets similar products ir 23 FRCP 8(a)(1) requires that for a pleading, such as a complaint or counterclaim, tc 24 || state a claim for relief, it must contain a short and plain statement of the claim showing the 35 ||pleader is entitled to relief as well as the grounds for the court’s jurisdiction. In responding to a pleading, however, the responding party must (1) “state in short and plain terms it: 26 || defenses to each claim asserted against it” and (2) “admit or deny the allegations assertec 97 \;against it by an opposing party.” FED. R. Crv. P. 8(b)(1). Thus, under FRCP 8, “affirmative defenses made ‘in response to a pleading’ are not themselves claims for relief.” Akiachak 28 || 827 F.3d at 107. -27-

1 future”)). In other words, the issue of whether Défendant practices Plaintiff's Licensed 2 ||Patents, which the Court must determine in order to decide the royalty dispute, is distinct 3 from whether those Licensed Patents are valid. Thus, even if the Court concludes that 4 Defendant does not practice the Licensed Patents, Defendant’s counterclaims seeking a 5 || declaration of invalidity would survive and require a determination by the Court despite its 6 |/resolution of the infringement issues. See Cardinal, 508 U.S. at 100-03. This is because 7 ||“[a]n unnecessary ruling on an affirmative defense is not the same as the necessary 8 |/resolution of a counterclaim for a declaratory judgment.” Cardinal, 508 U.S. at 93-94. 9 ||Second, “[t]he Supreme Court has expressed a preference for deciding issues of patent 10 || validity independent of any infringement claim in order to prevent wasteful re-litigation 11 || and provide final resolution to accused infringers.” Epic, 2020 WL 1557436, at *3 (citing 12 || Cardinal, 508 U.S. at 100-01 (noting that “the opportunity to relitigate might, as a practical 13 matter, grant monopoly privileges to the holders of invalid patents”)); see also Robert B. 14 || Orr, The Doctrine of Licensee Repudiation in Patent Law, 63 Yale L.J. 125, 125 (19533 15 ||(“The public has an interest in the adjudication of patents of questionable validity and the 16 ||law provides procedures whereby private persons may advance this interest.”). Thus. 17 ||policy reasons support the Court determining the issues at hand and avoiding □□□□□□□ 18 || litigation between the parties. 19 In Epic Games, Inc. v. Acceleration Bay LLC, the Northern District of Californie 20 |j denied a defendant’s motion to strike the plaintiffs counterclaims-in-reply while holding 21 a finding of noninfringement did not moot a counterclaim of invalidity where the 22 counterclaim “merely repeated the affirmative defense of invalidity.” 2020 WL 1557436 23 |jat *1. The Epic court held that the plaintiff's “counterclaims for patent invalidity [were 24 redundant of its second affirmative defense of patent invalidity under Federal Rule 12(f).’ 25 2020 WL 1557436, at *3. It reasoned that the plaintiff asserted no new matters that it dic 26 ||not implicitly assert through its affirmative defense and addressed the same claims in the 27 ||same patents asserted in the defendant’s infringement counterclaim. /d However, the 28 |jcourt also noted that “precisely because the issues raised by Epic Games’ counterclaims: -28-

1 ||in-reply [were] redundant of its affirmative defenses, striking the counterclaims would be 2 futile.” Jd. Thus, the Court denied the defendant’s motion to strike or reclassify the 3 || plaintiff's counterclaims-in-reply. Jd. at *4. 4 In Epic, the potential infringing party filed suit first, seeking a declaration of non- 5 ||infringement, whereas in this case, Plaintiff filed suit, and then, the potential infringing 6 |;/party (ChowNow) filed counterclaims seeking a declaratory judgment of non- 7 \jinfringement. 2020 WL 1557436, at *1. Thus, Epic is inapposite to the case at hand for 8 || several reasons, including but not limited to the fact that the Epic plaintiff originally filed 9 || suit in federal court, and the case litigated patent infringement issues as opposed to the 10 || contractual licensing issues between Ameranth and ChowNow. 2020 WL 1557436, at *1. 1] In this case, Defendant’s original Answer filed on November 4, 2020, includes a 12 || Third Affirmative Defense for Non-Infringement of Patents, which pleads that Ameranth 13 not entitled to any payment under the Agreements because ChowNow has not infringed 14 || any valid or invalid claim of any patent owned by or licensed to Plaintiff. Ans. at 3-4. Its 15 ||Fourth Affirmative Defense for Invalidity of Patents pleads that Ameranth is also not 16 |[entitled to any royalty payments under the Agreements because each of the Licensed 17 ||Patents is invalid. Jd at 3-4. That same day, Defendant also filed its original 18 || Counterclaims, which included four claims seeking a declaratory judgment of invalidity of 19 || each of the Licensed Patents pursuant to the Declaratory Judgment Act of 1934, 28 U.S.C. 20 || § 2201 (the “DJA”), along with two claims for invalidity of the two Licensed Patents that 21 || had not yet been declared invalid, also pursuant to the DJA. Cross-Compl. at 21-30. The 22 Prayer for Relief seeks a declaratory judgment that pursuant to the DJA, (1) Defendant 23 does not and has not directly or indirectly infringed the Licensed Patents, and (2) the 060 24 651 Patents are invalid for failure to comply with the one of more of the requirements 25 ||of the AIA. Cross-Compl. at 30. Thus, the final reason it would be improper to treat 26 ||Defendant’s counterclaims as affirmative defenses is that Defendant’s affirmative 27 defenses, although raising the issues of infringement and invalidity, do not seek affirmative 28 |jrelief. Defendant’s counterclaims, on the other hand, seek affirmative relief that the Court -29.

1 ||declare the remaining Licensed Patents invalid, which would both prevent Plaintiff from 2 |/(1) seeking to license the remaining patent to Defendant in the future and (2) pursuing 3 || Defendant for patent infringement as to that remaining Licensed Patent. 4 In sum, because Defendant’s counterclaims respond to different issues (Z.e., potential 5 |jinfringement liability in the future) than Defendant’s affirmative defenses, which respond 6 ||to potential royalty obligations, the Court finds those counterclaims distinct enough to 7 ||continue as separate claims rather than re-classifying them as affirmative defenses. Next, 8 ||the Court addresses whether those counterclaims provide a basis for federal jurisdiction in 9 || the fact of Plaintiffs arguments to the contrary. 10 b. Counterclaims 11 Plaintiff argues that Defendant’s counterclaims for declaratory relief as to non- 12 ||infringement of Plaintiff's patents fail to create federal question jurisdiction for three 13 j/reasons: First, because a patent license is a complete defense to infringment, Defendant’s 14 active license to each of the Licensed Patents it challenges prevents it from infringing any 15 Plaintiff's Licensed Patents, negating the need to bring a declaratory action for non- 16 |linfringement. Mot. at 18:3-10; Reply at 9:19-27. Second, Plaintiff contends that under the 17 || Agreements, which give rise to the instant dispute, “the obligation to pay royalties does □□□ 18 depend on whether ChowNow’s products practice the claims of the patents,” only whether 19 ||Defendant deploys products or conducts activities within the defined “fields of use.” Jd. at 20 ||18:11-17. Plaintiff avers that because Defendant fails to state a claim for declaratory relief 21 non-infringement given it never alleges in its counterclaims that the Agreements require 22 |\it to practice the elements of Plaintiff's claims as a condition to its obligations to pay 23 ||royalties, and even if it did, such a determination does not resolve the legal controversy-— 24 |\i.e., whether Defendant owes royalties to Plaintiff. fd. at 18:21-25. Third, Plaintiff argues 25 \\that Defendant cannot sustain its cross-complaints for declaratory relief as to invalidity 26 || because it never provided Plaintiff with Lear notice—or notice it was withholding royalty 27 || payments under the license agreement on the grounds that it had determined that the patents 28 || were invalid—before October 1, 2020 (the date Plaintiff filed suit in the Superior Court). -30-

1 || and Plaintiff has given Defendant a covenant not to sue for any period of time after October 2 2020. fd. at 6:22-24; 19:13-16. Defendant opposes by pointing out that Plaintiff does 3 ||not contest that Defendant’s counterclaims arise under patent laws but rather only 4 || challenges Defendant’s standing to bring those claims. Oppo. at 24:1-3. Defendant argues, 5 however, that the Court should deny Plaintiff's Motion to remand because (1) Defendant’s 6 || counterclaims unquestionaly present justiciable federal questions under the patent laws that 7 |{can only be heard in federal court and (2) Plaintiff’ s limited covenant not to sue Defendant 8 || for future royalties does not negate the Court’s jurisdiction. Jd. at 24:5-9. 9 The Court finds Plaintiff's first argument unpersuasive. Plaintiff is correct that a 10 || patent license qualifies as a complete defense to infringement. Monsanto Co. v. Scruggs, 11 F.3d 1328, 1334 (Fed. Cir, 2006); see also 35 U.S.C. § 271(a) (providing that 12 infringement only arises when a person “without authority makes, uses, offers to sell, or 13 any patented invention, within the United States”) (emphasis added). However, given 14 ||the Agreements clearly state that the defense to infringement only applies so long as 15 Defendant pays royalties, Defendant’s cessation of royalty payments opens it up to liability 16 |} for infringment.'° For example, in Medtronic, Inc. v. Mirowski Fam. Ventures, LLC, 571 17 191, 197 (2014), the court found federal subject matter jurisdiction over a similar 18 —_ 19 18 Both parties appear to concede that no royalties are owed before April 1, 2018. See Oppo. at 9:5-7 (““ChowNow ceased making royalty payments to Ameranth after April 30. 20 |/2018—the payment due date for the first quarter of 2018”); see also Mot. at 10:10-15 91 || (providing that Defendant owed a report of and royalty payment for the second quarter □□ 2018, covering April 1 through June 30, 2018) on July 31, 2018). Thus, it appears □□□ 22 |! parties agree that the period of disputed royalties owed pertains only to the period of Apri! 73 || 1, 2018 through October 1, 2020. See Compl. at 12:7-12. However, the Complaint alsc seeks “a further judicial declaration that ChowNow has miscalculated, under-reported, anc 24 underpaid royalties due under the First Amended License Agreements for prior periods o: 75 ||time within the last 4 years, and owes additional royalties to Ameranth for such time periods.” Compl. at 12:9-12. This means that Plaintiff's complaint, on its face, seek: 26 royalties due for the past four years. Jd. However, according to the licensing agreemen 97 |{itself, no such royalties are owed if the Licensed Patents are invalid. Jd Defendant’: Cross-Complaint “that this Court deny the relief sought by Ameranth in its Complaint anc 28 Prayer.” Cross-Compl. at 30:24. -31-

1 dispute, albeit one that did not involve a covenant not to sue. The plaintiff-licensee, 2 ||designed, made, and sold medical devices, while the defendant-licensor, owned patents 3 ||related to implantable heart stimulators. Jd. at 194. The parties entered into a license 4 || agreement similar to the Agreements in this case. /d. at 194-95. After a dispute arose, the 5 || plaintiff-licensee brought a declaratory judgment action in the Delaware District Court, 6 ||secking a declaration that its products did not infringe on the defendant’s patents, and the 7 || defendant’s patents were invalid. Jd. at 195. The Supreme Court held that (1) the federal 8 || court had jurisdiction of the dispute and (2) the plaintiff, as the licensee, did not have the 9 || burden of proof in the declaratory judgment action. /d. It reasoned that the hypothetical 10 ||threatened action of the defendant-licensor suing the plaintiff-licensee for patent 11 |/infringement “is properly characterized as an action ‘arising under an Act of Congress 12 ||relating to patents.’” Jd. at 198. “The patent licensing agreement specifie[d] that, if [the 13 || plaintiff] stop[ped] paying royalties, [the defendant could] terminate the contract and bring [4 ordinary patent infringement action.” Jd. at 197. If that occurred, “[s]uch an action 15 || would arise under federal patent law because ‘federal patent law creates the cause of 16 |{action.’” Jd. at 198. 17 Similar to Medtronic, in this case, the FAA provides that if a breaching party fails 18 || to cure a default within sixty (60) days of notice, the Agreement self-terminates, FAA at 8, 19 6.3-6-4, meaning the breaching party, Defendant, is open to liability for patent 20 infringement again. On August 31, 2018, Plaintiff provided a formal “Notice of Default 21 |}of License Agreement for Failure to Pay Royalties.” See ECF No. 12-3 at 54. The FAA 22 |\clearly states that “[1]f [a] default is not cured within sixty (60) days of provision of such 23 ||notice, . ..the Agreement shall automatically terminate at the end of that [60 day] period.” 24 || FAA at 8, { 6.3 (emphasis added). Thus, the FAA terminated sixty (60) days after the 25 || August 31, 2018 Notice of Default, or in other words, on October 30, 2018. Accordingly. 26 || while Plaintiff can sue Defendant for patent infringement from October 30, 2018 to the 27 present, Plaintiff's covenant not to sue for royalties from October 1, 2020 is meaningless. 28 |) Plaintiff had no right to royalties on that date given the FAA stated it automatically -32-

1 terminated after a failure to cure within sixty (60) days of notice. Further, it also means 2 || that royalty obligations could only run from April 1, 2018 through October 30, 2018. Thus, 3 ||the Agreements no longer provide a defense to such infringement. As in Medtronic, 4 || Defendant faces hypothetical threatened action by Plaintiff for patent infringement. 571 5 || U.S. at 197-98. This “hypothetical threatened action” seems even more likely in light of 6 || Ameranth’s pattern of litigation. Consequently, the threat of a lawsuit for patent 7 || infringement by Ameranth, sometimes referred to as a patent troll,'® gives rise to federal

8 || question jurisdiction over ChowNow’s counterclaims, which like the Medtronic plaintiff's 9 ||complaint, seek a declaratory judgment of invalidity of the Licensed Patents and non- 10 || infringement. 11 As to Plaintiff’s second argument that the Agreements do not make Defendant’s 12 royalty obligations dependent on Defendant practicing the Licensed Patents, that argument 13 likewise unpersuasive. As noted, the term “Fields of Use” references and incorporates 14 || the Licensed Patents, meaning Defendant’s obligation to pay royalties depends on whether 15 practices the Licensed Patents. More importantly, in examining the Agreements, the 16 |;—__ 17 16 A “nonpracticing entity” has been defined as “[a] person or company that acquires patents with no intent to use, further develop, produce, or market the patented invention.” 18 || Garner, Brian A., Black’s Law Dictionary, NONPRACTICING ENTITY, (11th ed. 2019). 19 || When a nonpracticing entity focuses on aggressively or opportunistically enforcing the patent against alleged infringers, it is also termed (pejoratively) a patent troll.” Id. 20 || Whether Ameranth qualifies as a “patent troll” has been raised by both the media, see, e.g. 71 || https://reformingretail.com/index.php/2020/04/23/patent-troll-ameranth-disgustingly- seeks-to-benefit-from-online-ordering-popularity-during-covid-19/ (describing □□□□□□□□□ □ 22 || extensive litigation history, dating back to 2007, and how it seeks to benefit from an 23 || increase in online ordering due to the COVID-19 pandemic), as well as in other courts. See Ameranth Inc v. Genesis Gaming Solutions Inc et al., Case No. 8:11-cv-00189-AG-RNB. 24 || Ameranth even filed a motion in limine to exclude evidence that it was a patent troll ir 25 || another case. See, e.g., id. at ECF No. 11 (Motion in Limine No. 11 to Exclude Evidence and Argument (1). that Ameranth is a “Patent Troll”, “Non-Practicing Entity”, “Patent 26 || Assertion Entity” or the Like, and (2) Referencing Ameranth’s Licensing or Litigatior 77 || Activities other than those at Issue in the Present Case); see also ECF No. 408 (Minutes o1 Pretrial Conference/Motions in Limine). However, because the parties settled prior to trial 28 |) all motions in limine were vacated, so the court did not rule on this issue. See id. -33-

1 ||Court notes that they contain a provision, Section 9.2.3, which provides that “[t]he Parties 2 ||agree that any dispute . . . shall be determined by the state or federal courts located in San 3 Diego, California, and the Parties expressly consent to personal jurisdiction and venue 4 before such courts.” ECF No. 14-1 at 10-11. Thus, it would appear Plaintiff's contesting 5 || federal court jurisdiction breaches its own agreement under which it seeks relief. 6 Plaintiff's third argument raises more complex issues addressing whether (1) 7 ||Defendant’s standing to bring this lawsuit, (2) Defendant provided proper Lear notice, and 8 ||(3) Plaintiff's covenant not to sue defeats federal subject matter jurisdiction. The Court 9 |jJaddresses each argument below. However, the Court ultimately concludes that each 10 argument fails to defeat federal subject matter jurisdiction. 11 i. Standing 12 The Declaratory Judgments Act of 1934 provides that “[i]Jn a case of actual 13 }|controversy within its jurisdiction, ... any court of the United States, upon the filing of an 14 appropriate pleading, may declare the rights and other legal relations of any interested party 15 ||seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C. § 16 2201(a); see also Aetna Life Ins. Co. of Hartford, Conn. v. Haworth, 300 U.S. 227, 239-40 17 ||(1937) (noting that the DJA “in its limitation to ‘cases of actual controversy,’ manifestly 18 regard to the constitution provision [7.e., Article III] and is operative only in respect to 19 || controversies which are such in the constitutional sense”). The party seeking a declaratory 20 ||judgment carries the burden of showing a justiciable case and controversy existed at the 21 the party filed for declaratory relief as well as throughout the case. Benitec Austl, 22 v. Nucleonics, Inc., 495 F.3d 1340, 1344, 1346 (Fed. Cir. 2007) (concluding that the 23 |)declaratory judgment plaintiff lacked standing because it admitted that it did not anticipate 24 |/pursuing any infringing activity for several years, “if ever”). While a specific threat of 25 |/infringement litigation is not required, where “‘a party has actually been charged with 26 ||infringement of the patent, there is, necessarily, a case or controversy adequate to support 27 jurisdiction’ at that time.” /d, at 1344. 28 Plaintiff argues that Defendant “has no standing to seek declaratory relief □□□ 34.

1 || invalidity of the licensed patents for any time period after the filing date of the complaint 2 (October 1, 2020) because [Plaintiff] has expressly covenanted not to sue [Defendant] for 3 royalties or other fees for any period of time or events occurring beyond the date of filing 4 the Complaint.” Mot. at 21:13-17. Plaintiff contends that “[p]ursuant to the Federal 5 || Circuit’s decision in Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054. 6 || 1058-59 (Fed. Cir. [1995]), a patentee can eliminate any justiciable issue about patent 7 || validity by covenanting not to sue the putative infringer” because “[s]uch a covenant not 8 sue eliminates any ‘case or controversy’ regarding patent validity,” thereby divesting 9 ||“this Court of subject matter jurisdiction to entertain a cross-complaint for declaratory 10 relief of invalidity.” /d. at 21:17-22:4. Thus, Plaintiff argues no case or controversy as to 11 || patent validity or infringement exists before the filing date of the complaint (due to the 12 || alleged improper Lear notice) or after the filing of the complaint (due to the covenant not 13 ||to sue), resulting in Defendant lacking standing to maintain any declaratory relief claims 14 || for non-infringement or invalidity. Id. at 22:4-6. 15 In 1995, in Super Sack Mfg. Corp. v. Chase Packaging Corp., the Federal Circuit 16 || created what Plaintiffrefers to as the “covenant not to sue doctrine,” which allowed a patent 17 \| holder to eliminate a potential dispute over patent validity or infringement—thereby also 18 |;eliminating federal question jurisdiction—by covenanting not to sue for patent 19 infringement. 57 F.3d 1054, 1060 (Fed. Cir. 1995). The Super Sack plaintiff-patent owne1 20 || brought an infringement lawsuit against a competitor-defendant for infringement of twe 21 ||patents. Jd. at 1055. In response, the defendant, like ChowNow, filed a counterclaim 22 || seeking declaratory judgments of both noninfringement and invalidity. Jd. The plaintiff. 23 |\like Ameranth, filed a motion to dismiss the counterclaim stating that it was 24 “unconditionally agree[ing] not to sue [the defendant] for infringement as to any claim of 25 ||the patents-in-suit based upon the products currently manufactured and sold by [the 26 || defendant].” 7d. at 1056. The plaintiff argued that this removed “any apprehension by [the 27 ||defendant] that it will face claims of infringement regarding the patents-in-suit,’ 28 || eliminating any actual case or controversy pertaining to patent law while also divesting the -35-

1 || federal court of jurisdiction. /d. The Federal Circuit affirmed the lower court’s dismissal 2 || of the case, agreeing that a plaintiff patent owner’s withdrawal of infringement allegations 3 || and promise not to assert its patents against the defendant had rendered the controversy in 4 ||the case moot, meaning that if the court issued an opinion, it would be “rendering a 5 || forbidden advisory opinion.” Jd. at 1060. 6 Plaintiff argues that this doctrine remains good law, Reply at 8:19-9:16. while 7 ||Defendant argues it has been abrogated by the Supreme Court, Oppo. at 21:4-26, 8 || Following Super Sack, until 2007, “it had been the law of the Federal Circuit that a patent 9 \/owner’s unqualified covenant not to sue a competitor for infringement divested that 10 || competitor of standing to sue for declaratory relief, and thereby the court of subject matter 11 |)jurisdiction.” Apotex, Inc. v. Novartis AG, Civil Action No. 3:06-CV-698, 2007 U.S. Dist. 12 || LEXIS 98357, at *11 (E.D. Va. Aug. 31, 2007). The rationale behind this arose from the 13 || belief that a justiciable case or controversy required the plaintiff to “be under a reasonable 14 apprehension of defending an imminent suit,” but so as long as “an unqualified covenant 15 || not to sue” existed, the plaintiff was not in apprehension of an imminent suit, and therefore, 16 || lacked standing. Jd. at *11-12. However, “[t]hat is no longer the standard.” □□□ at *12. 17 || Thus, the Court disregards Plaintiff's argument that its covenant not to sue justifies this 18 || Court finding it has no jurisdiction over this case without further analysis. 19 In 2007, the United States Supreme Court held in Medimmune, Inc. v. Genentech, 20 ||Jnc., 549 U.S. 118, 137 (2007), that standing pursuant to the DJA, and by explicit reference. 21 AIA, see 35 U.S.C. § 271(e)(5), is coextensive with the constitutional limitations □□ 22 || Article III, meaning the Federal Circuit’s “reasonable apprehension of imminent” suit 23 }|standard has been abrogated. See also Teva, 482 F.3d at 1338-39. The MedImmune 24 |j plaintiff-licensee manufactured a drug used to prevent respiratory tract disease in childrer 25 entered into a patent licensing agreement with the defendant covering one of the 26 || defendant’s existing patents as well as a pending patent application. 549 U.S. at 121. The 27 || plaintiff agreed to pay royalties on sales of the defendant’s licensed products while the 28 defendant granted the plaintiff “the right to make, use, and sell them.” Jd. at 121. The -36-

1 |}agreement defined licensed products as the covered patents, “which have neither expired 2 ||nor been held invalid by a court or other body of competent jurisdiction from which no 3 appeal has or may be taken.” Jd. at 121. After the patent application matured into a patent, 4 plaintiff believed the new patent did not fall under the licensing agreement, and as 5 result, the plaintiff did not owe royalties on it. Jd. at 121-22. It also contended the patent 6 | was invalid and unenforceable as well as that its claims were not infringed by the □□□□□□□□□□□ 7 ||products. Jd. A dispute arose, and the plaintiff filed suit for declaratory relief, secking a 8 || declaration that the patents it licensed from the defendant were invalid or its products did 9 infringe the patents. Jd. at 122-25. 10 The Supreme Court held that nothing in Article III’s case or controversy requirement 11 ||meant that the licensee had to break or terminate a licensing agreement before secking a 12 || declaratory judgment that the underlying patent in the agreement is invalid, unenforceable, 13 not infringed. 549 U.S. at 137. Consequently, it concluded that the Federal Circuit 14 ||Court of Appeals erred in affirming dismissal of the case for lack of subject-matter 15 |) jurisdiction, where the dismissal was based on the reasoning that “‘a patent licensee in good 16 standing cannot establish an Article III case or controversy with regard to validity, 17 enforceability, or scope of the patent because the license agreement ‘obliterate[s] any 18 j;{reasonable apprehension’ that the licensee will be sued for infringement.” /d. at 122. It 19 |/reasoned “that ‘the requirements of [a] case or controversy are met where payment of a 20 ||claim is demanded as of right and where payment is made, but where the involuntary or 21 || coercive nature of the exaction preserves the right to recover the sums paid or to challenge 22 the legality of the claim.’” Jd. at 131. It also noted that “[p|romising to pay royalties on 23 |i patents that have not been held invalid does not amount to a promise not to seek a holding 24 || of their invalidity.” Jd. at 135. 25 Thus, Medimmune replaced the imminent suit test. Micron Technology, Inc. v. 26 || Mosaid Technologies, Inc., 518 F.3d 897, 901 (Fed. Cir. 2008). Instead, MedImmune 27 established the standard for declaratory judgment justiciability, holding that a justiciable 28 || Article HI case or controversy exists where “the facts alleged, under all the circumstances. ' -37-

1 || show that there is a substantial controversy, between parties having adverse legal interests, 2 of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” 3 || Medimmune, 549 U.S. at 127 (quoting Md. Cas. Co. v. P. Coal & Oil Co., 312 U.S. 270, 4 ||273 (1941)). Under the MedImmune standard, courts analyze whether a counterclaimant 5 || basing federal jurisdiction off of a declaratory judgment claim meets the party’s burden by 6 ||showing (1) a case or controversy of sufficient immediacy and reality and (2) that a 7 || declaratory judgment as to the patents-in-suit would affect the legal relationship between 8 ||the counter-claimant and counter-defendant by finally and conclusively resolving the 9 | underlying controversy. /d.; see also Qualcomm, 2017 WL 5985598, at *20. 10 Plaintiff contends that “Medimmune simply held that a patent licensee had standing 11 file claims for declaratory relief challenging validity of licensed patents and whether its 12 |}product practices the licensed patents without first breaching the license payment by 13 || withholding payment where, if the licensee ceased making payments under the license 14 || agreement, it might be sued for patent infringement by the patent holder.” Reply at 8:8- 15 Plaintiff argues that MedImmune’s holding does not apply to this case, meaning the 16 || Court should apply Super Sack instead, for three reasons: First, unlike the Medimmune 17 |) licensee, who continued paying royalties under protest while challenging the patents-in- 18 || suit, Defendant has already breached the Agreements by ceasing royalty payments and has 19 || been sued in state court for doing so. Jd. at 8:19-9:1; see also Oppo. at 16:27-28. Second, 20 || Plaintiff argues that Med/mmune is distinguishable because the MedImmune patent license 21 ||required the licensee’s products to practice the claims of the Licensed Patents, but the 22 || Agreements at issue in this case do not. Reply at 8:23-28, 9:2-4. As already noted, the 23 || Court finds the Agreements do require ChowNow to practice the Licensed Patents in ordet 24 || for ChowNow to bear responsibility for royalties, so this argument fails to distinguish 25 \|Medimmune. Third, Plaintiff asserts that unlike the Med/mmune licensee, ChowNow 26 ||“does not face the threat—real or potential—of being sued by Ameranth for patent 27 infringement, now or in the future, because Amaranth has expressly covenanted not to sue 28 ||ChowNow for such a claim.” Jd. at 9:4-7. As also already noted, the covenant to sue only -32-

1 |{covered agreeing not to pursue royalties, but it did not covenant not to sue for patent 2 |\infringement. Thus, this argument also fails to distinguish Medimmune. As such, the Court 3 proceeds to apply MedImmune to the present controversy. 4 The Medimmune “all the circumstances” analysis is “calibrated to the particular 5 of each case.” Matthews Int’l Corp. v. Biosafe Eng’g, LLC, 695 F.3d 1322, 1328 6 ||(Fed. Cir. 2012). Courts have not developed a bright-line rule applicable to patent cases, 7 rather “Article III jurisdiction may be met where the patentee takes a position that puts 8 ||the declaratory judgment plaintiff in the position of either pursuing arguably illegal 9 ||behavior or abandoning that which he claims a right to do.” SanDisk Corp. v. 10 || STMicroelectronics, Inc., 480 F.3d 1372, 1380-81 (Fed. Cir. 2007). Since MedImmune, 11 Federal Circuit has held that, in the context of patent disputes, an “actual controversy” 12 ||requires “an injury in fact traceable to the patentee,” which exists only if the plaintiff 13 |lalleges “both (1) an affirmative act by the patentee related to the enforcement of his patent 14 |/rights and (2) meaningful preparation to conduct potentially infringing activity.” 15 ActiveVideo Networks, Inc. v. Trans Video Elecs., Ltd., 975 F. Supp. 2d 1083, 1087 (N.D. 16 2013) (finding there was “no dispute regarding the second factor because AV already 17 ||makes the products that are being accused of infringing”); Qualcomm, 2017 WL 5985598, 18 *15 (holding that “there is no dispute as to the second factor because Apple long engaged 19 the sale and, through its Contract Manufacturers, the production of iPhones and iPads”). 20 Courts have found the first step satisfied where a patent holder files a lawsuit in state 21 |/court seeking royalty payments owed in connection with use of the patent holder’s patents. 22 ||Beverly Hills Teddy Bear Co., Inc. v. GennComm, LLC, No. CV-2002849-CJCJEMX. 23 ||2020 WL 7049537, at *2 (C.D. Cal. Oct. 1, 2020) (noting that the “[t]he first element is 24 satisfied” because the patent holder had “already filed a lawsuit in state court seeking 25 ||the royalty payments owed by [the licensee] in connection with its alleged use of [the □□□□□□ 26 ||holder’s] patents”). Further, “[p}rior litigious conduct is one circumstance to be considerec 27 ||in assessing whether the totality of circumstances creates an actual controversy.” Hewlett- 28 Packard Co. vy. Acceleron LLC, 587 F.3d 1358, 1364 (Fed. Cir. 2009). In this case -39-

1 |} Ameranth has already filed suit seeking royalty payments in connection with its Licensed 2 Patents. Ameranth also has an extensive history of prior litigious conduct. Thus, Ameranth 3 || has taken affirmative acts to enforce its patent rights in satisfaction of the first step. 4 A declaratory judgment plaintiff satisfies the second step where a license holder 5 |jrefuses to pay royalties owed under a license agreement. See, e.g., Beverly Hills Teddy 6 || Bear Co., Inc. v. GennComm, LLC, No. CV2002849CJCJEMX, 2020 WL 7049537, at *2 7 ||(C.D. Cal. Oct. 1, 2020) “Here, the second element is clearly satisfied as BH Teddy has 8 ||refused to pay GennComm the royalties agreed to under the Agreement.”); see also 9 || Medimmune, 549 U.S. at 128 (“There is no dispute that [a justiciable controversy would 10 existed] if petitioner had taken the final step of refusing to make royalty payments 11 under the [ ] license agreement.”). Thus, where an accused party, like ChowNow, contends 12 || that it has the right to engage in the accused activity without a license, “an Article ITI case 13 || or controversy will arise and the party need not risk a suit for infringement by engaging in 14 || the identified activity before seeking a declaration of its legal rights.” Dow Jones & Co. v. 15 || Ablaise Ltd., 606 F.3d 1338, 1346-47 (Fed. Cir. 2010) (citing Revolution Eyewear, 556 16 at 1297); see also Hero Nutritionals, Inc. v. Vitastix, Inc. 2010 WL 11580048, at *4 17 (C.D. Cal. Apr. 23, 2010) (explaining that when the plaintiff refused to pay royalties under 18 || the license agreement because the underlying patent was invalid, the plaintiff's challenge 19 the patent was justiciable because “if Plaintiff successfully challenges the validity of 20 || Defendant’s patent, the parties’ License Agreement will be effectively undermined”); 21 || Precision Shooting Equip. Co. v. Allen, 646 F.2d 313, 314, 318-19 (7th Cir. 1981) (finding 22 “there is sufficient controversy for jurisdiction” in a dispute between parties to a licensing 23 ||agreement where the licensee challenges the validity of the licensor’s patent 24 || declaratory judgment action; noting that “if it is determined that [the licensee] is paying 25 ||royalties for nothing, its post-challenge royalties will likewise be in safekeeping for returr 26 || by the court.”). Here, ChowNow has taken meaningful preparation to conduct potentially 27 |\infringing activity in satisfaction of the second step. Thus, an actual controversy exists 28 under the Medimmune test. However, the Court must still address whether after applying -A0-

1 || MedImmune, Ameranth’s covenant not to sue defeats a case or controversy. 2 The parties dispute whether Med/mmune abrogated Super Sack’s covenant not to sue 3 |{doctrine, which holds that a patent holder’s covenant not to sue for patent infringement 4 ||divests the district court of federal subject matter jurisdiction over claims of patent 5 ||invalidity because the covenant eliminates any case or controversy between the parties. 6 ||See Oppo. at 21:4-26 (arguing MedImmune abrogated the holding in Super Sack and 7 ||“dramatically altered the applicable standard, making it easier for claimants to gain 8 ||Declaratory Judgment Act standing”); Reply at 8:19-9:16 (arguing that “Med/mmune did 9 ||not abrogate the Super Sack procedure to eliminate a potential dispute over patent validity 10 |lor infringement by providing a covenant not to sue). While Super Sack has not been 11 entirely overruled, it has been clarified. See, e.g., Benitec, 495 F.3d at 1346 (“Although 12 ||neither Super Sack nor Amana has been expressly overruled, both applied the disapproved 13 ‘reasonable apprehension of imminent suit’ test.”); see also Cat Tech LLC v. TubeMaster, 14 528 F.3d 871, 880 (Fed. Cir. 2008) (noting that “[i]n the wake of MedIimmune, several 15 |[opinions of this court have reshaped the contours of the first prong of our declaratory 16 judgment jurisprudence,” and “MedImmune articulated a ‘more lenient legal standard’ for 17 |\the availability of declaratory judgment relief in patent cases”). Defendant argues that 18 || Plaintiff fails to meet the formidable burden of showing that “it is absolutely clear that the 19 || allegedly wrongful behavior could not reasonably be expected to recur” because it fails to 20 || show that (1) Plaintiff could not reasonably be expected to resume its patent enforcement 21 |\efforts against Defendant or (2) it is absolutely clear that Plaintiff will not sue Defendant 22 the future for issues related to the Licensed Patents. Oppo. at 22:3-7, 23:13-17. 23 “Whether a covenant not to sue will divest the trial court of jurisdiction depends or 24 || what is covered by the covenant.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 55€ 25 ||F.3d 1294, 1297 (Fed. Cir. 2009); see also Oppo. at 22:13-16 (citing same). For instance. 26 Revolution Eyewear, the court distinguished cases where “the covenants covered the 27 |} current products whether they were produced and sold before or after the covenant, and the 28 || courts found [the] absence of continuing case or controversy” from the plaintiff's covenant -4|-

1 || which “offered no covenant on the current products, stating that it is not obligated to 2 || ‘repudiate suit for future infringement.’” /d. “[Bly retaining that right [to sue on current 3 products], Revolution preserved this controversy at a level of ‘sufficient immediacy and 4 |/reality’ to allow Aspex to pursue its declaratory judgment counterclaims.” Id. Similarly, 5 ||in Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 995-96 (Fed. Cir. 6 || 2007), the Federal Circuit noted that the plaintiff failed to make a blanket withdrawal by 7 ||refusing to withdraw some of the claims and had also sued one of the defendants for 8 ||infringement of those claims in another suit. Thus, the district court had appropriately 9 ||retained jurisdiction over the patents in suit because the failure to withdraw all claims 10 || created a reasonable apprehension of suit for infringement. Jd. 11 Here, as Defendant points out, Plaintiff's covenant not to sue “only guarantees that 12 |! Ameranth will not sue ChowNow in the future ‘for royalties or other fees.” Oppo. at 13 22:16-17 (citing McNally Decl. at J 14). It says nothing of whether it will sue for patent 14 |\infringement. Defendant contends that it only entered into the Agreements to end a patent 15 infringement lawsuit previously filed by Plaintiff, so because the covenant to sue “does not 16 |} include an irrevocable and unconditional guarantee that Ameranth will not sue ChowNow 17 || for any alleged past or future patent infringement,” it is facially deficient and cannot serve 18 || as the basis of mooting ChowNow’s non-infringement and invalidity Cross-Claims. Id. at 19 ||22:17-24: Defendant also points out that the covenant not to sue fails to address the impact 20 || the covenant would have on successors to Plaintiff’s patents, who could also sue Defendant 21 || for patent infringement; Defendant’s successors and/or subsidiaries, who could potentially 22 sued by Plaintiff or its successors; and Defendant’s customers and other third-parties, 23 |\““who are expressly provided for in the Amended License Agreement, and Ameranth 24 ||previously accused of infringement.” Jd. at 22:25-23:1. Thus, Defendant argues that 25 |) Plaintiff's “covenant not to sue is not unconditional and irrevocable, and Ameranth’s 26 actions in related patent-infringement litigations lend support to the belief that Ameranth 27 could exploit the conditional nature of the covenant not to sue if it ever so desired.” Jd. at 28 ||23:7-10 (citing Jn re Ameranth Cases, No. 3:11-cv-01810 (S.D. Cal. 2020)), The Court -42-

1 |}agrees. The covenant not to sue is limited like the Revolution and Honeywell covenants. 2 || Plaintiff's complaint pleading the covenant not to sue shows the covenant only addresses 3 ||royalties, not patent infringement: 4 Ameranth does not seek to recover royalties for any period of time or events occurring beyond October 1, 2020, the date of 5 filing of the Complaint. Ameranth specifically waives the right 6 to seek recovery of running royalties or other license fees due from ChowNow pursuant to the First Amended Agreement for 7 any period of time or events occurring beyond the date of filing g of the Complaint, and covenants not to sue ChowNow for any running royalties or other license fees for any period of time or 9 events occurring beyond the date of filing of the Complaint. 10 ||Compl. at 9, ¥ 24. 11 The Agreements indicate that once Defendant stopped paying royalties, the 12 || Agreements terminate, see ECF No. 14-1 at 8, 7 6.3, and Plaintiff can sue Defendant for 13 || patent infringement again, and in fact, would not have the ability to even seek royalties 14 |) once the Agreements terminate. In other words, Plaintiff has only pointed out that it has 15 || waived rights it never had in the first place. Thus, Plaintiffs covenant not to sue does not 16 ||negate the Court’s ability to find an Article ITI case or controversy in this case. 17 In sum, the Court finds that Plaintiff's covenant not to sue does not defeat the 18 ||existence of a case or controversy sufficient to give Defendant standing to pursue its 19 ||counterclaims seeking declaratory judgments of non-infringement and invalidity. 20 || Plaintiffs arguments to the contrary are unavailing in light of post-MedImmune authority 21 || protecting licensees from abusive licensees abusive licensing and patent practices. See, 22 Michael Risch, Patent Challenges and Royalty Inflation, 85 Ind. L.J. 1003, 1057, n.39 23 || (2010) (noting that “[t]he post-Med/mmune Federal Circuit has been able to protect patent 24 |/holders from abusive practices,” and as a result, “[a] licensee can also seek declaratory 25 judgment that it does not practice the patent and thus is not liable for royalties.”). Having 26 ||concluded that a case or controversy exists the Court must still address □□□□□□□□□□□ 27 || arguments as to whether Defendant provided proper Lear notice. 28 li. Lear notice -A3-

1 Plaintiff argues that Defendant has no standing to pursue its counterclaims for 2 || declaratory relief as to invalidity because it never provided Plaintiff with Lear notice (i.e., 3 || notice it was withholding royalty payments under the Agreement on the grounds that it had 4 || determined that the Licensed Patents were invalid) before October 1, 2020 (the date 5 || Plaintiff filed suit in the Superior Court), and Plaintiff has given Defendant a covenant not 6 ||to sue for any period of time after October 1, 2020. Mot. at 6:22-24; 19:13-16. Absent 7 || standing, the Court would need to remand the case or dismiss it. Defendant opposes by 8 ||arguing that Plaintiffs arguments regarding Lear notice fail for three reasons: (1) 9 || Defendant’s 2018 correspondence met the standards for invoking rights under Lear; (2) 10 || even under Plaintiffs “mistaken understanding” of what Lear requires, Defendant’s “2018 11 || correspondence at least creates fact questions that cannot be decided without any discovery 12 ||/at this stage of the litigation”; and (3) regardless of whether Defendant’s 2018 13 || correspondence invoked its Lear rights, Plaintiff's covenant not to sue does not eliminate 14 |jany controversy after the date of Ameranth’s suit, and therefore, does not moot 15 || ChowNow’s invalidity cross-claims. Oppo. at 15:20-16:3. 16 In 1969, the Supreme Court, in Lear, Inc. v. Adkins, 395 U.S. 653, 673 (1969), made 17 clear that with respect to a breach of contract claim arising out of a licensing agreement. 18 ||the licensee need not repudiate the licensing agreement—thereby subjecting itself tc 19 }j liability for infringement—in order to challenge the validity of a patent. Jd. In doing so. 20 || it overruled the doctrine of licensee estoppel, which previously prevented a patent licensee 21 || from challenging the validity ofa patent to which it possessed a license to use. /d. Plaintifi 22 argues that Lear notice, which the Court describes below, is relevant to determination 0: 23 |\federal subject matter jurisdiction because no case or controversy exists between the 24 || licensor and licensee as to the validity of the licensed patents or obligation to pay royalties 25 || until the licensee challenges the licensed patents. Thus, by failing to provide proper Lea: 26 ||notice until filing its Amended Counterclaims, Defendant lacked standing at the time 27 || Plaintiff filed suit as well as at the time of removal. 28 Lear involved a patent licensing agreement containing similar terms to the -44-

1 || Agreements in this case: If the UPSTO refused to issue a patent or held any of the patents 2 ||covered by the agreement invalid, the defendant-licensee could terminate the agreement. 3 1/395 U.S. at 656-57. Eventually, the defendant ceased paying royalties, and the plaintiff- 4 || licensor, like Ameranth, sued for breach of the patent licensing agreement. Jd. at 660. The 5 ||Supreme Court held that a party seeking to repudiate a licensing agreement, like the Lear 6 || plaintiff and ChowNow, need not comply with the licensing agreement by continuing to 7 || pay royalties until the patent claim is declared invalid, even where an agreement expressly 8 ||states royalties are owed until the patent claim is held invalid. Jd. at 673-74 (holding “that 9 must be permitted to avoid the payment of all royalties accruing after Adkins’ 1960 10 || patent issued if Lear can prove patent invalidity”). As applies to this case, Lear means 11 || ChowNow had a right to cease paying royalties while challenging the Licensed Patents and 12 || did not need to continue such payments until the final determination on the validity of those 13 \|patents, even if the Agreements state otherwise. 14 One year later, in 1997, the Federal Circuit, in Studiengesellschaft Kohle, M.B.H. v. 15 || Shell Oil Co., began requiring what is known as “Lear notice,” pursuant to which “a 16 licensee . . . cannot invoke the protection of the Lear doctrine until it!” (i) actually ceases 17 || payment of royalties, and (ii) provides notice to the licensor that the reason for ceasing 18 || payment of royalties is because it has deemed the relevant claims to be invalid.” 112 F.3d 19 1561, 1568 (Fed. Cir. 1997); see also Dodocase VR, Inc. v. MerchSource, LLC, No. 17- 20 || CV-07088-JCS, 2020 WL 475494, at *4 (N.D. Cal. Jan. 29, 2020) (holding that “Defendant 21 ||MerchSource satisfies the Kohle requirements because Defendant MerchSource (i) actually 22 |iceased payment of royalties, and (ii) provided notice to Plaintiff Dodocase on October 5, 23 ||2015 that the reason for ceasing payment was that it concluded that the relevant claims 24 invalid”). While “a licensee need not institute suit challenging the validity of 25 7 Plaintiff points out that it is not enough for someone else to challenge a licensed 26 patent for the licensee to avoid paying royalties; rather, the licensee seeking to refrain from 97 ||making royalty payments must challenge the patent. Studiengesellschaft, 112 F.3d at 1568; see also Mot. at 21:21-26. This means ChowNow cannot seek to avoid royalties based on 28 date another party challenged any of the Licensed Patents. -45-

1 patent,” it “must clearly notify the licensor that the licensee is challenging 2 patent’s validity.” Jd. at 936-47. Studiengesellschaft also clarified that the Lear 3 |\doctrine does not prevent a patent owner from recovering royalties up until the date the 4 || licensee first challenges the validity of the patent. 112 F.3d at 1568; see also Go Medical 5 Industries, Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1273 (Fed. Cir. 2006) (holding that 6 |/the court erred in relieving the licensee of its obligation to pay royalties after a finding of 7 |\invalidity during another lawsuit because that invalidity finding was still pending appeal, 8 thus, “had no effect on the contractual relationship” between the plaintiff and the 9 || defendant even though the agreement tied its duration to the life of the patent-in-suit). 10 Plaintiff argues that an October 11, 2018 letter sent by Defendant stated that its 11 || decision to cease paying royalties was based on a determination that its products did not 12 || practice the claims of Plaintiff's Licensed Patents within the Field of Use as defined by the 13 ||FAA “and not on the basis of validity.” Mot. at 10:24-11:2; Oppo. at 3:28. Defendant 14 ||responds that even if the Licensed Patents were or are valid, it is of no import because its 15 products and services do not practice the Licensed Patents. See Exhibit 3 to Mot., ECF 16 12-3 at 8-9. 17 The actual letter itself states that it believes “the question of validity of this patent is 18 ||immaterial, at the present time, to ChowNow’s decision to cease royalty payments,” see 19 || Exhibit 3 to Mot., ECF No. 12-3 at 8-9 (emphasis added), but not necessarily that it did not 20 || factor into the decision in any respect. In fact, the letter explicitly noted that the 850, 325, 21 || 733, and 077 Patents had all been invalidated. /d. It also stated that Plaintiff had identified 22 ||the 060 and 651 Patents, which Defendant “reviewed and reached the same conclusion o1 23 infringement.” Jd. It concluded by stating that if Plaintiff believed its platform 24 |}employed an “an enforceable and valid claim of Ameranth’s patents,” then, Plaintiff should 25 || provide Defendant “with any such claim chart for us to evaluate.” /d. Because licensees 26 || pay royalties to allow them to practice patents without being sued for patent infringement 27 \\if a licensee does not practice the patents subject to the licensing agreement, the need fo: 28 ||royalty payments disappears. In sum, the letter at issue, while noting it was not basing the -46-

1 || decision to cease royalty payments on the basis of a belief of invalidity “at the present 2 ||time,” also asserted that the Licensed Patents had already been declared invalid and were, 3 fact, invalid. See Dodocase, 2020 WL 475494, at *4 (providing that “it is undisputed 4 on October 5, 2017, Defendant MerchSource sent Plaintiff Dodocase a letter stating 5 ||that Defendant MerchSource had concluded that “all relevant claims are invalid under 35 6 U.S.C. § 102 and/or § 103.”). This letter also clearly advised that Defendant would not 7 paying royalties on any products sold thereafter. This satisfies the requirements to (1) 8 || actually cease payment of royalties and (2) provide notice that the reason for ceasing 9 || payment was that it concluded that the relevant claims were invalid. See Dedocase, 2020 10 || WL 475494, at *4 (holding the defendant met the requirements because it “(1) actually 11 || ceased payment of royalties, and (ii) provided notice to Plaintiff. ..on October 5, 2015 that 12 || the reason for ceasing payment was that it concluded that the relevant claims are invalid.”). 13 Further, unlike in Studiengesellschaft, where the licensee continued to pay some 14 |jroyalties while hiding the fact that it was withholding royalties on certain products, 15 || Defendant has withheld all royalties. Oppo. at 16:17-22. Defendant argues this distinction 16 important because “[i]t was in that nonrepudiating context that the Federal Circuit stated 17 || that [the defendant] could not ‘invoke the protection of the ear doctrine until it (i) actually 18 ceases payment of royalties, and (ii) provides notice to the licensor that the reason fot 19 ceasing payment of royalties is because it has deemed the relevant claims to be helc 20 || invalid.” Td. at 16:22-17:2, Defendant contends that in this case, it has clearly satisfiec 21 j|both Studiengesellschaft requirements by (1) already ceasing royalty payments tc 22 |; Ameranth and (2) expressly telling Ameranth it was ceasing doing so, in part, because i 23 || believed the Licensed Patents were invalid. Jd. at 17:3-9. Defendant also argues that □□□□□□ 24 fact that ChowNow had multiple reasons for not paying Ameranth is irrelevant to □□□□□□□ 25 \|ChowNow properly invoked its rights under Lear.” Jd. at 17:14-16. This is because 26 ||“Supreme Court held that MedImmune could invoke its Lear rights even though it raisec 27 || three grounds for believing it owed no royalties, i.¢., that the ‘patent was [1] invalid anc 28 ||[2] unenforceable, and that its claims were in any event [3] not infringed.” Jd. at 17:16. -47-

|| 20 (citing Medimmune, 549 U.S. at 122) (reference numerals added). Thus, Defendant 2 ||argues that “[a]t the very least, this record creates a factual question as to whether 3 ||ChowNow invoked its Lear rights as required under Medimmune and/or 4 || [Studiengesellschaft|, thus precluding remand on that basis.” fd. at 17:20-22. 5 The Court agrees that under Medimmune, a repudiating licensee can provide 6 multiple reasons for repudiating a license agreement, as ChowNow did here, which means 7 || ChowNow provided adequate Lear notice. 8 iii. Ameranth v. Splick-It_ Inc. 9 In the Notice of Removal, Defendant also cited to the Splick-It case, in which the 10 || contract involved a license agreement covering the 077 Patent, and the district court denied 11 |; Ameranth’s motions to remand and dismiss similar to the Motions here. ECF No. 1 at 12 ||5:13-6:6. Plaintiff argues that even though Defendant’s Notice of Removal refers to the 13 || Splick-It Action, Splick-It is distinguishable for four reasons warranting this Court arriving 14 |l at a different outcome. Mot. at 24:4-7. Plaintiff contends that these differences require the 15 ||Court to dismiss Defendant’s cross-complaints for declaratory relief because Defendant 16 ||has no standing, resulting in the Court lacking jurisdiction over the case and requiring 17 ||remand pursuant to 28 U.S.C. § 1447(c). Id. at 24:4-7. Defendant opposes by arguing that 18 Plaintiff's attempts to distinguish Splick-/t is unavailing because that case “is nearly 19 identical, both factually and procedurally, to this case.” Oppo. at 24:11-13. 20 On April 26, 2017, Ameranth filed an action against the defendant, Splick-It, Inc. 21 || “Splick-It”), in the San Diego Superior Court alleging two claims for (1) breach of contract 22 || and (2) declaratory relief, alleging that the defendant “breached the 1** Amended License 23 || Agreement by failing to provide the reports and royalties required by the 1** Amended 24 || License Agreement, while still using the family of Ameranth hospitality patents.” 3:17- 25 || cv-01093-DMS-WVG, ECF No. | at 9-13 (the “Spick-If’); see also Ameranth, Inc. v. 26 || Splick-It, Inc., No. 17-cv-01093-DMS-WVG, 2017 WL 11422186, at *1 (S.D. Cal. Aug. 27 2017) (Sabraw, Chief J.) (denying Ameranth’s motion to remand); see also Ameranth, 28 || Inc. v. Splick-It, Inc., No. 17-cv-01093-DMS-WVG, 2017 WL 11422187, at *1 (S.D. Cal. ~-48-

1 |] Aug. 18, 2017) (Sabraw, Chief J.) (denying Ameranth’s motion to dismiss). On May 26, 2 |}2017, Splick-It filed an answer and cross-complaint, alleging, inter alia, that Ameranth’s 3 || patents—including but not limited to the 060 and 077 Patents at issue in this case—were 4 ||not infringed, invalid, and unenforceable. Splick-It, 2017 WL 11422186, at *1. After filing 5 cross-complaint, Splick-It also removed the case to the Southern District of California. 6 In June 2017, Plaintiff filed a Motion to Dismiss, see Spick-it Action, at ECF No. 16, 7 ||Motion to Remand, id. at ECF No. 12. The court, however, denied the motion to dismiss 8 j|and motion to remand, id. at ECF Nos. 27, 28. 9 In denying the motion to remand, the court reasoned that the facts underlying 10 || Ameranth’s state law claims would “involve an inquiry into whether Splick-It is practicing 11 inventions claimed in the ‘077 Patent.” Splick-It, 2017 WL 11422186, at *3. Thus, 12 || because the “issue, infringement of the ‘077 Patent, [was] currently being litigated in this 13 ||Court, ... it would be more economical and efficient to litigate the issue as to Splick-lIt 14 || here, as well.” Jd. In denying the motion to dismiss for lack of subject-matter jurisdiction, 15 || the Splick-it court held that “as in Powertech, the dispute between Splick-It and Ameranth 16 ||about ‘whether the license agreement requires royalty payments to be tied to valid patent 17 ||coverage—[was] sufficient to support declaratory judgment jurisdiction.’” Splick-[t, 2017 18 || WL 11422187, at *3. . 19 Plaintiff argues that Splick-It is distinguishable for four reasons: First, Plaintiff 20 |/points out that the license agreement in Splick-It “was a license to use and practice the 21 || Ameranth patents,” and the Splick-Jt court “relied upon the linkage between practice of the 22 || patented inventions and obligation to pay royalties to find that adjudication of [Plaintiff]’: 23 ||state law claims ‘will involve an inquiry into whether Splick-It is practicing the inventions 24 |! claimed in the ‘077 Patent.’” Mot. at 22:14-23:2 (citing Splick-Jt, 2017 WL 11422186 25 ||*3). Because “no such linkage exists here” requiring that Defendant must use or practic« 26 || the patents in order to be liable for royalties, Plaintiff argues Splick-/t does not warrant thi: 27 \|Court finding jurisdiction over this case. Jd at 23:2-6 (quoting Splick-Jt, 2017 WL 28 || 11422186, at *3), Defendant responds that “Judge Sabraw made no such ‘linkage.’” Oppo -49-

1 |jat 25:4-5. In fact, Defendant points out that “Judge Sabraw did not even address this 2 ||argument in any way, shape, or form in his order denying Ameranth’s motion to remand,” 3 “[i]n fact, the words ‘pay,’ ‘royalty,’ and ‘linkage’ do not appear in Judge Sabraw’s 4 |lorder.” Oppo. at 25:5-8 (citing Splick- It, 2017 WL 11422186, at *1-3). In a way, both 5 ||parties are correct: Splick-It did discuss whether the defendant practiced Ameranth’s 6 ||patents-in-suit. See Splick-It, Inc.,2017 WL 11422186, at *3. However, it never discussed 7 Splick-It’s practicing of Ameranth’s patents with respect to Splick-It’s royalty obligations & |/in the manner Plaintiff suggests. See ia. 9 Second, Plaintiff argues unlike this case, where the Agreements arose as the result 10 ||of a settlement agreement between the parties to a lawsuit filed by Ameranth against 11 ||ChowNow for patent infringement, in Splick-It, Ameranth had never sued Splick-It for 12 patent infringement, so the license did not result from the settlement of a patent dispute. 13 at 23:7-17. Defendant responds that whether the license agreement at issue resulted 14 |/from a complaint for patent infringement “is a distinction that, legally, makes no 15 difference.” Oppo. at 25:9-13. The Court agrees. 16 Third, Plaintiff argues that in Splick-Jt, its complaint against Splick-It sought 17 ||royalties both before, during, and after the lawsuit began, seeking royalties through the end 18 || of the term of the license agreement, where in this case, Plaintiff limits the royalties it seeks 19 |\through the date it filed the original complaint. Mot. at 23:18-24. Similarly, □□□□□□□□□□□ 20 ||final argument contends that in Splick-It, it never provided the defendant with a covenant 21 ||not to sue for any periods of time beyond the filing date of its complaint against the 22 || defendant, whereas in this case, Plaintiff has covenanted not to sue for any royalties or fees 23 ||after October 1, 2020. fd. at 23:25-24:3. Defendant responds to both arguments by stating 24 || that Plaintiff's “covenant is so limited that it does not affect this Court’s jurisdiction, anc 25 Ameranth’s attempt to manipulate facts to reach a different outcome from Splick-/t shoulc 26 |j be rejected.” Oppo. at 25:16-21. Although Plaintiff attempts to distinguish this case from 27 || Splick-It, this Court finds that these arguments that Splick-Jt is distinguishable actually 28 -50-

1 || prove that Plaintiff learned from the 2017 Splick-/t decision!® by taking the reasons offered 2 || by the Splick-/t court for finding jurisdiction and making a conscious effort to make those 3 ||reasons inapplicable to this case—for example, by covenanting not to sue for royalties after 4 jlit filed suit. See, e.g., Reply at 14:10-11 (noting that this case differs from Splick-/t because 5 ||“Splick-It did not involve a covenant not to sue for future contractual or infringement 6 || liability”). However, because the Court has already noted that Plaintiff’s covenant not to 7 is meaningless in light of the Agreements, these distinctions do not warrant a different 8 || outcome in this case. 9 Plaintiff's Motion to Remand is DENIED because the Complaint and Defendant’s 10 |) counterclaims give rise to a justiciable Article III case or controversy relating to patent law. 11 12 ||'8 Tn fact, the Court notes that Ameranth is currently represented by the same counsel 13 had in Splick-It. See Splick-It, 2017 WL 1142186 *1. Plaintiff's counsel is reminded of their obligations: “By presenting to the court a... written motion ... an attorney... 14 || certifies that to the best of the person’s knowledge, information, and belief, formed after 15 inquiry reasonable under the circumstances . . . . the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, 16 || modifying, or reversing existing law or for establishing new law.” FED. R. Civ. P. 11(B)(2). 17 this case, in light of (1) the number of cases filed by Plaintiff and (2) denial of previous motions to dismiss and remand in this district court, the Court questions Plaintiffs 18 || circumspection in filing the instant motions. 19 The AJA provides that reasonable attorney’s fees may be awarded to the prevailing party in “exceptional cases.” 35 U.S.C. § 285. A case is “exceptional” if it stands out from 20 || others with respect to either: (1) the substantive strength of a party’s litigating position, or 1 ||(2) the unreasonable manner in which the case was litigated. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). “[A] pattern of litigation abuses 22 || characterized by the repeated filing of patent infringement actions for the sole purpose 9} 93 \\forcing settlements, with no intention of testing the merits of one’s claims, is relevant to a district court’s exceptional case determination under § 285.” Thermolife Int'l LLC v. GNC 24 Corp., 922 F.3d 1347, 1363 (Fed. Cir. 2019). Courts must discourage such behaviot 25 because some patent holders, known as nonpracticing entities or patent trolls, “with broad claims on platform technologies may try to use those claims to discourage competitors 26 through licensing restrictions and litigation against technologies on similar products.” 97 ||Keith E. Maskus, Reforming U.S. Patent Policy: Getting the Incentives Right, COUNCIL ON FOREIGN RELATIONS, CSR No. 19, at 19 (Nov. 2006), available at http://www.cfr. 28 org/content/publications/attachments/Patent CSR. pdf. -5|-

1 B. — Plaintiff’s Motion to Dismiss the Cross-Complaints for Failure to State a Claim and Lack of Subject Matter Jurisdiction are Denied as Moot. 2 Plaintiff filed its Motion to Dismiss on November 19, 2020, which sought to dismiss 3 Plaintiff's counterclaims. See Mot. However, on December 7, 2020, Defendant filed 4 amended counterclaims, containing eight additional claims for relief. ECF No. 18. “It is ° well-established in our circuit that an ‘amended complaint supersedes the original, the 6 latter being treated thereafter as non-existent.’” Ramirez v. Cty. of San Bernardino, 806 F.3d 1002, 1008 (9th Cir. 2015) (reversing the district court’s granting of the defendants’ 8 motion to dismiss the superseded first amended complaint and the resulting dismissal of ? the case because the timely filed second amended complaint mooted the motion to dismiss 10 targeted at Plaintiffs first amended complaint, which was no longer in effect). Here, Defendant filed its original counterclaims on November 4, 2020, see Cross-Compl., which 12 Plaintiff responded to with the instant motion to dismiss filed on November 19, 2020, see 3 ECF No. 12. FRCP 15(a)(1) allows a party to amend its pleading once as a matter of course within 21 days of serving the original pleading, or “[i]f the pleading is one to which a IS responsive pleading is required, 21 days after service of a responsive pleading or 21 days 16 after service of a motion under Rule 12(b), whichever is earlier.” Thus, in response to 17 Plaintiff's motion to dismiss the counterclaims, Defendant filed its Amended 18 Counterclaims, on December 7, 2020. ECF No. 18. Because Defendant filed the Amended 9 Counterclaims within 21 days of Plaintiff filing the Motion to Dismiss the original 20 Counterclaims, FRCP 15{a) allowed Defendant to amend the Counterclaims “as of course,” a1 or without leave of court, thereby mooting Plaintiff's Motion to Dismiss. See, e.g., □□□□□□ 22 Enter. Sols., Inc. v. Lantern Credit, LLC, No. 17-cv-02331-AB-JCX, 2018 WL 437472, at 23 *1 (C.D. Cal. Jan. 16, 2018) (noting that the defendant “subsequently filed its □□□□□ 24 Amended Counterclaims on May 5, 2017, mooting Apollo’s initial motion to dismiss”). 29 In sum, Plaintiffs Motion to Dismiss sought to dismiss Defendant’s origina 26 counterclaims, filed on November 4, 2020, see Cross-Compl., which are no □□□□□□ operative due to Defendant’s filing of the Amended Counterclaims, on December 7, 2020

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1 ECF No. 18. Thus, granting Defendant’s Motion to Dismiss would have no effect 2 || within the confines of this case. See, e.g., Tur v. YouTube, Inc., 562 F.3d 1212, 1214 (9th 3 |} Cir. 2009) (“[A]n issue is moot when deciding it would have no effect within the confines 4 || of the case itself”). 5 C. = Plaintiff's Objections to Defendant’s Notices of Supplemental Authority 6 Plaintiff objects to Defendant’s Notices of Supplemental Authority, ECF Nos. 28, 7 ||29, which provided the Court with opinions from Chief Judge Dana Sabraw in Ameranth, 8 || Inc. v. Domino's Pizza, Inc., No. 12-cv-0733-DMS-WVG, 2021 WL 409725, at *1 (S.D. 9 Feb. 5, 2021), finding this case exceptional for purposes of 35 U.S.C. § 285. Plaintiff 10 || objects to these notices, and the orders attached to them, as “not relevant to the controlling 11 || legal issues.” ECF No. 30 at 2:12-17. The Court agrees and disregards these notices in its 12 || consideration of the Motions. The orders provided to the Court have nothing to do with 13 || the jurisdictional issues before the Court. CONCLUSION 15 Plaintiff argues that “[t]his is a garden variety state law action for breach of 16 || ChowNow’s contractual duty to pay royalties to Ameranth under a written license 17 || agreement,” so “fi]t belongs in San Diego County Superior Court, the venue in which 18 || Ameranth properly filed the complaint. Mot. at 24:9-12. Plaintiff accuses Defendant o: 19 || attempting “to make a federal case out of this suit on several grounds, none of which are 20 || well-taken” because Plaintiff's “causes of action include no federal claims and do not 21 || depend upon determination of any patent law or other federal issues, and therefore provide 22 basis for removal.” Mot. at 24:13-16. However, because the Agreements □□□□□ 23 || terminated, they provide no defense to a claim by Ameranth for infringement from the date 24 ||of termination (i.e., October 30, 2018) onwards. Further, the plain language of the 25 Agreements shows royalties are due dependent on whether ChowNow practices the 26 ||Licensed Patents, requiring the Court to determine the claims of the Licensed Patents as 27 || well as their validity. Finally, Plaintiff argues that Defendants’ “cross-complaints fot 28 || declaratory relief of invalidity are likewise defective because [Defendant] never providec -53-

1 || Lear notice that it was challenging the validity of the patents prior to the initiation of this 2 {| lawsuit, and [Plaintiff] has unconditionally covenanted not to sue [Defendant] for royalties 3 other fees for any period of time after the filing of the lawsuit.” Mot. at □□□□□□□□□ 4 || However, the Court has determined that ChowNow provided adequate Lear notice, and 5 || Ameranth’s covenant not to sue for royalties does not address its desire or intent to sue for 6 || patent infringement, which it has done in the past. Thus, a controversy exists sufficient to 7 || create federal subject matter jurisdiction under the Declaratory Judgment Act. 8 Thus, for the above reasons, the Court: □ 9 1. DENIES Plaintiffs Motion to (a) Dismiss the Cross-Complaint for (i) Failure 10 || to State a Claim and (ii) Lack of Subject Matter Jurisdiction and (b) Remand to State Court, 11 No. 12. 12 2. SUSTAINS Plaintiff's Objections to Defendant’s Notices of Supplemental 13 || Authority. 14 3. Any response to Defendant’s Amended Counterclaims must be filed within 15 (10) days of this order. 16 IT IS SO ORDERED. , DATED: August i 2021 Whee 0-7 i \iried Sttgbiceiet dee 19 . 20 21 22 23 24 25 26 27 28