Duvall Espresso IP Enforcement v. Meticulous Home - Patent Infringement Opinion

IN THE UNIT ED STATES DISTRICT COURT FOR THE DI STRICT OF DEL AWARE DUVALL ESPRE SSO IP) ENFORCEMENT, LLC,)) Plaintiff,)) v.) Civil Action No. 24-22- CJB) METICULOUS HOME, INC. and) JUAN CARLOS L OPEZ PENDAS,)) Defend ants.) James D. Taylor, Jr. and Michelle C. Streifthau-Livizos, SAUL EWING, LLP, Wilmington, D E; Mark C. Johnson, JOHNSON DALAL, Plantation, FL, Attorne ys for Plaintif f Duvall Espresso IP Enfo rcement, LLC. Jennifer Ying, M ORRIS, N ICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE; S arah E. Fowler, PERKINS COIE LLP, Palo Alto, CA; Matthew A. Lembo, PERKINS COIE LLP, New York, NY, A ttorneys for Defe ndants Meticulous Home, Inc. and Juan Carlos Lopez Pendas. 1 MEMORANDUM OPI NION March 2, 2026 Wilmington, De lawa re 1 Pursuant to the Court’s custom, in this Memorandum Opinion resolving a potentially c ase - dispositive motion in a consent matter, the Court has listed in the caption the attorneys on the briefs for each side. It notes, however, that subsequent to briefing, the Court granted Defendants’ counsels’ unopposed motion to withdraw as counsel in the case. (D.I. 73)

2 B U R K E, U n i t e d S t at e s M agi s t r at e Ju d ge Pending in this patent infringement case brought by Plaintiff Duvall Espresso IP Enforcement, LLC (“ Plaintiff ” or “Duvall ”) again st Defend ants Meticulous Home, Inc. (“Meticulous”) and Juan Carlos Lopez Pendas (“Mr. Pendas” and collectively with Meticulous, “Defendants”) is Defendants’ motion to dismiss the operative First Amended Complaint (“FAC”) ag ains t them, fil ed pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6) (the “Motion”). (D.I. 44) For the reasons set forth below, the Court 2 GRANTS - IN -PART and DENIES - IN - PART the Motion. I. BACKGROUND A. Factual Background 1. The Pa rties Duvall is a Florida limited liability c ompany w ith its pr incipal pla ce of business in Palm Beach County, Florida. (D.I. 43 at ¶ 3) Duvall is owned and operated by Duvall Espresso, Inc. (“Duvall Espr esso”); Du vall Espress o is a Dela ware co rporat ion th at oper ates as a foreig n entit y in Georgia, where Duvall Espresso has its principal place of business. (Id. at ¶ 4) Duvall Espress o commer ciall y develop s, market s and s ells es presso - r elated and co ffee -related products. (Id. at ¶ 40) The principal officer and owner of Duvall Espresso is Gideon Duvall (“Mr. Duvall”). (Id. at ¶ 5) Meticulous is a Delaware corpora tion. (Id. at ¶ 6) Mr. P endas founded Meticulous, and he is its sole owner a nd decis ion mak er. (Id. at ¶ ¶ 7, 17, 34) Mr. Pendas is a resident of Puebla, Mexico. (Id. at ¶ 34) 2 On February 16, 2024, the parties jointly consented to the Court’s jurisdiction to conduct all proceedings in this case, including trial, the entry of final judgment and all post- trial proceedings. (D. I. 3 8)

3 2. The As serted Pat ents Mr. Duvall was the original recipient and owner of United States Patents Nos. 10,349,774 (the “'774 patent”), 10,258,187 (the “'187 patent”) and 9,867,491 (the “'491 patent” and collectively with the '774 patent and '187 patent, the “asserted patents”). (Id. at ¶ 44) Before th is lawsui t was fil ed, the as serted patents were assigned to Duval l. (Id. at ¶ 45) The '774 patent is entit led “Device and Sy stem fo r Creating Infused Beverag es ” and it issued on July 16, 2019. ('774 patent at 1) 3 The cl aims of t he '774 patent recit e devices and sys tems fo r creati ng infus ed beverag es. (See D. I. 43 at ¶ 46) The '187 and '491 patents are both entitl ed “Devic e and Sy stem for Brewing Infused Beverages[;]” the '187 patent issued on April 16, 2019, and the '491 patent issued on January 16, 2018. ('187 patent at 1; '491 patent at 1) The claims o f the '187 and '491 patents recite an infused beverage brewing assembly and method. (See D.I. 43 at ¶¶ 52, 54, 55) 4 3. The Al leged I nfring ement The FAC all eges t hat s ince at least February 2023, Meticulous has marketed and sold electric coffee and espresso making machines (the “accused products”) to consumers around the world, including in Delaware. (Id. at ¶ 9) More specif ically, th e FAC alleges tha t Meticulo us filed a federal trademark application on May 3, 2022 with the United States Patent and Tradema rk Offi ce (“USP TO”) fo r the trad emark “Met iculou s” and for t he goods “El ectric C offee Makers.” (Id. at ¶ 10) O n August 21, 2023, a “Statement of Use” was filed with respect to the application in which Mr. Pendas declared that the Meticulous mark was “i n us e in comm erce on 3 The asserted patents are attached as exhibits to the FAC. (D.I. 43, exs. A- C) Herein, the Court will cite to the asserted patents by patent number. 4 In the FAC, Duvall asserts claims 1, 10, 19 and 20 of the '774 patent, claim s 1, 8 and 16 of the '187 patent and claims 1, 7 and 17 of the '491 patent. (D.I. 43 at ¶¶ 46, 48, 52, 54, 55)

4 or in connection with . . . Electric coffee makers” (the “S tatement of Us e”). (Id. at ¶¶ 1 1 -12) The Statement of Use attached photographs showing the accused products in shipping boxes and other displays, including at a public conference, and it indicate d that the Meticulous mark wa s first used with respect to the accused products on November 2, 2022 and was first used in federal commerce i n Feb ruary 2 023. (Id. at ¶ ¶ 13 -14 & ex. E) Meticulous conducts business through websites that include the “Meticulous W ebsite[, ]” the “Indiegogo W ebsite” and the “K icksta rter W eb sit e[.]” (Id. at ¶ 16) Th e Meticulous W ebsite states tha t c onsumers can pre - ord er the accused products on the Indiegogo W eb site. (Id. at ¶ 19) As of March 21, 2024, the Indiegogo W ebsite s tate d that Defendants have raised $6,058,108 United States dollars by “4,845 backers” in connection with pre -orders of the accused products. (Id. at ¶¶ 20 -21) Defendants provide customers that pre - order t he ac cused products with at least 32% off the sales price, which is $2,000. (Id. at ¶ 22) The FAC alleges t hat after a cus tomer pre - order s an accused product from the Indiegogo website, it is later shipped to the customer. (Id. at ¶ 23) The Indiegogo website also indicates that the accused products have been marketed and advertised on “Sprudge,” the “Spoon,” “uncrate,” “Hiconsumptions,” “imboldn,” “stuipiddope,” “FHM” and “UrbanDaddy[.]” (Id. at ¶ 24) T he Kickst arter W ebsit e also enabl es use rs to pre - order the accused products. (Id. at ¶ 26) As of March 4, 2024, the Kickstarter W ebsite state d that Defendants have ra ised $4,960,579 United States dollars by “3,774 backers” in connection with pre -orders of the accused products. (Id. at ¶ 2 5) The Kicks tart er website s tat e d that pre-order ed accused products w ere to ship in December 2023. (Id. at ¶ 27) In April 2023, Mr. Duvall and Mr. Pendas were both in attendance at the Specialty Coffee Expo (“SCA”) in the United States. (Id. at ¶ 29) Mr. P endas w as advertising and

5 marketing the accused products to potential customers at the SCA. (Id.) Mr. Duvall informed Mr. Pendas that the accused patents infringed several patents that Mr. Duvall owned. (Id. at ¶ 30) At Mr. Pendas’ request, Mr. Duvall sent Defendants a notice of patent infr ingement on June 22, 2023 which identified the '774 patent (the “no tice let ter”). (Id. at ¶¶ 30-31; id., ex. D) The not ice letter was sen t to Defendants at t heir Del aware mai ling ad dress es in Middl etown, Delawar e and Clay mont, Delawa re. (Id. at ¶ 31; id., ex. D) Additional r eleva nt factual allegations will be discussed below in Section III. B. Procedu ral Back groun d Duvall originally f iled this a ction in the U nited State s District Cou rt for the Southe rn District of Florida on October 11, 2023. (D.I. 1) Defendants moved to dismiss the case for, inter alia, improper venue, (D.I. 16), and on Janu ary 9, 2024, the case was trans ferred to thi s Dist rict pursuant to an agreement by the parties, (D.I. 25; D.I. 26). On March 25, 2024, Duvall filed th e operati ve F AC. (D.I. 43) The FAC alleg es that Defenda nts directly, ind irectly and w illfully infringe the asserted patents. (Id. at ¶¶ 63 -65, 71-73, 79-81) On April 8, 2024, Defendants filed the insta nt Motion, (D.I. 44), which was fully briefed as of April 2 9, 2024, (D.I. 53). On July 3, 2024, Defendants submitted a notice of subsequent authority. (D.I. 62) Defend ants als o moved to stay t he case pen ding r esolution of the Motion. (D.I. 50) On July 8, 2024, the Court ordered that the parties should proceed with certain initial deadlines such as initial disclosures, the submission of a protective order and ESI order, and identification of the accused products, but otherwise granted that motion, such that the ca se is currently stayed. (See D.I. 66 at 45-47)

6 II. LEGAL STANDARDS A. Rule 12(b)(2) Rule 12(b)(2) directs courts to dismiss a case when the court lacks personal jurisdiction over the defendant. Fed. R. Civ. P. 12(b)(2). Determining the existence of personal jurisdiction consists of a two - part analysis. Power Integrations, Inc. v. BCD Semiconductor Corp., 547 F. Supp. 2d 365, 369 (D. Del. 2008). First, the Court must consider whether a defe ndant’s actions come within any of the provisions of Delaware’s long- arm sta tute. See id.; Intel Corp. v. Broadcom Corp., 167 F. Supp. 2d 692, 700 (D. Del. 2001). Second, the Court must determine whether exercising jurisdiction over the defendant in Delawar e comports with the Due Process Claus e of the United States Constitution. See Power Integrations, 547 F. Supp. 2d at 369; Intel, 167 F. Supp. 2d at 700. Due process is satisfied where the court finds that “certain minimum contacts ” exist between the d efendant and the foru m stat e “such that the ma inten ance of th e suit does not offend traditional notions of fair play and substantial justice.” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (internal quotation marks and citations omitted). With res pect to t he firs t -step statutory inquiry, the Court applies the law of the state in which the district c ourt is located. See Power Integrations, 547 F. Supp. 2d at 369. For the second s tep d ue p rocess analysi s, the l aw of the U nited States Court of Appeals for the Federal Circuit applies. See Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564 (Fed. Cir. 1994); Pow er Integrations, 547 F. Supp. 2d at 369. Rule 8 does not require a plaintiff to set forth in the complaint “the grounds upon which the court has personal jurisdiction over the defendant.” Hansen v. Neumueller GmbH, 163 F.R.D. 471, 474 (D. Del. 1995). However, when a defendant moves to dismiss a lawsuit for lack of personal jurisdiction, the plaintiff bears the burden of showing the basis for jurisdiction.

7 Power Integrations, 547 F. Supp. 2d at 369. In a case like this one, where a district court has not held an evidentiary hearing, the plaintiff must only make a prima facie showing that personal jurisdiction e xists. See Pe rlight Solar Co. Ltd. v. Perlight Sales N. Am. LLC, C.A. No. 14-331- LPS, 2015 WL 5544966, at *2 (D. Del. Sept. 18, 2015); Hardwire, LLC v. Zero Int’l, Inc., Civil Action No. 14-54- LPS -CJB, 2014 WL 5144610, at *5 (D. Del. Oct. 14, 2014). To do so, the plaintiff mu st establish, with reason able particularity, sufficient co ntact s between t he defen dant and the forum state. Mellon Bank (E.) PSFS, Nat’l Ass’n v. Farino, 960 F.2d 1217, 1223 (3d Cir. 1992). All factual inferences to be drawn from the pleadings, affidavits and exhibits must be drawn in the plaintiff’s favor at this stage. Hardwire, 2014 WL 5144610, at *5 (citing cases); Power Integrations, 547 F. Supp. 2d at 369. B. Ru le 12(b)(6) The sufficiency of pleadings for non-fraud claims is governed by Rule 8, which requires “a shor t and plain statement of the claim sho wing that the ple ader is entitled to relie f[.]” Fed. R. Civ. P. 8(a)(2). When presented with a Rule 12(b)(6) motion to dismiss for failure to state a claim, a court cond ucts a two - part anal ysis. Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). First, t he cou rt separat es the f actual and l egal elemen ts of a claim, accepti ng “all of the complaint’ s well - pl eaded fac ts as true, but [disregarding] any legal conclusions.” Id. at 210- 11 (cita tion omitted). Second, the court determ ine s “whether t he fa cts all eged i n the comp laint are suffic ient to show that the plaintif f has a ‘plausible c laim for r elief.’” Id. at 211 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009)). 5 “A cla im has facia l plausibility w hen the pla intiff 5 In resolving a motion to dismiss, a court typically considers the allegations in the complaint, the exhibits attached thereto, documents or facts that are incorporated by reference into the comp laint or tha t are o therwise inte gral to the c omplaint ’ s a llegations, matte rs of pub lic record and items for which the court can take judicial notice. See Siwulec v. J.M. Adjustment Servs., LLC, 465 F. App’x 200, 202 (3d Cir. 2012); ING BANK, fsb v. PNC Fin. Servs. Grp., Inc., 629 F. Supp. 2d 351, 354 (D. Del. 2009).

8 pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)). In assessing the plausibility of a claim, the court must “construe the complaint in the light most favorable to the plaintiff, and determine whether, under any reasonable reading of the complaint, the plaintiff may be entitled to relief.” Fowler, 578 F.3d at 210 (quoting Phillips v. C nty. of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008)). III. DISCUSS ION With their Motion, Defend ants argue that the FAC must be dism issed as to them f o r several r easons. As for the claims against Mr. Pendas, Defendants argue that: (1) the FAC fails to state a claim of d irect infrin gement a gainst Mr. Penda s pursuant to Rule 12(b)(6), because it does not plead sufficient facts to pierce the corporate veil or plead any facts that make him personally liable for any infringement by Meticulous; and (2) Mr. Pendas should be dismissed for lack of personal jurisdiction pursuant to Rule 12(b)(2). (D. I. 45 at 6-10; D.I. 53 a t 1-4) And as for the claims against both Defendants, Defendants argue that: (1) the direct infringement claims fa il for all ass erte d patent s becaus e Meti culou s has nev er comm ercial ly launch ed a product anywhere, including in the United States; and (2) the ind irect infringeme nt clai ms for all asserted patent s fail b ecau se they ar e bareb ones; a nd (3) all claims regarding the '187 and '491 patents should be dismissed because the FAC’s allegations of direct infringeme nt are entir ely conclusory, and the FAC fails to plead that Defendants had knowledge of those patents as is required to support an allegation of indirect infringement or willfulness. (D.I. 45 at 10-20; D.I. 53 at 4-10) The Court takes up these (many) arguments in turn below. A. Claims Against Mr. Pendas 1. Does the FAC Plead Sufficie nt Fa cts to Hold Mr. Penda s Personally Liab le for Direct I nfri ngem ent?

9 The Court first considers whet her the FAC pleads sufficient facts to hold Mr. Pendas personally liable f or direct infringement. The crux of Defendants’ argument here is that in order to plausibly state a direct infringement claim against a corporate officer (such as Mr. Pendas), the patentee m ust ei ther: (1) plead factual alle gations suffic ient to pie rce the c orporate veil; or (2) plead that Mr. Pendas personally engaged in patent infringement—s eparat e and ap art from anything Mr. Pendas did in his corporate capacity for Meticulous. (D.I. 45 at 6; D.I. 53 at 1) Duvall, for its part, argues that a corporate officer may be pers onal ly liab le for dir ect infringement if the officer participated in the infringement, full stop—and that in such circumstances, the corporate veil need not be pierced. (D.I. 49 at 4) Nevertheless, Duvall also argues th at the FAC’s all egati ons sufficiently plead both th at Mr. P endas is the alter ego o f Meticulous and that he personally engaged in infringement. (Id. at 4 - 5) To resolve this dispute, the Court must fi rst ass ess the rel evant caselaw, whi ch can be a little tricky, at leas t a t first glance. The n it will turn to w hether the FAC’s allega tions ar e sufficient. a. Liab ility of Co rporate Officers for Dir ect Inf ring ement After a car eful r eview of the casel aw in this area, the Court agree s with Plaintiff that a corporate officer/owner may be personally liable for his own acts of direct infringement, e ven if he committed those ac ts as part of his work for th e corporation. “Patent infringe ment is a to rt [.] ” Wordtech Sys., Inc v. Integrated Networks Sols., Inc., 609 F.3d 1308, 1313 (Fed. Cir. 2010) (citation omitted). And as a general mat ter, “[c]o rp orate offi cers can be per sonal ly li able for their own acts of infringement, even if those acts were committed in their corporate capacity.” Lubby Holdings LLC v. Chung, 11 F.4th 1355, 1358 (Fed. Cir. 2021); see als o Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606 (3d Cir. 1978) (“A corporate officer is individually liable for

10 the torts he personally commits and cannot shield himself behind a corporation when he is an actual p articipant in th e tort.”). 6 Despite th e exist ence of t his otherwis e apparently well - settled principle, certain Federal Circuit opinions issued ove r the last many de cade s used language that could suggest that a plaintiff must pierce the corporate veil in order to hold corporate officers personally liable for direct infringement. For example, in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986), t he Federal Circuit recogn ized t he gen eral pri nciple noted a bove that “ officers of a corporation are personally liable for tortious conduct of the corporation if they personally took part in the commission of the tort or specifically directe d other officers, agents, or employees of the corporation to commit the tortious act.” 806 F.2d at 1579 (noting that “[t] he cases are legion in which courts have recognized and imposed personal liability on corporate officers for participating in, inducing, and approving acts of patent infringement ”) (citin g cases). Yet i n that sam e case, t he Fede ral Ci rcuit als o stated that “[t]o dete rmine wh ether co rporat e officers are personally liable for the direct infringement of the corporation under [35 U.S.C. § ] 271(a) [“Section 271(a)”] requires invocation of those general principles relating to piercing the corporat e veil.” Id. 7 6 The Feder al Ci rcuit has appl ied it s own law t o assess the exten t of a co rporat e office r/owner’ s liability for pa tent infr ingement. See, e.g., Lubby Holdings, 11 F.4th at 1358. However, with respect to the application of the corporate v eil d octrine i n gener al, the Feder al Circuit follows the law of th e regional circui t, becau se that doctrine is not unique to patent law. Wechs ler v. Macke Int ’l Trade, Inc., 486 F.3d 1286, 1295 (Fed. Cir. 2007); Pado, Inc. v. SG Trademark Holding Co., 537 F. Supp. 3d 414, 423 (E.D.N.Y. 2021). 7 In Orthokine tics, the plai ntiffs marketed and so ld a travel chair, and def endant Safety T ravel C hairs, Inc. (“ STC ”) began to sell similar chairs manufactured by Entron, Inc. (“ Entron”). Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1569 (Fed. Cir. 1986). The jury had returned a verdict, inter alia, f inding that t he corporat e o fficer d efendant s (Pivacek, Cole and Chipman) were pers onall y liab le for patent infringement. Id. at 1578. T he

11 Federa l Circuit de cisions that follow ed tended to state that for co rporate offi cers to b e personally liable for a corporation’s direct infringement, “there must be evidence to justify pi er cing the corporate veil.” Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 552-53 (Fed. Cir. 1990) (reversi ng a district cour t’s judgment finding that individual defendants were personally liable for direct infringement, where th e acts at issue w ere “ within the scope of their employment” and thus were protected by the corporate veil); 8 Al -Site Corp. v. VSI Int’ l, Inc., 174 F.3d 1308, 1331 (Fed. Cir. 1999) (“ Personal liability under § 271(a), however, requires sufficient evidence to justify piercing the corporate veil. ”); Wordtech Sys., Inc v. Integrated Networks Sols., Inc., 609 F.3d 1308, 1314 (Fed. Cir. 2010) (stating tha t “the ‘ corporate ve il’ shields a company’ s officer s from personal lia bility for direct infr ingement tha t the offic ers commit in the district co urt subsequently granted a judgment notwithstanding the verdict (“J NOV”), finding that the corporate officer defendants were not personally liable. Id. at 1567, 1570. The Feder al Ci rcuit rev ers ed the JNOV in thi s regard, determining that Pivacek, Co le and Chipman w ere personally l iable for d irect infring ement becaus e the fact s dem onstrat ed that: (1) Pivacek was the President and sole stockholder of Entron and had se lected i ts Bo ard of Direct ors, and was President of STC; (2) Pivacek, Cole and Chipman held STC’s directorships and owned all of its stoc k; (3) Pivacek, Cole and Chipman were directly re sponsible for the design and production of the accused products; and (4) Pivacek, Cole and Chipman “were the only ones who stood to benefit from sales of those chairs.” Id. at 1579. It is not clear if the Fe deral Circu it’s conclusion here was premised on piercing the corporate veil, as it did not explicitly mention that phrase in this portion of the opinion, nor did it ther e use the term “alter ego” (or c ite to the relevant factors that apply to such an analysis). Id.; see als o Symbol Techs., Inc. v. Metrologic Instruments, Inc., 771 F. Supp. 1390, 1403 (D.N.J. 1991) (observing that the Orthokine tics Court’s unsupported statement regardi ng pierci ng t he corpor ate veil was di cta, as the Court’s holding was not based upon piercing the corporate veil, and finding that “the long- establis hed rule th at a corp orate o fficer can b e liab le for direct infring ement wi thout piercing the corpo rate veil rem ains in effect”). 8 In support of the notion that patentees must pierce the corporate veil to hold corporate officers personally liable for direct infringement, the Manville Court cited only to A. Stucki Co. v. Worthington Indus., Inc., 849 F.2d 593 (Fed. Cir. 1988). Manville Sales Corp., 917 F.2d at 552. A. Stucki did not involve corporate officers at all, but instead concern ed t he liability of a parent corporation for the conduct of a corporate subsidiary. 849 F.2d at 594, 596.

12 name of the corporation, unless the corporation is the officers’ ‘alter ego [,] ’” and finding that “[i] n thi s case, th e jury ’ s verdi ct of Kh atemi an d Ass adian ’ s individual liability, de spite the lack of instructions on INSC’ s exist ence or pie rcing i ts corpo rate vei l, was p lain error that requi res a new tria l. ”). As a result of this line of cas e s, seve ral district cour t s have require d that a paten tee pierce th e corpor ate vei l in order to hold corporate officers personally liable for direct infringement (i.e., in scenarios where those officers committed w hat would otherwise be an act of patent infringement in the course of their corporate employment). See, e.g., Cal. Expanded Metal Prods. Co. v. Klein, 426 F. Supp. 3d 730, 753 n.10 & 755 (W.D. Wash. 2019) (rejecting the plaintif fs’ ar gument that defe ndant’s sole owner and officer could be held personally liable for patent infringement, where h e was responsible for essentially all of the corporation’s activities and authorize d and directed the infringement, stating that “[u] nder Fed eral Ci rcuit preceden t, [p] laintiffs must instead e stablish c ircumstance s that justify piercing Saf ti - Seal ’ s corporat e veil ”); see also MercAsia USA, Ltd. v. Jianqing Zhu, Case No. 3:17- CV -718 JD, 2018 WL 3833520, at *2 (N.D. Ind. Aug. 13, 2018). If Feder al Circu it prec edent regarding this issue ended there, perhaps the C ourt would fall in line with the se distric t courts. However, more r ecently in Lubby Holdings LLC v. Chung, 11 F.4th 1355 (Fed. Cir. 2021), the Federa l Circuit clea red things up. 9 In that case, the pla intiff 9 The Court notes that even before Lubby Holdings issued, some district courts found that piercing the veil was not required in order to find corporate officers personally liable for patent infringement—so long as the officers were personally involved in the infringing conduct at issue. See, e.g., Symbol Techs., Inc., 771 F. Supp. at 1402-03; D aimler AG v. A - Z Wheels L LC, 334 F. Supp. 3d 1087, 1106-07 (S.D. C al. 2018); Rain Gutter Pros, LLC v. MGP Mfg., LLC, No. C14-0458 RSM, 2015 WL 6030678, at *3 (W.D. Wash. Oct. 15, 2015); AllTech Commc ’ns, LLC v. TelWorx Commc’ns, LLC, No s. 08- CV -210- TCK -FHM, 09- CV -276- TCK, 2010 WL 3732150, at *3-4 (N.D. Okla. Sept. 20, 2010).

13 patentee (“Lubby”) had sued, inter alia, an individual defe ndant (“Mr. Chung ”) for p atent infringement. 11 F.4th at 1357 & n.1. Following trial, the jury returned a verdict finding Mr. Chung liable for direct infringement of the asserted patent, and the district court denied Mr. Chung’s post- trial motio ns. Id. at 1357-58. Mr. Chung appealed; one of his arguments was that he could not be liable for infringement based on acts that he took on behalf of his company “unless Lubby established that it was appropriate to pierce the corporate veil”—and that Lubby had presented no such evidence. Id. at 1358. The Fe deral Circuit re jected tha t argume nt, stating c learly th at “that is not the standar d” and reiterat ing t hat “[c]o rporat e officers can be p ers onally liable fo r their o wn acts of infringement, even if th ose act s were com mitt ed in their cor porat e capacit y.” Id. As for Mr. Chung, the Federal Circuit held that the fact that he “may have acted on behalf of his corporation does not excuse him from individual liability”— even though there was no evidence in the record to support piercing the corporate veil. Id. at 1358-59. The Court concluded that there was record evidence to support the jury’s verdict that Mr. Chung was liable for direct infringement, in light of testimony that he designed the accused products and sold them through his company. Id. at 1358. As for the role of the corporate veil in direct infringement inquiries involving corporate officers/ owners, the Lub by Holdings Court explained that the “rule [is] that a corporate officer— or perhaps only a corporate owner—cannot be found derivatively liable for the corporation’s infringement without piercing the corporate veil.” Id. (quoting Glob. Traf fic Tech s. LL C v. Morgan, 620 F. App’x 895, 908 n.6 (Fed. Cir. 2015)). Following Lubby Holdings, then, it seems clear that a corpo rate of ficer can be pe rsonally liable f or direct inf ringement, even if th e officer The parties here did not cite to Lubby Holdings in their briefing, (D.I. 45; D.I. 49; D.I. 53), but unless the Court is missing something, the opinion is key to understanding what is the right outcome here.

14 performed those acts while acting in his or her corpo rate capaci ty (e.g., whi le doing work on behalf of the corporation). 10 In arguing to the contrary—i.e., that a pat entee p leading direct infringement against a corpo rate of ficer must p lausib ly alleg e that t he corpo rate veil h as been pierced — D efend ants do not acknowl edge cas es li ke Lubby Holdings. (D.I. 45 at 6-7; D.I. 53 at 1-2) And that is fata l to their ar gument. b. The FAC’s Al legations With that now settled, the Court turns to Duvall ’s asser tion that the FAC sufficiently plead s that Mr. Pendas pers onally engaged in infringement of the ass erted patent s. (D.I. 49 at 4- 5) In support, (id.), Duvall poin ts to the follow ing a llegations: • Mr. Pendas was and is the sole owner, founder and Chief Executi ve Offi cer (“CEO ”) of Met iculou s. (D.I. 43 at ¶¶ 7, 34); • Mr. Pendas is the only owner, controlling officer, decision maker, and/or operator of Meticulous and the Meticulous W ebsite. (Id. at ¶ 17); • Mr. Pendas has “directly or indirectly filed and/or authorized corporate filings for Meticulous [.]” (Id. at ¶ 8); 10 In view of Lubby Holdings, a host of district courts have concluded the same. See, e.g., Resh, Inc. v. Conrad, Cas e No. 22- cv -01427-EJD, 2024 WL 4177944, at *9 (N.D. Cal. Sept. 11, 2024) (relying on Lubby Holdings to r eject the assertion tha t to plea d a corpo rate office r’s liability fo r direct inf ringeme nt, the patente e “must suf ficie ntly allege tha t Conrad Sr. committed an infringing act outside of his role as a corporate officer of RCI”); Pso - Rite.com L LC v. Thrival LLC, Civil Actio n No. 21- cv -00775- PAB -STV, 2024 WL 115124, at *7-8 (D. Colo. Jan. 10, 2024) (noting that “re cent cases from th e Federal Circui t. . . have held individuals liable for dire ct patent inf ringement e ven if the ir tortious ac ts were committe d as corpo rate office rs ” without piercing the corporate veil); Irritec USA, Inc. v. Valplastic USA, LLC, Case No. 5:22- cv - 00660- AB -SHK, 2023 WL 2626961, at *5 (C.D. Cal. Jan. 4, 2023) (“I t follows [from Lubby Holdings ] that Mr. Kundu could be found liable of any form of patent infringement so long as he personally participated in the infringing conduct. ”); BTL Indus., Inc. v. Rejuva Fresh LLC, No. 1:23- cv -00032-LEW, 2023 WL 6878616, at *3 (D. Me. Oct. 18, 2023) (rejecting the individual defendant’s argument that the direct and indirect infringement cla ims against her must be dismissed because plaintiff did not plead grounds to pierce the corporate veil, becaus e a corporate officer who directs, controls, ratifies, participates in or is the moving force behind infringing activity is personally liable for such infringement, without the need to pierc e the corporat e veil).

15 • Mr. Pendas is believed to be the creator and in control of the content of the Indiegogo and Kicks tarter W ebsite s. (Id. at ¶¶ 20, 25); • Mr. Pendas was “personally” advertising and marketing the accused products to prospective customers at the SCA in April 2023. (Id. at ¶ 29); • On December 11, 2023, Meticulous filed a certificate of interested persons for this lawsuit indicating that only Meticulous and Mr. Pendas would have an interest in a party to the acti on. (Id. at ¶ 35) Taking all of the FAC’s allegations together, P laintif f has plausibly alleged not only t hat Mr. Pen das was the CEO, sole owner and decis ion maker of Meticulous, but also that: (1) h e was the creator and controller of the above- referen ced websi tes that advert ised pre - orders of th e accused products, (see id. at ¶¶ 19, 22-23, 26); an d (2) he personally adver tis ed the accu sed products at the SCA. It certainly seems plausi ble t hat Mr. P endas, Meticulous ’ only operator and decisi onmaker, is the pe rson who ran the Met iculous- relat ed web sites t hat al legedly offered t he accused products for sale. And it also seems plausible that Mr. Pendas was at a convention where he was trying to sell those products to potential consumers— esp ecially if Mr. Duv all is said to have seen him there doing just that. So these allega tions —i.e., those asserting that Mr. Pendas personally participated in infringing conduct— are sufficient to e stablish a basis for Mr. Pendas to face suit for patent infringement. See Resh, Inc. v. Conrad, Case No. 22- cv -01427 - EJD, 2024 WL 4177944, at *8-9 (N.D. Cal. Sept. 11, 2024) (finding that the complaint plausibly pleaded direct infringement against the individual defendant Conrad Sr., where i t plead ed that he designed and made the infringing poles and personally appeared a t events including expos and trade shows to promote, offer for sale and sell the infringing poles); BTL Indus., Inc. v. Rejuva Fresh LLC, No. 1:23- cv -00032-LEW, 2023 WL 6878616, at *2-3 (D. Me. Oct. 18, 2023) (finding that the complain t stated pla usible cla ims of dire ct and indirect infringe ment aga inst the

16 sole m ember (“J acobs”) of th e corpor ate entit y (“ Rejuva Fr esh LLC ”), where t he pleading alleged that Jacobs was the moving, conscious and active force behind Rejuva Fresh’s infringing conduct—i.e., as its sole owner and officer who participated directly in responding to customer concerns and exercised sole authority over wholesale purchases, the importation of the accused products and the design and content of promotional materials); Rain Gutter Pros, LLC v. MGP Mfg., LLC, No. C14-0458 RSM, 2015 WL 6030678, at *1-3 (W.D. Wash. Oct. 15, 2015) (granting a motion to amend a pleading to add a coun terclaim of direct infringement against individuals Benjamin Hawes and Kyle Hawes, the controlling officers of the corporate entity (“RGP”), w here th e allegations demonstrated that they were the founders and owners of RGP and personally directed the infringing activity by controlling the design, development, marketing and sales of the accused products, including by bidding jobs for the sale and installation of the accused p roduct s). 11 11 That said, the Court does not agree with Duvall that it sufficiently pleaded that Mr. Pendas is merely an alter ego of Meticulous. (See D.I. 49 at 4-5) Becau se the corp orate form is typically respected, p iercing the co rporate veil i s an “extrao rdinar y remed y.” Round Rock Rsch. LLC v. ASUSTeK Comput. Inc., 967 F. Supp. 2d 969, 978 (D. Del. 2013) (internal quotation marks and citation omitted). The United States Court of Appeals for the Third Circuit has held that the corporate veil may be pierced pursuant to the alter ego theory: (1) when a court finds t hat th ere is a fund am ental lack of corp orate separat eness b etween t he ent ities; and (2) where this situation also presents an element of either fraud, injustice, or unfairness in the use of the corporate form. See Trs. of N at’l Elevator Indus. Pension, Health Benefit & Educ. Funds v. Lutyk, 332 F.3d 188, 194 (3d Cir. 2003); Bristol -Myers Squibb Co. v. Aurobindo Pharma USA Inc., C.A. No. 17-374- LPS (CONSOLIDATED), C.A. No. 17 -379-LPS, 2018 WL 5109836, at *4 (D. Del. Oct. 18, 2018). In the end, in order to succeed on an alter ego theory of liability, a plaintiff mu st establish th at in a ll aspec ts of the b usiness, the re levant ac tors “actually functioned as a single entity and should be treated as such.” Pearson v. Component Tech. Corp., 247 F.3d 471, 485 (3d Cir. 2001). The FAC do es not even u se the term “alt er ego[, ]” let al one add ress th e fact ors established by the Third Circuit that help to demonstrate a lack of corporat e separ atenes s (and thus, alter eg o liability). (See D.I. 53 at 2) Duvall cites to no caselaw supporting the idea th at simply being the sole owner and officer of a company, making filings and creating websites on behalf of that company, and advertising and marketing the company’s products at a conference

17 Defendants suggest (citing in significa nt part to a prior declaration of Mr. Pendas) tha t even if piercing the corporate veil is not required to hold Mr. Pendas personally liable for direct infringe ment, the FA C’s allega tions are still insufficie nt, because M r. Pend as is a resident of Mexico and the work designing the accused p rodu cts was done in Mexico. (D.I. 45 at 8 (citing D.I. 16-1)) But this seems to ignore: (1) the FAC’s allegations that, for example, Mr. Pendas personally advertised and marketed the accused products to prospective customers at the SCA in the United States, and that he contr ols website s that allow pre - order s of the accused product in U.S. dollars (offering a discount of 32% off the sales price of the products), (D.I. 43 at ¶¶ 11, 19- 27, 29); (2) Section 271(a) stat es that liability f or direct inf ringeme nt does not require making or selli ng the accus ed pro duct in the Un ited S tates, 35 U.S.C. § 271 (a) (“ who ever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the plausibly indic ates tha t the officer is t he alter ego of the company. See Unicorn Glob., Inc. v. Golabs, Inc., Civil Action No. 3:20- CV -02023-N, 2021 WL 4711149, at *1 (N.D. Tex. July 14, 2021) (holding that the complaint’s allega tions that an individual defe ndant was the CEO of the defendant and was personally involved with the making and selling of the infringing products did not plausibly establish alt er e go liability); cf. S ierra v. Trafigura T rading LLC, Civil A ction No. 22-366- JLH - CJB Consolidated, 2024 WL 3823018, at *12 (D. Del. Aug. 14, 2024) (concluding, as part of a general jur isdiction inquiry, that the pla intiffs f ailed to ma ke out a ca se for alter e go liability, whe re the ir “ pleading and associated evidence do not well address most or all of [the alter ego corporat e sepa rat eness ] f actors ”). However, because t he all egatio ns ot herwise plausibly plead Mr. Pendas’ personal involvement in the direct infringe ment at issue, this deficiency is not fatal to Duvall’s claims against Mr. Pendas. See R ain Gutter Pros, LLC, 2015 WL 6030678, at *3 (“ Given t hese alleg ati ons [establishing indi viduals’ personal involvement in infringement], there is no requirement that [d] efen dant all ege facts [in its counter claim] regarding piercing the corporate veil.”); Symbol Techs., Inc., 771 F. Supp at 1403 n.11 (“ The above discussion does not mean to imply that piercing the corporate veil is not a sufficient means of holding one liable for direct infringement but merely that piercing the corporate veil is not necessary for such a finding. ”); see als o Resh, Inc., 2024 WL 4177944, at *4, *8-9 (concluding that while the plaintif f failed to a llege su fficient fac ts that a corporate en tity was th e individual defendant’s alter ego, the plaintiff asserted facts su fficie nt to demonstrate that the individual defendant was personally liable for direct infringement).

18 patent ”) (emph asis add ed); and (3) that th e Court cannot take into account the content of an extra -complaint declaration filed by Mr. Pendas when resolving a Rule 12(b)(6) issue like this one, see Seake eper In c. v. Dometic C orp., No. 1:25- cv -00484, 2025 WL 32 68279, at *1 n.1 (D. Del. Nov. 24, 2025). 12 For these reasons, the Court denies the portion of the Motion arguing that Duvall fails to state a claim of direct infringement against Mr. Pendas under Rule 12(b)(6). 2. Does the F AC Estab lish Person al Juri sdicti on Over Mr. P end as in Delaware? Defend ants ’ next a ttack is that t he claims against Mr. Pen das, a resident of Mexico, should be dismissed because Duvall has failed to establish personal jurisdiction over him in Delawar e. (D. I. 45 at 9-10; D.I. 53 at 2-4; see als o D.I. 16, ex. 1 at ¶ 2) As was previously noted above, in the face of this challenge to personal jurisdiction, the Court must assess whether Duvall has made a prima facie showing that Mr. Pendas’ actions fall within th e scope of D elaware ’ s long-arm statute and comport with due process. Duvall asserts that the Court has personal jurisdiction over Mr. Pendas pursuant to subsections (c)(1)- (4) of the Delaw are long- arm s tatu te. (D.I. 49 at 5) Del aware ’s long- arm statute, Del. Code Ann. tit. 10, § 3104(c), in pertinent par t reads as follows: (c) As to a cause of action brought by any person arising from any of the act s enum erated in thi s sectio n, a court may exer cise personal jurisdic tion over any nonresident, or a personal representative, who in person or through an agent: (1) Transacts any business or performs any character of work or service i n the St ate; (2) Contracts to supply services or things in this State; 12 Defendant s’ rel ated argu ment t hat the FAC fails t o st ate claim s agains t both Defendants because Duvall does not identify any act of infringement under Section 271(a) will be discussed in more detail below.

19 (3) Causes tortious injury in the State by an act or omission in this State; or Causes tortious injury in the State or outside of the State by an act or omission outside the State if the person regularly does or solicits business, engages in any other persistent course of c onduct in the State or derives substantial revenue from services, or things used or consumed in the State[.] Del Code Ann. tit. 10, § 3104(c). 13 Delawar e’s lo ng -arm statute “is to be broadly construed to confer jurisdiction to the maximum extent possible under the Due Process Clause.” Hercules Inc. v. L eu Tr. & Banking (Bah.) Ltd., 611 A.2d 476, 480 (Del. 1992). The C o urt agrees with Duvall that at least sub section (c) (1) (“S ubs ectio n (c)(1) ”) of the Delawar e long - arm statute confers personal jurisdiction over Mr. Pendas in this case. The FAC alleges that Mr. Pendas t ran sacts bu siness in Dela ware as t he sole o wner of Meti c ulous (a Delawar e corporat ion), which (through the directi on and actions of Mr. Pendas) has market ed and secured p re -order s fo r the accused products around the wo rld, including in Delaware. (D.I. 43 at ¶¶ 6-9) 14 Defend ants respond that the FAC simply recites unsupported conclusions in this regard— i.e., that the FAC doesn’t identify p lausib le facts i ndicating that Mr. Pendas has actuall y engag ed in conduct that would subject him to personal jurisdiction in Delaware. (D.I. 53 at 3- 4) This 13 Subsections (c)(1) - (3) are specific jur isdiction pr ovisions; specif ic jurisdic tion may be est ablis hed if th e cause of actio n aris es from contacts with t he foru m. Monsanto Co. v. Syngenta Seeds, Inc., 443 F. Supp. 2d 636, 643 (D. Del. 2006). Subsection (c)(4) is a gene ral jurisdiction provision, which requires a gre ater ex tent o f contacts, but prov ides jurisdiction even when the claim is unrelated to the forum contacts. Id. 14 Defendants argue that Duvall’s FAC did not plead jurisdi ction under the Del aware long- arm statute. (D.I. 53 at 2-3; see als o D.I. 45 at 9) It is true that the FAC does not expressly referenc e the D elawar e long - arm statute. (See D.I. 43) But that is not fata l to Duvall’ s claims against Mr. Pend as here, becaus e as noted above, Rule 8 does not include a requirement “of a statement setting forth the grounds upon which the court has personal jurisdiction over the defendant.” Hansen, 163 F.R.D. at 474.

20 argument is not persuasive because t he FAC al leges several facts demonstrating that Mr. Pendas has engaged in the conduct at issue. For exam ple, the FAC pleads that in connection with the Statement of Use for the Meticulous mark, Defendants attached pictures of the accused products in shipping boxes and other displays which shows that they were “actually being used in feder al com merce [.]” (D.I. 43 at ¶ 13) Rel atedly, the F AC also alleges t hat in the Stat ement of Use, Mr. Pendas attest ed that the Meticulous mark was used in federal commerce with respect to the accused products by February 2023. (Id. at ¶ 14) And the FAC makes other a llegations that not only sol idify the inference that Meticulous has offered the accused products for sale, but that it has done so throughout the United States (and that it is likely that this has included offers for sale involving pre - orders made in D elaware): (1) Meticulous sells the accused products through several interact ive web sites, with at le ast the K ickstar ter W ebsit e stati ng that the accu sed produ cts can be shipped anywhere in the world; (2) Mr. Pendas owns, controls and operates the Meticulous Website, and creates and controls the contents relating to the accused products on the Indiegogo and Kick s tarter W ebsites; (3) the Metic ulous Website provides a De laware phone number and address if customers would like to contact Defendants; (4) Defend ants hav e raised money (totaling more than 10 million dollar s) through these we bsites by backers, with at least one such backer b elieved t o be lo cated in Delaw are; (5) the Kickstarter and I ndiegogo W ebsites enabl e users to pre - order t he accused products and at leas t a portion of the funds received are be lieved to be from customers in Delaware; and (6) the Indiegogo W ebsite st ates t hat the ac cused products have been advertised by several t hird pa rties b elieved t o mark et and advertis e to consum ers in Del aware. (Id. at ¶¶ 16 -28)

21 In light of the above, it makes sense that among the millions of dollars of pre- orders of Defendants’ products were some from customers in the State of Delaware. And so the above amounts to plausible allegation s that Mr. Pendas t ransact ed business or perform ed wo rk or services in Del aware that is related to the claims at issue in this case, satisfying Subs ection (c)(1). S ee, e.g., Westpa rk El ecs. LL C v. EDeal er L LC, Cas e No. 22 cv 4327 (EP) (JSA), 2023 WL 5321053, at *3-6 (D.N.J. Aug. 17, 2023) (finding th at an i ndividual defendant who wa s the owner and manager of the corporate entity (“EDealer”) that controlled, authorized and approved EDeale r’s condu ct, had pu rposeful ly direct ed act ivi ties at N ew Jersey where, inter alia, the accused products were sold on Amazon, a third- party webs ite, which reflected a decision to participate in and profit from a worldwide market); Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., Civil Action N o. 15-634- SLR -SRF, 2016 WL 4413140, at *5 (D. Del. Aug. 17, 2016) (finding that the record indicated that two defenda nts made dire ct sales of the a ccused products to Delaware customers through their websites, and that this was sufficient to satisfy Subs ectio n (c)(1)), report and recommendation adopted, 2016 WL 57236 53 (D. Del. Sept. 29, 2016). 15 Defend ants then briefl y retort (i.e., in only one sent ence in th eir repl y brief) th at these allegations do not expose Mr. Pendas to the Court’s personal jurisdiction because the conduct at issue is protected under the fiduciary shield doctrine. (D.I. 53 at 3) “The fiduciary shield doctrine is a judicially created doctrine that immunizes acts performed by an individual in the 15 The Court also conclude s that exercising jurisdiction over Mr. Pendas would comport with due process. By incorporating his company in Delaware, directing consumers to contact Defendants through a Delaware phone number or Delaware address on the Meticulous website, and raising funds from at least one backer believed to be in Delaware, Mr. Pendas should have had fair warning that he c ould be haled into court here. See, e.g., Westp ark Elecs. LLC, 2023 WL 5321053, at *5- 6.

22 individual’ s capacit y as a corporat e empl oyee fro m serv ing as t he foundat ion for the ex ercise o f personal jurisdiction over that individual. ” Res. Ventures, Inc. v. Res. Mgmt. Int’l, Inc., 42 F. Supp. 2d 423, 433-34 (D. Del. 1999). As explained above, Duvall is not alleging that Mr. Pendas is liable for infringement committed by M eticulous; in stead, it alleges that Mr. Penda s himself is also personally liable for a tort: i.e., patent infringement. And there are many reasons why the Court declines to find that the fiduciary shield doctrine would protect Mr. Pendas from being subject to personal jurisdiction in this patent infringement suit. For one thing, to the extent Delaware law is relevant here, there is real doubt as to whether Delaware would even re cognize the fiduciary shield doctrine in this context. See Mobil Oil Corp. v. Advanced Env’ t Recycli ng T echs., Inc., 833 F. Supp. 437, 443 (D. Del. 1993) (concluding that “the Supreme Court of Delaware would not recognize the fiduciary shield as an absolute bar to personal jurisdiction over a c orporate employ ee”); CH Assocs. XI, LLC v. 1102 W. St., LP, C.A. No. N24C-09-260 FWW, 2025 WL 671767, at *3-4 (Del. Super. Ct. Mar. 3, 2025) (“ When viewed fr om the forgoing perspective, there appears to be very little support for the fiduciary shield doctrine. If it is not de ad, it is at best on life support. Certainly its sta tus as ‘good law’ is in considerable doubt. Accordingly, the Court approaches the issue of whether Delaware has personal jurisdiction over Ciccone from the perspecti ve of t he legi slat ively creat ed long - arm statute ra ther tha n the judicially c reated fiduciary shield doctrine. ”) (rev iewing c aselaw). Additionally, other judicia l opinions state that the doctrine is not applicable with regard to the personal jurisdiction inquiry in a matter where (as her e) a defend ant i s all eged to hav e commi tted an intentional to rt. See, e.g., Auto Wax Co. v. Marchese, No. CIV.A. 301CV2571M, 2002 WL 1558376, at *3 (N.D. Tex. July 15, 2002) (noting this principle in a pate nt litigation matte r); Glob. 360, Inc. v. Spittin' Image Software,

23 Inc., No. CIV.A3:04- CV -1857-L, 2005 WL 625493, at *7 (N.D. Tex. Mar. 17, 2005) (same). Moreover, in at least one opinion, the Federal Circuit (albeit witho ut making e xplicit re ference to the name o f the do ctrine) has seem ed to r eject th e concept that the fidu ciary shield doctrine could apply in a s ituation like th is. See Campbell Pet Co. v. Miale, 542 F.3d 879, 889 (Fed. Cir. 2008) (rejecting the defendants’ argument that an individual defendant’s conduct at a conve ntion in the forum state could not serve as the basis for exercising personal jurisdiction over her because she was “ acti ng in h er offici al cap acity ” as company president and not in her “ p ersonal capacit y [,]” and noting that the argument was “without merit”); Dehn ’s Innovations LL C v. Total Imp. Sols., Inc., Civil Action No. 3:11- CV -3042-N, 2012 WL 13019681, at *6 (N.D. Tex. Aug. 29, 2012) (citing Campbell for the proposition that the Federal Circuit “does not apply [the fiduciary shield doctrine]”); UATP IP, LLC v. Kangaroo, LLC, Civil Actio n H-21-2478, 2022 WL 1644592, at *1 & n.4 (S.D. Tex. May 24, 2022) (same, and stat ing th at “[b]ec ause thi s case ari ses und er a patent c laim, the do ctrine is inapp licable ”)); but see Grober v. Mako Prods., Inc., 686 F.3d 1335, 1347 (Fed. Cir. 2012). Lastly, many other courts have done the same. 16 In the end, for the reasons set out above, the Court will not apply the doctrine in this circumstance. 16 See POWERbahn, LLC v. Found. Fitness LLC, C IVIL ACTION NO. 1:17 - cv - 2965-AT, 1:19- cv -1678- AT, 2020 WL 1467248, at *8 (N.D. Ga. Jan. 29, 2020) (explaining that “the fiduciary shield doctrine does not insulate Mr. Warner from this Cour t’ s exer cise of personal jurisdiction [,]” where the plaintiff alle ged that “Mr. Warner himself committed an intentional tort through his contacts with Georgia”); ProSource Discounts, Inc. v. Dye, Case No. 2:19- cv -00489- AB -JC, 2019 WL 6729702, at *3-4 (C.D. Cal. July 23, 2019) (rejecting the defendant’s argument that under the fiduciary shield doctrine, his conduct did not expose him to personal jurisdiction in California because his conduct was in his capacity as a cor porate officer, and calling this argument a “red herring, b ecause [the defen dant ] can be held liable for tortious conduct even in his official capacity if he was the moving force behind the corporation’s tortious conduct ”); see also Airhawk Int’l, LLC v. Air Seat Innovations LLC, Case No. 3:23- cv -1068- AGS -BLM, 2024 WL 4048863, at *4 (S.D. Cal. Sept. 4, 2024) (noting that a corporate officer’s contacts on behalf of a corporation can be sufficient to subject the officer to personal jurisdiction, where the officer is a primary participant in the alleged wrongdoing or controlled the alleged activities —and doing so in response to defendant’s argument that his acts in an official capacity

24 For these reasons, the FAC plausibly pleads that Mr. Pendas is subject to this Court’s personal jurisdiction. Defendants’ Motion in this regard is therefore denied. B. Suffic ient A lleg ations o f Infr inge ment and Rule 12(b)(6) The Court now turns to Defendan ts ’ various arguments about the sufficiency of Duvall’s claims against both Defendants. 1. Acts of Di rect In fringe men t Defend ants first argue t hat the FAC fails to plead dire ct infr ingement claims agai nst both Defendants because they have not commercially launched a product anywhere in the world. (D.I. 45 at 10-13; D.I. 53 at 4- 7) But a reading of Section 271(a) easily es tablishes tha t this f act is not necessari ly fatal to Duvall’s d irect inf ringement c laims. That’s b ecause, a s Duvall retorts, a finding of direct infringement does not require actual sales. (D.I. 49 at 8-9) Rather, as the Court previously noted above, Section 271(a) also provid es that making, using, or offering to sell any patente d invention within th e United Sta tes, or importing into the United States a ny pate nted invention, constitutes infringement. 35 U.S.C. § 271(a); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1573 (Fed. Cir. 1996) (“T he pat ent statute grants the patentee the right to exclude others from making, using, or selling the patented subject ma tter. . . . Any of these activities during the patent term is an infringement of the pate nt right. ”) (emphas is add ed); FutureLogic, Inc. v. TransAct Techs. Inc., Case No. CV 05-3754 MMM (CT x), 2007 WL 9700730, at *15 (C.D. Cal. Aug. 2, 2007) (“ Even if these prototypes have nev er been o ffered for s ale, the m ere ‘making’ of an infringing device is actionable under 35 U.S.C. § 271. ”). for corporate entity cannot be attributable to him as individual acts creating personal jurisdiction).

25 As the Court has already set out, t he FAC suf ficiently alle ge s the commission of non- sale infringing acts. (D.I. 49 at 9) For exampl e, the FAC al leges th at custo mers can pre -order the accused p ro duc ts on the Indiegogo W ebsit e and th e Kickst arter Websites. (D.I. 43 at ¶¶ 19, 26) And w ith respe ct to the se pre - ord ers, the FAC also alleg es that: (1) the Ki ckstart er W ebsit e states that Meticulous ships anywhere in the world; (2) customer s that pre- order the accu sed products receive at least 32% off of the sales price of $2,000 for each of the accused products; (3) after a custom er pre - o rder s an accused product from the Indiegogo websit e, it is later shipped to the custo mer; (4) Defen dan ts hav e colle cted ov er 10 million dollars in associa tion with these pre - order s; an d (5) t he Ki ckstarter W ebsite sta te d that, as of May 2023, the accus ed pro ducts were exp ected t o ship to consumers in December 2023. (Id. at ¶¶ 16 -23, 25-27) An offer for sale under Section 271(a) “requires no more than a commercial offer for sale.” Rote c Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1254 (Fed. Cir. 2000). The policy underlying imposing liability for offers to sell under Section 271(a) includes “preventing a competitor from generating interest [] in a potential infringing product to the commercial detrimen t of the rig htful patente e.” Id. at 1255 n.3; see al so 3D Sys., Inc. v. Aarotech Lab’ ys, Inc., 160 F.3d 1373, 1379 (Fed. Cir. 1998). The FA C’s allegations — stating that Defendants amassed o ver 10 million dollars in pre - ord er s of their products, which were offered by Defend ants for a p articu lar (discounted) s ales pric e, and as to which (at least at times) Defend ants ref erenced a then -expected shipping date — plaus ibly al lege that Defend ants were offering the accused products for sale. 17 See, e.g., 3D Sys., Inc., 160 F.3d at 1 378-79 17 Defendant s argue th at D uvall did not allege an o ffer fo r sale as an act of infringement in the FAC. (D.I. 53 at 5) It is tru e that t he FAC alleg es th at Defen dants have directly infringed by “ at least, selling, manufacturing, using, importing, and marketing the” accused p roduct s without spec ifically also using the words “offering for sale.” (D.I. 43 at ¶¶ 62, 70, 78) But the not ice lett er attach ed to t he FAC s tates th at Defen dants ar e “offe ring fo r sale”

26 (concluding that price quotation letters were offers for sale unde r Secti on 271(a), despi te the fa ct that the le tters stated on t heir fa ce that t hey w ere not offers, wh ere the letters also contained a “description of the allegedly infringing merchandise and the price at which it can be purchased” and thus “generat[ed] interest in a potential infringing product to the commercia l detriment of the rightful patentee”); Sitrick v. Freehand Sys., Inc., No. 02 C 1568, 2002 WL 31443128, *1, *4-5 (N.D. Ill. Oct. 30, 2002) (finding that the defendant’s conduct constituted an “offer to sell” under Section 271(a), where “ the brochures that Hamilton personally gave to a member of the Chicago Lyric Opera while in Illinois contained a detailed description of the accused device and its purchase p rice [,] ” and where interested persons woul d “reserve” units by placing a reservation, providing credit card or check information and receiving an estimated shipping date—e ven though the accused p rod uct was then under development and not in full-scale production). In arguing to the contrary, Defendants point out that the Kickstarter and Indiegogo W ebsites both state that backing a product is not the same as “buying an existing item in a store and as such receiving a reward in return for pledging is not guaranteed” and that the “machine is not yet ready for mass production.” (D.I. 45 at 10-11 (citing D.I. 41, ex. 1 at 5, ex. 2 at 4, ex. 3 at 1, ex. 4); see also D. I. 53 at 7) But th e force of this argument is blunted by the two cases the Court has cited above. In 3D Sys., Inc. v. Aarotech Lab’ ys, Inc., 160 F.3d 1373 (Fed. Cir. 1998), the Federal Circuit found that to treat price quotation letters as anything other than of fers to sell — ev en despite the fact that the le tters sta ted on thei r face th at they we re not offers for s ale — “would be to exalt form over substance. ” 160 F.3d at 1379; see als o Seake eper Inc., 2025 WL 3268279, at *2. And in Sitri ck v. Freehand Syst ems, I nc., No. 02 C 1568, 2002 WL 31443128, and “possibly selling” the accused products; constru ing the F AC’s alle gations in the light most favorable to Duvall, as the Court must at this stage, the Court finds that Duvall sufficie ntly allege s “of fers for s ale.” (Id., ex. D at 2)

27 (N.D. Ill. Oct. 30, 2002), the fact that the accused product was not in full-scale production did not stop the Sitrick Court from finding tha t the brochures at issue constituted offers for sale, where the defendant allowed interested persons to “reserve” the accused products by providing financ ial informa tion through a toll- free numb er. 2002 WL 31443128, * 1, * 4-5. Whi le Defend ants att empt to charact eriz e the accu sed pro ducts as merely “ ephem eral ideas o f a product” and not real products, (D.I. 53 at 7), the FAC demonstrates that the accused espresso machines were f ar more t han an id ea. To that end, the FAC includes: (1) d epictions of the accused p roduct s being displayed and plac ed in shipping boxes at a conference; and (2) additional depictions of the products on the Indiegogo and Kickstarter We bsites. (D.I. 43 at ¶¶ 13, 21, 25, 51) 18 In addition —and after reading the FAC’s allegations in the light most favorable to Duva ll and drawi ng all r easonab le inf erences i n its fav or —the Court also finds that th e FAC suffi ciently pleads t hat the ac cused p roduct s were ei ther m ade in the U nited State s or that Defendants 18 Defendants cite to QR Spex, Inc. v. Motorola, Inc., 507 F. Supp. 2d 650 (E.D. Tex. 2007) as the only case of which they are aware that addr esses wh ether pre - ord er s are “o ffers for sale” that would count under Section 271(a); Defendant s state that QR Spex found that they are not. (D.I. 53 at 7) But whatever t he m erit of t he QR Spex Court’s conclusion in that regard, the facts of that case are dist ingui shable. The re, the “terms on [the subject] website surrounding the pre-orders were indefinite and lacked key details such as delivery terms.” 507 F. Supp. 2d at 660 (further finding that website inviting pre -orders did not constitute an offer for sale sufficient to create p ersonal j urisdi cti on in Tex as, where t here was no evi dence t hat an y Texas resi dent even plac ed a pre- ord er). Here, agai n, it is alleged that Defendants provided consumers with a specific percentage discount off of a $2,000 sales price, and that the Kickst arter W ebs ite at on e point informed customers that the accused product “is set to ship in December” 2023. (D.I. 43 at ¶¶ 22, 27) T here is n o indication tha t the webs ite s otherw ise lack ed key d etail s. See also, e.g., Strategic Operations, Inc. v. Joseph, Case No.: 17 - CV -1539-JLS (NLS), 2018 WL 3833411, at *3 (S.D. Cal. Aug. 13, 2018) (finding that a complaint a lleged tha t a posting was an invitation for offers instead of an offer for sale under Section 271(a), where “[t ] here is no information on pricing of the product; instead the post specifically invites the consumer to send an ema il to request pricing information ”). Indeed, here a significant number of pre - orde r s were in fact allegedl y placed, su fficient to ra ise over 10 million in funds. (D.I. 43 a t ¶¶ 20, 25)

28 imported them into the United States. (D.I. 49 at 12-13) While the FAC does not expressly allege wh ere the accus ed prod ucts wer e made, t he all egation s make cle ar th at Mr. P endas was advertising and marketing the accused products to prospective customers at the 2023 SCA, which took place in the United States. (D.I. 43 at ¶¶ 13, 29; see also D.I. 45 at 12 (Defendants acknowledging that “Meticulous transported a prototype to tradeshows” including the SCA)) And so, as Duvall points out, the fact that Defendants transported and displayed the accused product s at trades hows in the U nited S tates “m eans t hat tho se [a]ccus ed [p]roducts must have either been (a) made in the U.S. directly, or (b) made abroad and imported in the U.S. in time for the tradeshows.” (D.I. 49 at 12-13); Zoltek Corp. v. United States, 672 F.3d 1309, 1326 (Fe d. Cir. 2012) (“ Importation occurs when the product crosses the Unit ed Stat es ’ border [.]”); Largan Precision Co v. Genius Elec. Optical Co., 86 F. Supp. 3d 1105, 1114-16 (N.D. Cal. 2015) (finding that a defendant that shipped a small number of product samples into the United States imported those products into the country under the meaning of Section 271(a)). For these reasons, the Court finds that the FAC plausibly alleges a viable t ype (i.e., offering for sale, or making/importing) of direct inf ringeme nt claim a gainst Defe ndants. 19 This aspect of the Motion is therefore denied. 2. Ind irect Infri ngem ent Next, De fendants a ssert that Duv all’s indir ect infr ingement cla ims with respec t to all asserted patent s sh ould be dismis sed. On that score, D efendants argue that the indirect infrin gement cl aims ar e barebo nes, in that th ey al lege only that Defendants “instructed [their] 19 In light of the Court’s conclusions here, it need not address Duvall’s assertion that the plead ed facts sufficiently allege “use” of the accused products. (D.I. 49 at 9, 12-13)

29 customers to utilize the [a]ccused [p]roducts in an infringing manner.” (D.I. 45 at 14 (citing D.I. 43 at ¶¶ 64, 72, 80)) The Cou rt easil y agrees with Defendants here. For one thing, the FAC isn’t even very clear that in it, Duv all is actually trying to plead indire ct infringement. Each Count, after a ll, is simply title d “Willfu l Direc t Infringement of [each assert ed paten t.]” (D.I. 43 at 19-21) And each Count initially sta tes that “ [t]his is an action for direct patent inf ringement pursuant to” Section 271(a). (Id. at ¶¶ 61, 69, 77 (emphasi s added)) Indeed, in the one paragraph per Count that uses the phrase “indirectly infringing[,]” Duvall didn’t even explic itly identify which type of indirec t infringe ment is supposed to be at issue. (See, e.g., id. at ¶¶ 64, 72, 80); see also T onal Sys., Inc. v. ICON Health & Fitness, Inc., Civil Action No. 20-1197- LPS, 2021 WL 1785072, at *2 n.2 (D. Del. May 5, 2021) (“A note to patentees bringing claims in our Court: . . . If you are pleading ‘induced infringement’ or ‘contributory infringement’ then somewhere in the counts/cla ims: (1) actua lly use those words (or variations thereof); (2) make some reference to the eleme nts of those claims; and (3) plea d facts relating to those eleme nts. ”), report and recommendation adopted, 2021 WL 5860783 (D. Del. Aug. 12, 2021). In its answering brief, Duvall clarifie s that it intend ed to plead induce d infringement in the FAC. (D.I. 49 at 13) A party asserting a cla im of induced infringement must plead facts plausibly demonstrating that there has been direct infringement, and that “the alleged inducer knew of the patent, knowingly induced the infringing acts, and possessed a specific intent to encourage another’s infringement of the patent.” Vita -Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). The FAC does not meet this standard, nor even try very hard to meet it. For one thing, there a re no fact s plead ed t hat demon strate t hat Defendants’ customers (or some other third-party

30 direct in fringer) ac tually utilized the ac cused products in an infringing manner. Nor are the re any facts pl eaded about the instructions provided to customers /third - parties that would demonstrate Defendants’ intent to induce infringement. Again, the Counts instead say only that Defendants have “instructed its [sic] consumers to utilize the Accused Products in an infringing manner[.]” (See, e.g., D.I. 43 at ¶ 64) Th is type of conclusory allegation is f atal to Duv all’s induced infringement claims. See, e.g., Clevelan d Med. D evices In c. v. R esMed Inc., 696 F. Supp. 3d 4, 13 (D. Del. 2023) (“ CleveMed does not explain what ResMed purportedly provides in its ‘instructions to customers that re sulted in infringing use’ . . . —an omission t hat further discourages this Court to find CleveMed’ s cla ims well -pled. ”); Bench Walk Lighting LLC v. LG Innotek Co., 530 F. Supp. 3d 468, 490-91 (D. Del. 2021) (“ Plaintiff ’ s allegations provide Defendants with insufficient notice about what it is they did that amounts to encoura gement of infringement of the 10 patents- in -suit. Plaintiff ’s inducement claims should be dismissed as a result. ”). 3. Direct In frin gement of the '187 and '491 P a tents Defendants’ next argument is that the FAC’s claims of direct inf ringeme nt with respec t to the '187 and '491 patents fail becaus e the FAC ’s map ping of the claim elem ents of t hese patent s to the accused products is “entirely conclusory” and in many instances “directly contradicted by the ver y materials it c ites.” (D.I. 4 5 at 14 -15; see al so D.I. 53 at 8-9) 20 A complaint sufficiently pleads direct infringement when the allegations provide the defendant with “fair notice of infringement of the asserted patents.” Disc Disease Sols. Inc. v. 20 The Court notes that Duvall’s answering brief on this issue was entirely unhelpful and very frustrating, as it made no real attempt to engage with the specifics of Defendants’ arguments, nor discuss the FAC’s allegations as to the particular claim limit ations a t issue in an y meaningful way. (D.I. 49 at 14-16; D.I. 53 at 8 (Defendants noting the same))

31 VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018). At the pleading stage, a plaintiff is not required to prove its case, Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018), and “[s]p ecific facts are not necessary t o suppo rt ever y alleg ation in the co mplai nt[,]” AlexSam, Inc. v. Aetna, Inc., 119 F.4th 27, 39 (Fed. Cir. 2024) (internal quotation marks and citation omitted). Rather, the complaint must contain “some factual allegations that, when taken as true, articula te why it is p lausible tha t the ac cused product in fringes th e pate nt claim.” Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir. 2021). A plain tiff th erefor e cannot as sert a plausible c laim for infringemen t by “reciting the claim ele ments and me rely conc luding that the accused p roduct has thos e elem ents.” Id. But a plaintiff need not “plead infringement on an element -by- element basi s.” Id. at 1352. The Federal Circui t has expl aine d that “[t]he lev el of detail required in any given case will vary depending upon a number of fac tors, including the complexity of the technology, the materiality of any given element to practicing the asserted claim(s), and the nature o f the allegedly infringing device.” Id. at 1353; see al so AlexSa m, 119 F.4th at 39. 21 Defend ants rais e three r easo ns why Du vall’s alleg ations as to th ese patent s are insuffic ient to plaus ibly asser t direc t infringement of the asser ted claims. In the Court’s view, one of the three reasons suffices to warrant grant of the Motion in some respect, and so the Court will take that reason up first. All of the a sserted cl aim s of the '491 patent and claim 1 of the '187 patent require th e claimed s ystem to “mod ulate an d maintain th e flow of the solvent . . . without the use of a 21 The law of the Federal Circuit applies to the question of whether a complaint states a p lausible c laim of paten t infringe ment. AlexSam, 119 F.4th at 35.

32 feedback mechanism for monitoring the flow of the solvent.” (D.I. 43 at ¶¶ 53, 56) 22 The FAC facially alleg es that t he accus ed produ cts ar e confi gured in such a w ay (i.e., via their pump/piston configuration) to change or maintain a flow of solvent without using a feedb ack mech anism l ike a sensor. (Id. at ¶¶ 52 -53, 55-56) Yet th e imag es of the ac cused pro duct s in th e FAC indi cate that the produc ts include “10 digital sensors [.] ” (Id. at ¶¶ 53, 56) A nd th e Kickst arter and Indiegogo W ebsites ex plai n that these digital sensors “monitor every variable during extraction, including . . . flow rate” and that a “scale works with the flow sensor to know exactly how much water is going through the coffee and into the cup, adjusting its flow and stopping the sho t for exactly t he right brew rat io. ” (D. I. 46, ex. 1 at 4-5, ex. 2 at 4-5) 23 On its face, then, this content seem s to contradict the idea that the c laimed system modu lates or maintains “ the flow o f the solvent . . . without the use of a feedback mechanism for monitoring the flow of the solvent.” And the FAC’s allegatio ns do nothing to help explain how or why it is the case that the system’s pump monitors the flow of the solvent without the use of a senso r, (s ee, e.g., D.I. 43 at ¶¶ 53 (bottom right figure), 56 (bottom right figure)), in light of the f act tha t th e syst em has 10 digit al sensors that monitor the flow of the solvent, (see D.I. 49 at 14-16). For these reasons, the F AC’s allegations do not plausibly state direct infringement of claim 1 of the '187 patent and th e asserted claim s of the '49 1 patents. See, e.g., Bot M8 LLC, 4 F.4th at 1354 (agreeing with the district co urt that the plaintif f had failed to provide factual allegations supporting a plausible 22 Asserted cla ims 8 and 16 of the '187 patent do not include this limita tion, so this argument doe sn’t apply to these claims. (D.I. 43 at ¶ 54; id., ex. B at col. 18:15-31, cols. 19:16- 20:8) 23 In its opening brief, Defendants assert that these webpages may be considered by the Co urt because Duval l cit es them i n the FAC in ord er to make out its claims. (D.I. 45 at 11 n.5 (citing cases)) Duvall does not dispute this in its answering brief. (D.I. 49 at 14-16)

33 inferen ce of inf ringem ent, wh ere the cl aim requ ire d that a g ame prog ram an d authent icatio n program be stored together separate from the motherboard, but the complaint pleaded that the authentication program of the accused product was located on the motherboard itself); cf. Champion Power Equip., Inc. v. Generac Power Sys., Inc., 764 F. Supp. 3d 773, 778 (E.D. Wis. 2025) (“ In a case like this, more details about how the accused product embodies the claim language would be needed only if there were an apparent contradiction between the claims and what the complaint alleges about the accused product. For example, if the patents appeared to claim pressure washers, more details would be needed to explain how an accused portable generato r plaus ibly s atisfi es the clai m langu age.”). 24 The Court is not persuaded that Defendants’ other two reasons for dismissal demonstrate why the FAC’s allegations of direct infringement of the '187 and '491 pa tents are implausible. It takes up those two reasons below. Defend ants ’ second reason for dismissal is that Duvall’s alleg ations are “internally inconsistent” becaus e: (1) t he ' 774 patent h as a limitation requir ing a heating element “outside of fluid conta ct with the solvent” (the “o utside of fluid conta ct” limita tion); (2) in the FA C, Duvall points to the accused p roduct ’s temperature control func tionality as me eting this limi tation; a nd yet (3) the '491 pat ent has a limitation requiring a temperature modulation system be “in fluid communica tion with the solvent flow manage ment system” (the “in f luid communicatio n” limitation); a nd (4) Duvall also points to this same functionality (i.e., the temperature control functiona lity) as me eting the in fluid communica tion limitation. (D.I. 45 at 17 (citing D.I. 43 at 24 The Court is not saying that Duvall could never plead a plausible claim in light of this issue. It is just saying that the FAC’s broad allegations appear to be contrad icted by t he clear assertions in the record stating that the accused products contain sensors that monitor the flow of the solvent— and so th e claim as c urrently pleaded is not plausible.

34 ¶¶ 51, 56); D.I. 53 at 8) Defendants say this is problematic because Duvall “does not explain how the same component can be both outside of fluid contact for pur poses of the '774 patent, and in fluid communication for purposes of the '491 patent.” (D.I. 45 at 17) But the Court does not understand why a component being outside of f luid contact with the sol vent (such as wat er) is i rrecon cilable wi th t he idea of that component being in fluid communica tion with the solvent flow manage ment system. In other words, it seems possible to the Court that a component can be outside of contact with the water but still in communication with the system as a w hole. 25 This p articular argum ent seems one bette r sui ted for cl aim construction than the pleading stage. See, e.g., Woodstream Corp. v. Bird Buddy, Inc., No. 1:24- cv -01236, 2025 WL 2432506, at *3-4 (D. Del. Aug. 22, 2025). Defend ants ’ thi rd reason for dismissal is that: (1) the F AC fails to show how the accused product meets the c laim limitation in the '187 a nd '491 patents that requires the solvent flow manage ment system to “ at leas t one of modul ate and maintain a flow of the solvent independent of a back p ressur e [;]” within a brewing chamber; since (2) for this limitatio n, the F AC just points to a pump /piston, withou t explain ing how the pump can operate “independent of a back pressure.” (D.I. 45 at 16-17 (citing D.I. 43 at 16, 18); D.I. 53 at 8) Defend ants assert t hat the accused p roduct “has a f undamen tally d ifferen t struct ure than what t he pat ent descri bes to achieve this result[.]” (D.I. 45 at 16) In the Court’s view, Defendants are asking too much at this early stage of the litigation. In describing the invention, the FAC al leges th at t he claimed infused b ever age brewi ng assem bly 25 Moreover, it appear s that Duvall is pointing to di ffe rent components as satisfying these limita tions. (D.I. 43 at ¶ 51 (pointing to a heating ele ment within the pump body for the outside of fluid contact limit ation); id. at ¶ 56 (pointing to different component as the solvent temperat ure man agemen t syst em that would sa tisfy the in f luid communic ation limitat ion))

35 includes a solvent flow management system configured to “ change or maintain a flow of solvent (e.g., water) through the brewing chamber where the ground beans (i.e., solute) are hous ed [,] independent of a back pressure within a brewing chamber[.]” (D.I. 43 at ¶¶ 52, 55 (emph asis added)) Defendants acknowledge that Duvall points to the pump/piston for this limitation. And it seems pla usible to the Court that the pump at issue could ha ve this capa bility (certa inly, the text and images of the FAC do not seem to facially contradict this assertion). In the end, it is just not clear to the Court, at this stage, how such a component would be unable to satisfy the limitation in que stion. 26 Woodstream Corp., 2025 WL 2432506, at *3-4 (rejectin g a defendant’s argume nt that the c omplaint faile d to suffic iently ple ad that the a ccused products contained the claimed in ternally mounted c amera, where th at argu ment prem aturely “ask [s] this court to decide, by only looking at the pleadings, what counts as the ‘inside,’ whether the cam era mus t be mounted within the inside or instead from the inside, and other similar questions ”). 4. Pre -Suit Knowledge of the '187 and '491 Patents Lastly, D efendan ts contend that Duvall’s w illful infrin gement c laims fail for the '187 and '491 p atents because the FAC fa ils to suff iciently plead Defendants’ knowledge of these patents. (D.I. 45 at 18-19) 27 Willful infr ingemen t claims re quire that the defendant had knowledge of the patents - in -suit and knowledge that the acts at issue constituted patent infringement. Bench Walk Lighting LLC, 530 F. Supp. 3d at 491. 26 The Cou rt also note s that, at time s, Def endants seem to sug gest that the claims require the system to both “modulate and maintain” the solvent flow independent of a back pressure, while on their face, the cl aims req uire the system to, at minimum, modulate or maintain (i.e., in reciting “at least one of”). (D.I. 45 at 16; D.I. 43 at ¶¶ 53, 56) 27 Defendants also argue that Duvall’s induce d infringement claims must be dismissed for this reason, but the Court has already granted dismissal of those claims, as explained above.

36 The Cou rt agrees that t hese cl aims are in suffi cient ly pl eaded as to pre-suit knowledge (that is, knowledge prior to the date of filing of the initial Complaint on October 11, 2023) of these t wo patent s. All that the FAC pleads with regard to Defendants’ prior knowledge of the '187 and '491 p atents is that: (1) At the SCA, Mr. Duvall informed Mr. Pendas that the accused products “infringed multiple patents owned by Mr. Duvall[;]” and (2) Duvall’s f ollow up noti ce letter described how the accused products infringed the '774 patent “and other patents of Mr. Duvall.” (D.I. 43 at ¶¶ 30, 50 & ex. D; see also D.I. 49 at 18-19 (Duvall pointing to these two allegations as establishing Defendants’ pre-suit knowledge of the '187 and '491 p atents)) But there is no allegation that Mr. Duvall specifically mentioned the '187 or '491 p atent s at the S CA conferen ce. Moreover, t he noti ce letter at iss ue is att ached as an exhibi t to t he FAC, and it does not mention the '187 and '491 p atent s, nor does it allege that those patents are infringed by Defendants’ accused products. (D.I. 43, ex. D; see also D.I. 45 at 20) Indeed, the only specific refere nce in the le tter to Duvall pa tents or patent applic ations other than the '774 patent is to t hree foreign patents (one European patent, one J apanese p atent and on e Chinese patent). (D. I. 43, ex. D at 1 n.2) This does not do the job of plausibly establishing Defen dant s’ pre - suit knowledge of the '187 and '491 p atents. See, e.g., Bench Walk Lighting LLC, 530 F. Supp. 3d at 492 & n. 9 (concluding that a notice let ter th at did n ot refer ence two of the asserted p atent s could not have provided defendants with knowledge of those patents) (citing cases); see also Hewlett Packard Enter. Co. v. Inspur Grp. Co., Case No. 24- cv -02220-JST, 2025 WL 754265, at *26 (N.D. Cal. Mar. 10, 2025) (“ Because t his l etter n either m ention ed the asse rt ed patent s nor st ated that IEIT Systems was infringing the asserted patents, the Court cannot reasonably infer ba sed on this letter that IEIT Systems knew of the asserted patents before this action began. ”).

37 That sai d —at least as to the otherwise surviving claims of infringement regarding claims 8 and 16 of the '187 patent, the FAC sufficiently pleads post-suit knowledge (because Defend ants had n otice of thos e patent cl aims as of th e date of r eceipt of the original Compla int in this case). See NEC Corp. v. Peloton Interactive, Inc., Civil Action No. 22-987-CJB, 2023 WL 8529287, at *3 (D. Del. Dec. 8, 2023) (explaining that a plaintiff can sufficie ntly plead knowledge of an asserted patent in an amended complaint by pointing back to the notice that the accused in fring er rec eived o f the paten t ’ s existence via a prior compla int filed in the same case). This portion of Defendants’ Motion is therefore granted- in - part and denied- in - part. IV. CONCLUSIO N For the foregoing reasons, the Court GRANTS - IN - PART and DENIES - IN - PART the Motion. More specifically, the Court grants the Motion with respect to the indir ect infr ingemen t claims, and w ith respect to th e direc t infring ement and willf ul infringe ment claims re garding claim 1 of the '187 patent and the assert ed clai ms o f the '491 patent. The Court grants these portions of the Motion without prejudice. That is because it seems possible that Du vall might be able to r emedy th e d efici encies by way of filing a further amended complaint, and Federal R ule of Civil Procedure 15 admonishes that leave to amend should be freely permitted “when justice so requires. ” Fed. R. Civ. P. 15(a)(2). Plaintiff may file an amende d complaint within 14 da ys. Otherwise, the Motion is denied as to c laims of dire ct infring ement regarding claims 8 and 16 of the '187 patent; it is grante d as to c laims of pr e - suit willf ul infringeme nt and den ied as to claims of post- suit willf ul infring ement as to those claims. The Motion is denied as to all asserted claim s of the '77 4 patent, and is otherwise d enied. An appropriate Order shall issue.

IN THE UNIT ED STATES DISTRICT COURT FOR THE DI STRICT OF DEL AWARE DUVALL ESPRE SSO IP) ENFORCEMENT, LLC,)) Plaintiff,)) v.) Civil Action No. 24-22- CJB) METICULOUS HOME, INC. and) JUAN CARLOS L OPEZ PENDAS,)) Defend ants.) ORDE R At Wilmington, D elawa re this 2nd day of March, 2026; For the reasons stated in the Memorandum Opinion issued this same date, IT IS HEREBY ORDER ED that Defendants’ motion to dismiss the operative First Amended Complaint, file d pursuant to Fede ral Rules of Civil Procedure 12(b)(2) and 12(b)(6) (the “Motion”), (D.I. 44), is GRANT ED - IN - PART a nd DENIE D- IN - PAR T. M ore specifi call y, the Court: (1) grants without prejudice the Motion with re spect to th e indirect inf ringeme nt claims; (2) grants without prejudice the Motion with resp ect to the dire ct infr ingement and w illful infringe ment cla ims regarding cla im 1 of Unite d States Pate nt No. 10,258,187 (the “ '187 patent”) and the as serted claims of United States Pate nt No. 9,867,491; (3) denies the Motion as to claims of direct infringement regarding claims 8 and 16 of the '187 patent; (4) grants the Motion as to claims of p re -suit willful infringement and denies the Motion as to claims of post- suit willful infringement regarding claims 8 and 16 of the '187 patent; (5) denies the Motion as to al l assert ed claims of U nited State s Patent No. 10,349,774; and (6) otherwise denies the Motion. _________________________________ ___ C hr i s t ophe r J. B ur ke UNITED STATES MAGISTRATE JUDGE