IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE EIS, INC., Plaintiff, v. C.A. No. 19-1227-GBW INTIHEALTH GER GMBH, WOW TECH USA, LTD., WOW TECH CANADA, LTD., and NOVOLUTO GMBH, Defendants.

NOVOLUTO GMBH, Counterclaimant, v. EIS, INC., EIS GMBH, TRIPLE A IMPORT GMBH, and TRIPLE A MARKETING GMBH, Counterclaim Defendants.

MEMORANDUM ORDER Having reviewed Defendant/Counterclaimant Novoluto GmbH’s (“Novoluto”) Motion to Strike Plaintiff EIS Inc.’s (“EIS”) Election of Prior-Art Based Invalidity Arguments Pursuant to IPR Estoppel

(e)(2) (D.I. 321, the “Motion”) and the related briefing (D.I. 322; D.I. 325; D.I. 326), IT IS HEREBY ORDERED that Novoluto’s Motion is GRANTED-IN- PART and DENIED-IN-PART as set forth below. In light of EIS “not oppos[ing] Novoluto’s motion with respect to grounds for the □□□□□ ’061, and °097 patents that do not include at least one of the Eros Product or Yang,” see D.I. 325

at 1 n.1, the Court will grant-in-part Novoluto’s Motion. Accordingly, EIS is estopped, pursuant to

(e)(2), from asserting the following prior art/prior art combinations: 1. Chinese Utility Model Patent No. 2,153,351 (“Guan”) &

(“Hovland”) as to claims 1, 2, 4, 5, and 6 of

(“the □□□□ patent); 2. Guan &

(“Taylor”) as to claims 1, 8, and 21 of

(‘the ’061 patent”); 3. Taylor as to claims 1 and 21 of the ’061 patent; 4. Taylor & Hovland as to claim 8 of the ’061 patent; 5. U.S. Patent Appl. No. 2017/0281457 (“Witt”) & Taylor as to claims 1, 10, and 12 of

(“the ’097 patent”); and 6. Guan,

(“Lee”) & Hovland as to claims 1, 10, and 12 of the °097 patent. However, the Court will deny-in-part Novoluto’s Motion without prejudice as it relates to EIS’s Election of Prior-Art Based Invalidity Arguments for the ’851 patent, the ’061 patent, and the ’097 patent that include at least the Eros Clitoral Therapy Device, SKU: 364215376135191 (“Eros Product”) or Chinese Utility Model No. 201139737 (“Yang”). See D.I. 325 at 1 n.1; see also

(“Novoluto’s motion is, in essence, a summary judgment motion.”). The scope of IPR estoppel is a fact-intensive inquiry and the Court reserves ruling on this issue until the record is more fully developed, i.e., during the case dispositive motion stage or through a motion in limine. See, e.g., Chervon (HK) Limited et al v. One World Technologies, Inc. et al., C.A. No. 19-1293- GBW, D.I. 328 (D. Del. Feb. 23, 2023); Innovative Memory Sys., Inc. v. Micron Tech., Inc., C.A.

No. 14-1480-RGA,

, at *1 (D. Del. Sept. 29, 2022); TrustID, Inc. v. Next Caller Inc., C.A. No. 18-172-MN,

, at *1 (D. Del. July 6, 2021).! kak _ yh WHEREFORE, at Wilmington this!~ day of June, 2023, IT IS HEREBY ORDERED that Novoluto’s Motion to Strike (D.I. 321) is GRANTED-IN-PART and DENIED-IN-PART. The following prior art combinations are STRICKEN: 1. Guan & Hovland (

claims 1, 2, 4, 5, and 6); 2. Guan & Taylor (

claims 1, 8, and 21); 3. Taylor (

claims 1 and 21); 4. Taylor & Hovland (

claim 8); 5. Witt & Taylor (

claims 1, 10, and 12); and 6. Guan, Lee & Hovland (

claims 1, 10, and 12). IT IS ALSO HEREBY ORDERED that Novoluto’s Motion for Leave to File a Response to Plaintiff's Improper “Notice of Subsequent Authority in Support of Its Opposition to Defendants’ Motion to Strike EIS's Election of Prior-Art Based Invalidity Argyrments” (D.I. 353) is DENIED as moot.

GREGORY B. WILLIAMS UNITED STATES DISTRICT JUDGE

' EIS’s Notice of Subsequent Authority in Support of Plaintiff's Opposition to Defendants' Motion to Strike (D.I. 352) fails to comply with District of Delaware Local Rule 7.1.2(b) and, thus, is not considered for purposes of this Memorandum Order. See Del. L.R. 7.1.2(b) (“Except for the citation of subsequent authorities, no additional papers shall be filed absent Court approval.”). Accordingly, Novoluto’s Motion for Leave to File a Response to Plaintiff's Improper “Notice of Subsequent Authority in Support of Its Opposition to Defendants’ Motion to Strike EIS's Election of Prior-Art Based Invalidity Arguments” (D.I. 353) is DENIED as moot.