In Delaware, Local Rule 7.1.2(b) sets deadlines for responding to motions, and states that
Except for the citation of subsequent authorities, no additional papers [other than the opening, answering, and reply briefs] shall be filed absent Court approval.
Based on this rule, parties file "notices of subsequent authorities" to present after-arising citations (and sometimes other content) to the Court.
But some attorneys disagree about just how much argument can accompany the "citation[s]" a notice of subsequent authority. The authority is mixed.
In some cases, the Court has declined to consider notices containing argument that are filed without leave. See, e.g., Forest Labs., Inc. v. Amneal Pharm. LLC, C.A. No. 14-508-LPS, 2015 U.S. Dist. LEXIS 23215, at *51 (D. Del. Feb. 26, 2015) (noting that the notices “go well beyond citing supplemental authority, and instead include extensive argument akin to what would be found in a brief”). And, as we recently discussed, the Court has at least once stated that responses to notices of subsequent authority are impermissible absent leave, although in practice they are not uncommon.
In at least one case, the Court held has elected to consider argumentative notices even though they violate Rule 7.1.2, if the authority is important and the briefing is helpful to the Court:
Although [the parties' notices of subsequent authorities] both contained substantive argument about the cases referenced therein, in violation of District of Delaware Local Rule 7.1.2(b), the Court will here consider the full content of the notices. That is because (1) they refer to important new case authority regarding Section 101 that was handed down by the United States Court of Appeals for the Federal Circuit after the date of oral argument in this case; and (2) the Court was benefitted by the parties' analysis of that new authority.
Thus, it seems there may be at least some circumstances where argumentative notices may be relied upon.
Is Four+ Pages Too Long? No—At Least, Not This Time.
With that background, I wanted to note an oral order by Magistrate Judge Hall this week in WSOU Investments, LLC v. Xilinx, Inc., C.A. No. 20-1233-CFC-JLH (D. Del.).
There, the defendant moved to dismiss plaintiff's indirect infringement allegations in an amended complaint, for failure to allege pre-suit knowledge. Plaintiff responded by arguing that the initial complaint and the claim charts in the action gave the defendants sufficient knowledge to support a claim for indirect infringement in a later amended complaint.
After the briefing, the defendant filed a lengthy notice of subsequent authority summarizing Judge Connolly's recent ZapFraud opinion. That opinion makes very clear that, in Judge Connolly's view, the initial filing of the complaint in a patent action cannot constitute notice to support a later amended or supplemental complaint in a patent action.
Most of the material in the defendant's notice of subsequent authority is not argument per se, but the notice includes a lengthy summary of the facts of the pending motion, and a correspondingly detailed summary of ZapFraud. I would definitely expect pushback from some D. Del. attorneys and judges that the notice was much more than a mere "citation" to a subsequent authority.
Regardless, it was highly effective—in response to the notice, Judge Hall announced her intention to grant the motion to dismiss, and urged the parties to consider a stipulated resolution:
ORAL ORDER: . . . Having been referred by Judge Connolly Defendant's motions to dismiss Plaintiff's indirect infringement claims . . . ; having been made aware of Judge Connolly's recent opinion in Zapfraud, Inc. v. Barracuda Networks, Inc., No. 19−1687−CFC−CJB, 2021 WL 1134687, at *4 (D. Del. Mar. 24, 2021) . . . ; in view of this judicial officer's inclination to recommend to Judge Connolly that, if he intends to follow his rule set forth in Zapfraud, Defendant's motions to dismiss Plaintiff's indirect infringement claims should be granted; and . . . in the interest of avoiding unnecessary objections made solely with an eye towards preserving appeal rights; it is HEREBY ORDERED as follows: On or before May 20, 2021, the parties shall meet and confer and file a letter indicating whether they agree that, if Zapfraud correctly sets forth the law, Defendant's motions to dismiss should be granted. If the parties do so agree, the letter shall be accompanied by a stipulation providing, in substance, that Plaintiff's indirect infringement claims may be dismissed without prejudice to Plaintiff's future ability to appeal their dismissal to the appropriate Court of Appeals.
Would a more typical, short-and-plain "citation of subsequent authorit[y]" under LR 7.1.2 have achieved the same result? Maybe. It's hard to say. But this method clearly worked out well for the defendant here.
Side Note: Was This Really an "Amended" Complaint?
The parties in WSOU referred to the plaintiffs' new complaint, which was based on actions after the original complaint, as an "amended" complaint—which is very common.
But is that right? If an "amended" pleading relies on matters arising after the filing of the original complaint, such as defendants' sales after notice, shouldn't it arguably have been a "supplemental" pleading, requiring leave to file under FRCP 15?
On its face, Rule 15 describes a "supplemental" pleading as one "setting out any transaction, occurrence, or event that happened after the date of the pleading to be supplemented." And, according to the Third Circuit:
Because it refers to events that occurred after the original pleading was filed, a supplemental pleading differs from an amendment, which covers matters that occurred before the filing of the original pleading but were overlooked at the time.
See Owens-Illinois, Inc. v. Lake Shore Land Co., 610 F.2d 1185, 1188 (3d Cir. 1979) (emphasis added).
The difference is important here, because an amended pleading may be made as of right under FRCP 15(a)(1), but a supplemental pleading requires a "motion and reasonable notice" under FRCP 15(d). If these kinds of pleadings are actually "supplemental" pleadings rather than an "amended" ones, aren't they improper without a motion for leave to supplement (or, as in ZapFraud, a stipulation)?
Just a thought. That seems like a potential basis for a motion to strike, although I don't know that it would achieve a whole lot in practice.
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