(Eds. Note -- The title took significantly longer to write than the article. You're welcome)
The Foman factors are about as ubiquitous and well known as any test in the law, coming down as they do from a sixty-some year old Supreme Court case, and relating to one of the most common possible motions. A check of Lexis shows a little under 40,000 cites.
As a quick refresher for any of you law students who have been assigned the blog by a particularly devious and brilliant professor, Foman v. Davis, 371 U.S. 178, 182 (1962) held that "In the absence of any apparent or declared reason -- such as undue delay, bad faith or dilatory motive on the part of …
This. This is what you need to include with your motion to amend.Andrew E. Russell
Yesterday, Judge Andrews issued an opinion denying a motion to amend a complaint for failure to follow Local Rule 15.1, which requires a party moving to amend to attach the amended pleading and a redline.
This is something parties often mess up, as we've mentioned.
Here, the moving party attached the pleading and redline to a declaration submitted with the reply brief, but the Court found that was insufficient, because it occurred after the answering brief and left the Court without useful briefing on the motion to amend:
Defendants' first argument for denying Plaintiffs' motion was the failure to comply with the Local …
The plaintiff always wants to leave the door open. If they uncover new claims in discovery, they want to be able to add them in all the way up to trial. Defendants, of course, want to slam the door shut and wedge a dresser in front of it.
Whence Amendment?
The usual compromise is a deadline to amend the pleadings, which is included on all of our Judges' form scheduling orders. Interestingly, none of the orders specify when this deadline should fall, and in practice it varies widely. Looking at five recent orders I happen to have on hand, two had dates between the deadline for …
Back in February, Judge Andrews granted a motion to dismiss a patent with claims directed to the abstract ideas of "the recording, storing, delivering, and deleting of media content on a mobile device," and "remote control" of a mobile device. Clear Doc, Inc. v. RiversideFM, Inc., C.A. No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022).
He dismissed the claims on § 101 grounds, but granted leave to amend on the theory that the patentee could show an inventive concept:
Riverside's motion to dismiss is granted. Dismissal is without prejudice. OpenReel has requested leave to amend. (D.I. 46 at 19 n.1). I will grant that request, as it is possible OpenReel could successfully amend its complaint.
Clear Doc, Inc. v. RiversideFM, Inc., Civil Action No. 21-1422-RGA, 2022 U.S. Dist. LEXIS 31168, at *15 (D. Del. Feb. 22, 2022)
Id. at 19.
Taking the Court up on its offer, plaintiff amended their complaint to allege that certain feature constituted "inventive functions" under Alice—but the Court wasn't buying it:
The FAC has not alleged facts supporting the conclusion that the claims contain an unconventional technological solution as opposed to an abstract idea ...
In rejecting a motion to amend a complaint almost two weeks ago (while we were indisposed), Judge Andrews held that a defendant's own importation under 35 USC 271(g) cannot serve as a basis for induced infringement:
Defendant argues Plaintiffs’ proposed amendment to assert induced infringement is futile, because Plaintiffs do not plausibly allege any of the three elements required for a claim of induced infringement – direct infringement, knowledge, and specific intent. . . . I find that because Plaintiffs have not alleged any acts of direct infringement by a third party in the United States, Plaintiffs have not stated a claim of induced infringement under § 271(b). . . . Plaintiffs’ argument that their …
It is a live question in this District whether the filing of a complaint for infringement can support a claim - asserted in a later, amended complaint - for post-suit indirect infringement or post-suit willful infringement. Judge Burke recently offered some helpful comments on his views regarding this question, and at the same time, provided some guidance about how to allege pre-suit indirect infringement.
In an R&R issued February 7 in Icon Health & Fitness, Inc. v. Tonal Systems, Inc., C.A. No. 21-652-LPS-CJB, Judge Burke addressed two separate questions. First, whether the amended complaint adequately pleaded pre-suit indirect and willful infringement, and second, whether it adequately pleaded post-suit indirect and willful infringement...
FRCP 15 governs amendment to pleadings, so it would stand to reason that it would be the operative rule when seeking to amend a complaint. However, when seeking to amend after the deadline in the scheduling order, the movant must satisfy not only the relatively liberal requirements of Rule 15 but also the more exacting "good cause" standard of Rule 16. Unlike Rule 15, which permits amendment in the absence of undue delay, bad faith, or dilatory motive, Rule 16 requires diligence by the party seeking amendment.
A recent ruling by Judge Fallon demonstrates the danger of ignoring Rule 16's requirements when seeking amendment after the deadline. The plaintiff in NRT Tech. Corp. v. Everi Holdings Inc., C.A. No. 19-804-MN-SRF sought to amend its complaint, asserting Walker Process and sham litigation antitrust claims, almost a full year after the expiration of the amendment deadline.
Judge Fallon noted that although plaintiffs "bear the burden of showing that they exercised diligence in seeking the proposed amendment under Rule 16(b)(4)," their motion "does not address the applicable good cause standard for motions to amend filed after the deadline."
Plaintiffs apparently argued that defense counsel should have alerted them of the applicability of Rule 16, but Judge Fallon rejected that ...
Given the liberal amendment standard in federal court, it is not surprising that plaintiffs faced with § 101 challenges to their asserted patents may attempt to introduce factual issues through amended pleadings to avoid a dismissal.
Judge Connolly recently permitted the plaintiff in the consolidated Realtime Data litigation to amend its complaints after he had twice found plaintiff's patents (involving data compression) invalid under § 101. RealTime Data LLC v. Array Networks Inc., C.A. No. 17-800-CFC. But the amendments were not enough to save plaintiff's patents, and Judge Connolly walked through the amendments to explain why.
First, the amended complaints asserted that certain claims were not representative of others, and that different limitations "must be considered separately for for the purposes of § 101." But these statements were deemed "conclusory," and in any event, the plaintiff failed to "explain why these limitations are relevant to subject-matter eligibility."
Second, he found that all but one of the "new" claim construction positions were already before the Court, and the remaining proposal (to construe "data accelerator" as "hardware or software with one or more compression ...
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 …
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