A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: FRCP 16

Court Rejects Argument That Plaintiff Was Not Diligent Because It Could Have Applied for Its Patents Sooner

Andrew E. Russell, Feb. 18, 2026
FRCP 16 Motion to Amend

One day we should create the IP/DE award for
One day we should create the IP/DE award for "most creative and unsuccesful argument." bamagal, Unsplash

This is a new one. In Bardy Diagnostics, Inc. v. iRhythm Technologies, Inc., C.A. No. 24-1355-JDW (D. Del.), the plaintiff moved to amend to add two recently-issued patents to the case.

It filed its motion after the deadline to amend, which meant that it needed to show FRCP 16 good cause which, in this context, means that it had to show that it was diligent.

The defendant opposed the motion by arguing that the plaintiff was not diligent because (get this!) it waited too long to file its patents:. Not-at-all-shockingly, the Court did not go for that:

[Accused infringer] …
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Court Holds That Good Cause Standard Applies to Late Election of Asserted Prior Art, Rather Than the Forgiving Pennypack Factors

Andrew E. Russell, Sept. 13, 2024
FRCP 16 Pennypack

Narrowing
AI-Generated, displayed with permission

A perennial question in disputes about late disclosures is whether the demanding FRCP 16 "good cause" standard applies, which hinges on diligence, or whether the more forgiving Pennypack factors apply.

When it comes to case narrowing, there seems to be a building trend that the good cause standard applies, not the Pennypack factors. We've seen that multiple times when it comes to a plaintiff's decision to drop claims, and on Wednesday, Judge Burke issued a detailed opinion finding that good cause is likewise required to revise a defendant's election of prior art references.

In State Farm Mutual Automobile v. Amazon.com, Inc., C.A. No. 22-1447-CJB (D. Del.), the Court ordered the defendant to cut …

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Contention Amendment Denied Because Good Cause Is Measured from the Outset of the Litigation

Andrew E. Russell, Feb. 13, 2023
Good Cause FRCP 16

Early case:
Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?" Eric Rothermel, Unsplash

Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.

Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).

Good cause requires diligence, and in practice parties often frame the diligence discussion …

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Judge Andrews Offers Guidance for Delaware Counsel—But Can They Do It?

Andrew E. Russell, Jan. 11, 2023
FRCP 15 FRCP 16

This. This is what you need to include with your motion to amend.
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 …
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A Helpful Order on Moving to Amend to Add Inequitable Conduct

Andrew E. Russell, Sept. 2, 2022
Inequitable Conduct FRCP 15

Attorney searching for factual support for their inequitable conduct allegations
Attorney searching for factual support for their inequitable conduct allegations Agence Olloweb, Unsplash

Yesterday, in Intercept Pharmaceuticals v. Apotex Inc., C.A. No. 20-1105-MN (D. Del. Sept. 1, 2022), Judge Hall granted a motion to amend to add inequitable conduct allegations almost a year after the deadline for amendment in the scheduling order.

Most D. Del. scheduling orders include a deadline for motions to amend or to join additional parties. Normally, the standard for motions to amend in the Third Circuit is relatively easy to meet. But when there is a scheduling order deadline for amendment, the Courts has held that parties must show "good cause" under Rule 16 if they move to amend after the …

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Recent Denials of Early-Case Extensions in D. Del.

Andrew E. Russell, June 6, 2022
Stipulation FRCP 16

Do Not Enter Wrong Way
Tim Mossholder, Unsplash

Judge Andrews on Friday denied a fairly typical stipulation extending time for the briefing on a motion to dismiss:

ORAL ORDER: There is a pending motion of a routine nature. Each side is represented by multiple attorneys, at least some of whom on both sides are known to me to be more than competent. Summer schedules and other professional obligations are not a reason to add more than two months to the briefing schedule for this motion. The stipulation (D.I. 15 ) is DENIED. Ordered by Judge Richard G. Andrews on 6/3/2022. (nms) (Entered: 06/03/2022)

Robocast, Inc. v. Netflix, Inc., C.A. No. 22-305-RGA, D.I. 16 (D. Del. June 3, 2022).

I've noticed two similar orders lately as well, denying early-case extensions or stays and citing Federal Rule of Civil Procedure 16(b)(2), both from Chief Magistrate Judge Thynge. First, with regard to a stipulation to extend time to submit a scheduling order:

ORAL ORDER re 18 STIPULATION TO EXTEND TIME to submit a scheduling order to 6/1/2022 filed by IP Power Holdings Limited: . . . By the time of the Rule 16 conference scheduled for 6/6/2022, this matter will have been pending for ...
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Motion to Amend Filed Before Deadline Not Untimely

Andrew E. Russell, June 23, 2020
FRCP FRCP 15

The judges' form scheduling orders in D. Del. require deadlines for motions to amend, tracking FRCP 16(b)(3)(a), which says scheduling orders must limit the time to amend pleadings.

In an oral order on Friday, Judge Burke granted a motion to amend an answer that was filed on the day of the deadline set in the scheduling order.

He described how difficult it would be for a party to argue that a motion to amend was untimely when it was filed before the agreed-upon deadline:

It would be the unusual case where a Court had previously determined (at the parties' request) that amendment could be allowed by a certain date without causing harm to the case schedule, and yet …
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