A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Motion to Amend

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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Defendant's Own Importation Cannot Serve as the Basis for an Inducement Claim

Andrew E. Russell, April 22, 2022
Importation Motion to Amend

Monkey inducing itself to infringe
Andre Mouton, Unsplash

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 …
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Don't Wait Too Long to Move to Amend

Andrew E. Russell, June 7, 2021
FRCP 15 Motion to Amend

Snail
Wolfgang Hasselmann, Unsplash

The FRCP 15 standard for a motion to amend is very forgiving. It states that the Court should grant leave to amend "freely . . . when justice so requires." The Third Circuit likewise has a "policy favoring liberal amendment of pleadings." Dole v. Arco Chem. Co., 921 F.2d 484, 487 (3d Cir. 1990)

Regardless, a party can still lose a motion to amend if it waits long enough. That's what happened last week, when Judge Burke denied a motion to amend to add an unclean hands defense, a breach-of-contract claims, and a trade secret counterclaim.

The defendant waited to add its defenses until more than six months after the deadline to amend, and more …

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A Successful Letter Asking the Court to Rule More Quickly on a Pending Motion

Andrew E. Russell, March 8, 2021
Litigation Motion to Amend

Envelope with Letter
Brando Makes Branding, Unsplash

One common question for local counsel is "can we file something asking the Court to rule on our motion"? And the answer is usually something along the lines of "no," except in certain situations.

Last week we wrote about an example of the risks of an unwarranted request to expedite consideration of a motion.

This week I saw an example of a letter near the other end of the spectrum, in which a party asked gently urged the Court to consider a pending motion and got a good result.

A Letter That Worked

Plaintiff had moved for leave to amend their complaint to add two patents to a five-patent case, where all of the …

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If You Do Not Plead Indirect Infringement, You Cannot Argue It (Without Amending)

Andrew E. Russell, Oct. 14, 2020
FRCP 15 Final Infringement Contentions

Judge Burke granted a motion to strike yesterday where the plaintiff attempted to add indirect infringement allegations in final infringement contentions, but had not pled them in the complaint.

Per Judge Burke:

It is undisputed that Plaintiffs have never pleaded indirect infringement of these patents, (D.I. 170 at 1), and so any portion of their [final contentions] that relate to that subject matter are simply about infringement claims that are not a part of this case.

He also preemptively denied any future request to amend the complaint as coming too late:

Although they have not filed a formal motion seeking to amend their currently operative complaint to include such [indirect infringement] claims, to the extent Plaintiffs suggest they would …
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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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