Judge Robinson Grants Motion to Amend Pleadings

October 5, 2016

Publication| Intellectual Property

In Intellectual Ventures I LLC v. Toshiba Corp., et al., C.A. No. 13-453-SLR (D. Del. Sept. 7, 2016), Judge Robinson granted the defendants’ motion to amend their answers and counterclaims to include a defense of improper inventorship of the patent-in-suit. The litigation arose from a patent issued to the plaintiff’s predecessor-in-interest. The subject of the motion was whether a particular inventor, Stephen Pearlman, was one of the inventors of the patent-in-suit.

Although the defendants brought this motion more than one year after the court-ordered deadline for amendments to pleadings, they argued that the issue of Mr. Pearlman’s purported inventorship could not have been discovered prior to his deposition. Judge Robinson granted the motion due to the “extraordinary circumstances” and stated that she was not prepared at the present stage of litigation to evaluate the defendants’ cited evidence. In granting the defendants’ motion, she “bifurcate[d]” the improper inventorship defense to allow for additional discovery and a separate trial.

Key Points:  Although Judge Robinson granted the motion, she emphasized the defendants’ “extraordinary delay” between the issuance of the patent and their claim of improper inventorship. Motions to amend pleadings should be made as promptly as possible.

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