Intellectual Property Law

Mary Pat Thynge: Confirming Deposition Discovery Warrants Addition of Late Inequitable-Conduct Claim

By Karen E. Keller, Andrew A. Lundgren et al.

In managing litigation, trial judges are often called on to enforce the structure of the case while simultaneously preserving the fluidity of the parties' claims. These competing goals take form in the rules governing scheduling orders and the amendment of pleadings, respectively. In a recent decision, Magistrate Judge Mary Pat Thynge resolved a meritorious, but untimely, motion to amend by reference to these competing policies.

Because the information forming the new inequitable-conduct allegations did not fully come to light until after several depositions, the Court granted the motion to amend:

"[T]he court finds that Amazon is pleading new legal theories based on additional information which was recently provided and confirmed through the depositions of the inventors. Although Cordance maintains that Amazon possessed the documents which form the basis of its inequitable conduct pleadings for more than a year, in light of the 'pleading with particularity requirement of Rule 9(b),' it was appropriate for Amazon to confirm the factual allegations through discovery."

By referencing the timing of the discovery, and the concomitant need for particularized detail in this instance, the Court adopted the fluidity goal at the expense of its structural counterpart. In making this determination, however, the Court did not lose sight of the institutional value of adhering to scheduling orders: the inequitable-conduct defense will likely be tried apart from the other issues in the case.

Cordance Corp. v. Amazon.com Inc., C.A. No. 06-497-MPT (D. Del. Feb. 18, 2009) (Thynge, M.J.).

Full post as published by Delaware IP Law Blog on February 23, 2009 (boomark / email).