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Defendant’s Unclean Hands Defense, Pled in Response to Plaintiffs’ Amended Complaint, Untimely Under Rules 15 and 16

Chief Judge Gregory M. Sleet recently struck defendant’s unclean hands defense in its Answer as improper under FRCP Rule 15(d) and untimely under Rules 15(a) and 16(b). Sirona Dental Systems, Inc., et al. v. Dental Imaging Technologies Corp., C.A. No. 10-288-GMS (D. Del. Sept. 10, 2012).

The parties had agreed to permit plaintiffs to file a Fourth Amended Complaint nearly nine months after the deadline to amend pleadings. Id. at 1. This Amended Complaint contained no substantive changes; it only added the current defendant and removed others as a result of a series of mergers and an agreement between the parties, and substituted the reissues of two of the patents-in-suit for the original patents. Id. at 2. In response, defendant filed its Answer which raised an affirmative defense of unclean hands for the first time. Id. Plaintiffs moved to strike the defense arguing that it was not a proper response under FRCP Rule 15(a) and, even if “viewed instead as a stand-alone amended pleading” under Rule 16(b), would still fail to meet the requirements of this Rule. Id. at 3.

The Court held that defendant’s Answer was “best understood not as a required response to an amended pleading under Rule 15(a)(3) but as a discretionary response to a supplemental pleading, governed by Rule 15(d).” Id. at 4-5 (internal quotation marks omitted). While responses under Rule 15(a) are permitted as a matter of course, a court has the discretion to permit or disallow responses under 15(d). Id. at 5-6. Here, the Court disallowed the unclean hands defense because “[t]he filing of a supplemental complaint containing purely ministerial changes should not permit an opposing party to raise a novel affirmative defense more than nine months after a scheduling order deadline.” Id. at 7.

Because it concluded that Rule 15(a) was inapplicable, the Court did not apply or interpret Rule 15(a)(3), which governs the timing of a required responsive pleading. Judge Sleet did comment, however, that plaintiffs’ argument that the scope of 15(a)(3) pleadings “should be limited to reflect the breadth of the changes in the initial pleading” had merit because to view otherwise might “throw the door open to entirely new claims and defenses each time a ministerial amendment was made to a pleading.” Id. at 4 & n.3.

Judge Sleet also considered whether defendant’s Answer would satisfy Rule 16(b) which permits a party to amend its pleading after the court ordered deadline, only for good cause and with the Court’s consent. Id. at 8. Although defendant did not obtain leave of court to amend its Answer, defendant argued that it had good cause for delay because (i) plaintiffs provided “inconsistent information with regard to the facts relevant to the unclean hands issue” and (ii) defendant had no obligation to investigate this defense earlier because it assumed plaintiffs would adhere to a relevant license agreement. Id. at 9. Judge Sleet disagreed, noting that it was not until after the scheduling order deadline passed that plaintiffs provided “inconsistent information” and thus defendant could have raised the defense by the deadline. Id. In addition, defendant could not justify its delay when it was “presented with evidence of potential bad deeds” and did not perform a “diligent investigation upon receipt of such evidence.” Id. at 10. To hold otherwise “would open the door to untimely defenses and claims whenever they are based on some form of misbehavior.” Id.

Sirona Dental Systems, Inc. v. Dental Imaging Techs. Corp., C.A. No. 10-288-GMS (D. Del. Sept. 10, 2012)

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