In a recent decision, Judge Stark granted a patent infringement defendant’s motion to amend its answer to add claims of inequitable conduct, unclean hands, and breach of contract. Defendant Amneal filed the motion to amend on the last day of fact discovery, well after the scheduling order deadline to amend pleadings. Accordingly, Amneal had to show good cause to modify the case schedule under Rule 16(b)(4). Galderma Labs. Inc., et al. v. Amneal Pharma., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1-2 (D. Del. Sept. 30, 2013). Judge Stark found that Amneal had shown good cause because Amneal did not learn of the facts underlying its new claims until approximately one month before filing its motion. At that time, Amneal learned at its deposition of prosecution counsel that counsel had only disclosed a portion of the data of which counsel was aware to the PTO and that litigation counsel had improperly participated in patent prosecution. Accordingly, the proposed amendment was timely. Id. at 2. Judge Stark further explained that the amendment would not be futile because the amended pleading raised questions for the Court to consider, and the amendment would not cause undue prejudice because it was filed nearly a year before trial was to begin, leaving sufficient time for the limited discovery required. Id. at 2-3.
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