Judge Robinson recently considered a motion for leave to file a second amended complaint filed by plaintiffs in Novartis Vaccines and Diagnostics, Inc., et al. v. Medimmune, LLC, et al., C.A. No. 11-84-SLPR (D. Del. July 22, 2013). Plaintiffs previously filed a first amended complaint, and then a supplemental complaint adding Novartis Pharma AG, exclusive licensee of the patent-in-suit, as a co-plaintiff. Id. at 1. Over six months later, when defendant Alexion raised a concern that the amended complaint included “an erroneous assertion that both [plaintiffs] were alleging infringement by Alexion[,]” plaintiffs proposed amending the complaint a second time to clarify the allegations of infringement by Alexion and remove claims against MedImmune, who had previously settled with plaintiffs. Id. at 3. Defendant Biogen refused to consent to the proposed amendment. Id. at 3-4.
Judge Robinson analyzed whether plaintiffs had good cause, under Fed. R. Civ. P. 16(b), for delaying nine months after the deadline to amend pleadings to file its motion to amend. Id. at 5. Judge Robinson found that the delay was not of plaintiffs’ making because defendants did not raise the issue with its interpretation of the infringement claims in the supplemental complaint until over six months after the deadline. Id. After the concern was raised, Plaintiffs behaved diligently, making “three separate proposed revisions” and engaging in several meet and confer sessions with defendants. Id. at 5-6.
Judge Robinson then considered the factors to determine whether leave to amend should be given:
(1) whether the amendment has been unduly delayed; (2) whether the amendment would unfairly prejudice the non-moving party; (3) whether the amendment is brought for some improper purpose; and (4) whether the amendment is futile.
Id. at 6 (citing Foman v. Davis, 371 U.S. 178, 182 (1962)).
The only factor at issue was defendant Biogen’s claim that plaintiffs’ allegation of willful infringement and request for treble damages was futile. Id. Judge Robinson noted that “allegations of willfulness and requesting treble damages have appeared in all three of the complaints filed in this action.” Id. at 3 n.1. Regardless, Judge Robinson found that plaintiffs’ claims were not fuitle after analyzing the claims under In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). Specifically, plaintiffs provided evidence that Biogen knew about the alleged infringement at least two months prior to plaintiffs’ filing of the suit. Id. at 7. Judge Robinson rejected Biogen’s argument that plaintiffs’ willfulness claims were barred because Novartis Pharma did not become the exclusive licensee of the patent-in-suit until 18 months after the filing of the suit. Id. 7. Judge Robinson noted that “courts have upheld willfulness claims based on conduct occurring before a plaintiff had standing to sue. Id. at 7-8.