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Judge Robinson grants motion to amend answer to add improper inventorship defense.

In a memorandum order issued yesterday, Judge Sue L. Robinson granted defendants’ motion to amend to add the defense of improper inventorship.  Intellectual Ventures I LLC v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Sept. 7, 2016).  The motion was filed shortly before the close of expert discovery and following the deposition of a third party who, defendants argued, should have been listed as an inventor of U.S. Patent No. 5,938,742.  The Court granted the motion even though it was filed “17 years after the ‘742 patent issued, and more than one year after the court-ordered deadline for amended pleadings[,]” and with trial set to begin in January 2017.  Id. at 4.  Judge Robinson explained, “[b]ecause the court is not prepared at this juncture to evaluate the quality or quantity of evidence defendants cite in their papers, and because the court recognizes the importance of proper inventorship, the motion to amend shall be granted.”  Id. at 5.  However, Judge Robinson added that due to the “extraordinary delay between issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation[,]” “the court will bifurcate the newly-added defense to allow for additional discovery and a separate motion practice and trial[.]”  Id.

Intellectual Ventures I LLC v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Sept. 7, 2016)

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