In a recent Order, Judge Gregory M. Sleet denied defendants’ (“Google”) motion to amend the answer, which sought leave to include an implied license affirmative defense. VideoShare, LLC v. Google, Inc. and YouTube, LLC, C.A. No. 13-990-GMS (D. Del. June 23, 2016).
Because Google filed its motion to amend more than two months after the scheduling order’s deadline to amend the pleadings, Google was required to show good cause pursuant to Fed. R. Civ. P. 16(b)(4). Judge Sleet found that Google failed to meet this burden:
The basis of Google’s implied license defense is VideoShare’s June 21, 2013 covenant not to sue for infringement of U.S. Patent No. 7,987,492. Nonetheless, Google failed to include the implied license defense in its pleadings for a year and a half after VideoShare entered the covenant not to sue. Google has made no attempt to explain its delay in presenting this defense. Google does not contend that it lacked sufficient information to meet the amendment deadline, or that it discovered new information that could not be timely pled. Therefore, Google has not demonstrated why its amended defense could not have been sought in a timely manner.
Judge Sleet also rejected Google’s argument that the “an implied license is intertwined with, related to, or necessarily encompassed by Google’s already pled defenses of exhaustion, estoppel, and ‘other equitable defenses.’” Judge Sleet explained that “[a]lthough an implied license might relate, at least tangentially, to some of Google’s already pled defenses, the court finds the incorporation of an implied license defense would represent a substantive change to the scope of Google’s defenses.”
Finally, Judge Sleet found that granting Google’s motion “would prejudice VideoShare due to the unfair surprise.” Judge Sleet noted that “[b]ecause the exhaustion and estoppel defenses are substantively different, Videoshare could not have been on notice of the implied license defense.”