In a recent memorandum opinion, Judge Robinson granted a defendant’s motion to stay a second-filed action pending the first-filed court’s determination of where the litigation should proceed in light of the first-filed rule. Cellectis S.A. v. Precision Biosciences, Inc., C.A. Nos. 11-890-SLR, 12-204-SLR (D. Del. Aug. 6, 2012). The declaratory judgment plaintiff, Cellectis, (who was the defendant in a mirror image infringement suit filed first in North Carolina), argued that “the first-filed rule should not apply in the first instance because the North Carolina court lacks jurisdiction over [Cellectis].” Id. at 5. The Court noted, though, that Cellectis had previously sued Precision Biosciences in North Carolina, and therefore “should not oppose litigating in a court in which it previously litigated without complaint.” Id. The Court ultimately held that because it was not “evident that the North Carolina court lacks personal jurisdiction . . . the North Carolina court should make that determination in the first place as the first-filed court.” Id. at 6. The Court stayed the case to allow the North Carolina court time to apply the first-filed rule and determine where the parties’ litigation should proceed. Id.
On a separate issue, Judge Robinson clarified that where a complaint is amended “to add patents that issued after the original complaint was filed,” the determination of whether to permit the amendment is controlled by Federal Rule of Civil Procedure 15(d), as opposed to Rule 15(a). Here, the Court permitted Cellectis to amend its complaint to add newly issued patents under Rule 15(d), explaining that (as with the inquiry under Rule 15(a)) leave should be freely given absent evidence of undue delay, bad faith, or dilatory motive, none of which were present in this case. Id. at 8-9. The Court acknowledged that it appeared Cellectis chose to amend its complaint, rather than file a new action for infringement of the newly issued patents, to avoid “first-to-file complications.” Id. at 8.