United States District Court, D. New Jersey
MEMORANDUM OPINION AND ORDER
DOUGLAS E. ARPERT United States Magistrate Judge
before this Court are two related applications: 1) the
request of certain defendants for leave to serve second
amended invalidity contentions, and 2) the request of certain
defendants for leave to file amended pleadings to allege
unenforceability of three of the asserted patents for
inequitable conduct. Plaintiffs have filed a separate motion
to dismiss certain of Defendant Mylan's counterclaims
[dkt. no. 167] which is pending before U.S. District Judge
Freda L. Wolfson.
Certain defendants' application for leave to serve
second amended invalidity contentions.
Apotex, Torrent, Hetero, Strides, Breckenridge, Prinston and
MSN (collectively, “the Movants”) seek permission
to serve second amended invalidity contentions with respect
to U.S. Patent Nos. 8, 536, 206 (“the ‘206
patent”), 8, 504, 064 (“the ‘064
patent”) and 8, 618, 142 (“the ‘142
patent”) (collectively, “the Patents”) in
order to assert invalidity under 35 U.S.C. §102(f) for
derivation and improper inventorship. See the
Movants' letter to the Court dated January II, 2017
(“Ltr. d. 1/11/17") [dkt no. 152]. In short, the
Movants contend that the named inventors of the Patents
derived their invention from the work of Dr. Herman Amschler,
the named inventor of another asserted patent (U.S. Patent
No. 5, 712, 298), and that none of the named inventors
contributed to the conception of the subject matter of the
Patents. The Movants argue that their application is timely,
supported by good cause, and will not prejudice Plaintiffs.
have opposed the Movants' application arguing that the
Movants were not diligent in moving to amend their
contentions and that Plaintiffs will be prejudiced if the
application is granted. See Plaintiffs' letter
to the Court dated January 27, 2017 (“Ltr. d.
1/27/17"). The Movants replied to Plaintiffs'
opposition in a letter to the Court dated January 31, 2017
(“Ltr. d. 1/31/17") [dkt. no. 160].
instant application is governed by Local Patent Rule 3.7
pursuant to which leave to amend a party's contentions
may be granted “by order of the Court upon a timely
application and showing of good cause.” L. Pat. R. 3.7.
A party seeking to amend its contentions bears the burden of
demonstrating diligence in discovering the basis for the
proposed amendment as well as moving promptly to amend when
new evidence is discovered. Merck Sharp & Dohme Corp.
v. Sandoz, Inc., C.A. No. 12-3289 (PGS), 2014 WL 997532,
at *3 (D.N.J. Jan. 6, 2014). The moving party must also
establish that the amendments will not unduly prejudice the
non-moving party. Astrazeneca AB v. Dr. Reddy's Labs,
Inc., C.A. No. 11-2317 (JAP), 2013 WL 1145359, at *5
(D.N.J. Mar. 18, 2013).
Movant's application is supported by good cause and is
Movants contend that through the depositions of Drs. Zingel
and Mueller and Mr. Palosch in late 2016 they learned
“critical facts” that support the derivation and
improper inventorship defenses contained in their proposed
amended contentions. Further, the Movants argue that these
facts were “non-public” and unavailable prior to
those depositions. Ltr. d. 1/11/17 at pp. 5-7. As to
derivation, the Movants state, they “needed to confirm
that none of the named inventors actually contributed to the
conception of [the Patents'] claims.” Id.
at p. 6. As to improper inventorship, the Movants state, the
depositions revealed additional information concerning the
respective roles of Dr. Amschler and the named inventors in
the conception and reduction to practice of the subject
matter of the Patents. Id.
contrary, Plaintiffs maintain that “as of
Plaintiffs' production on April 20, 2016, [the Movants]
had all the information they rely on in their proposed
amendment.” See Ltr. d. 1/27/17 at p. 4.
Further, Plaintiffs argue, “nothing that came out of
this fall's inventor depositions added new information to
what was in the documents.” Id. Consequently,
Plaintiffs argue, the Movants' “diligence should be
measured from receipt of the documents in April 2016"
and not the date of the inventors' depositions.
Id. On this basis alone, Plaintiffs argue, the
Movants' application should be denied. Id. at p.
response, the Movants argue that it was “impossible for
[the Movants] to assert in good faith their derivation and
improper inventor defenses before the conclusion of the
Mueller and Palosch depositions” because they lacked
evidence establishing critical elements of those defenses.
See Ltr. d. 1/31/17 at pp. 3-8.
Court finds that once the depositions were complete and the
transcripts were obtained, the Movants promptly presented
their new defenses and proposed amended invalidity
contentions to Plaintiffs on December 15, 2016. Plaintiffs
responded on January 6, 2017 and the Movants' application
followed on January 11, 2017. This Court has previously
determined that, as in this case, additional discovery,
including depositions, may be necessary to reveal, develop or
confirm that sufficient evidence exists to support a
party's proposed amendments. See Helsinn Healthcare
S.A. v. Dr. Reddy's Labs, Ltd., CA No. 11-3962
(MLC), 2013 WL 3336859, at *4 (D.N.J. July 2, 2013);
Warner Chilcott Company, L.L.C. v. Lupin, Ltd., CA
No. 11-7228 (JAP), 2013 WL 4494949 (D.N.J. Aug. 19, 2013).
Here, the Movants may have previously obtained some
documentary evidence which would tend to support their
amended contentions. However, the inventors' depositions