United States District Court, D. Delaware
before the Court are the issues of (1) whether Plaintiff may
seek pre-issuance damages under 35 U.S.C. § 154(d), and
(2) Plaintiffs motion for leave to file an amended complaint
(D.I. 346). I previously reviewed the parties' briefing
on pre-issuance damages in the proposed pretrial order. (D.I.
326 at 11; D.I. 327, Sched. I). Per my instructions at the
pretrial conference, the parties submitted additional
letters, as well as letters on the motion for leave to file
an amended complaint. I have reviewed the parties'
letters. (D.I. 345, 347, 349, 351).
Section 154(d) Pre-issuance Damages
seeks damages under 35 U.S.C. § 154(d) based on
Defendants' actions prior to issuance of the '520
patent. Defendants argue that such pre-issuance damages are
unavailable here as a matter of law. (D.I. 326 at 11).
154(d) is a narrow exception to the general rule that damages
are only available for infringement occurring after a patent
is issued. RosebudLMS Inc. v. Adobe Sys. Inc., 812
F.3d 1070, 1073 (Fed. Cir. 2016). The statute provides the
right to pre-issuance reasonable royalties for infringement
occurring "during the period beginning on the date of
publication of the application of [the asserted] patent under
[35 U.S.C.] section 122(b)," provided that the infringer
"had actual notice of the published patent
application," and "the invention as claimed in the
[asserted] patent is substantially identical to the invention
as claimed in the published patent application." 35
U.S.C. § l54(d)(1)-(2).
parties dispute the meaning of "the published patent
application." The '520 patent application (U.S.
Patent App. Pub. No. 2010/0081615A1) was first published on
April 1, 2010 with claims substantially different from the
issued claims. (D.I. 327, Sched. I at 2-4; D.I. 345 at 1, Ex.
2). The applicants later amended the claims to be
substantially identical to the issued claims. The amended
claims were published in November 2011 to the
application's file wrapper on the Patent Office Public
Patent Application Information Retrieval system ("Public
PAIR"). (D.I. 327, Sched. I at 1-4). Plaintiff argues
that under § 154(d), it may rely on the published
application as amended by the November 2011 claims to seek
pre-issuance damages. Defendants argues that § 154(d)
limits the patentee to damages related to the initial
published patent application, that is, the April 2010
appears to be an issue of first impression. Previous
decisions under § 154(d) have focused on the
"actual notice" and "substantially
identical" requirements as applied to the initial
published patent application. See Rosebud, 812 F.3d
at 1073-75; Classen Immunotherapies, Inc. v. Shionogi,
Inc., 993 F.Supp.2d 569, 579-80 (D. Md. 2014);
Baseball Quick, LLC v. MLB Advanced Media L.P., 2014
WL 3728623, at *11-12 (S.D.N.Y.July 25, 2014); Loops, LLC
v. Phoenix Trading, Inc., 2010 WL 3041866, at *5-6 (W.D.
Wash. July 30, 2010). To my knowledge, no court has addressed
the question of whether a patentee may rely on amendments to
the original published patent application for pre-issuance
the U.S. Code nor the Code of Federal Regulations
("C.F.R.") explicitly defines "published
patent application." Section 154(d) states that it
applies to patent applications published under 35 U.S.C.
§ 122(b). Likewise, the C.F.R. defines "[a]
published application" as "an application for
patent which has been published under 35 U.S.C. 122(b)."
37 C.F.R. § 1.9(c). Section 122(b) merely provides that
"each application for a patent shall be published ...
promptly after the expiration of a period of 18 months from
the earliest filing date for which a benefit is sought under
[title 35 of the U.S. Code]." 35 U.S.C. § 122(b).
Therefore, it is unclear from the plain language of the
statute whether "the published patent application"
in § 154(d) is limited to the initial published
application or includes later amendments.
on other provisions of the C.F.R., however, it appears that
the most natural reading of "the published patent
application" is as the initial published document, not
the entire file wrapper on Public PAIR. For example, section
(a) The publication of an application under 35 U.S.C. 122(b)
shall include a patent application publication... . The
patent application publication will be based upon the
specification and drawings deposited on the filing date of
the application, as well as the application data sheet and/or
the inventor's oath or declaration. The patent
application publication may also be based upon .. .
amendments to the claims that are reflected in a complete
claim listing under § 1.121(c) [general procedure for
amending claims], . . . provided that such substitute 
amendment is submitted in sufficient time to be entered into
the Office file wrapper of the application before technical
preparations of the application have begun. Technical
preparations of an application generally begin four months
prior to the projected date of publication.
(c) At applicant's option, the patent application
publication will be based upon the copy of the application
(specification, drawings, and the application data sheet
and/or the inventor's oath or declaration) as amended,
provided that applicant supplies such a copy . . . within one
month of the mailing date of the first Office communication
that includes a confirmation number for the application, or
fourteen months of the earliest filing date for which a
benefit is sought under title 35, United States Code,
whichever is later.
37 C.F.R. § 1.215(a), (c). Under the C.F.R., the
application published pursuant to section 122(b) includes a
"patent application publication," which is based on
the initial filing materials and any amendments made within
certain time periods in the early stages of prosecution.
See Id. Amendments are not included in the
"patent application publication" unless they are
supplied within those time periods. Therefore, later
amendments, such as those in the November 2011 claims, would
not be considered part of the "patent application
publication." Therefore, I find "the published
patent application" in § 154(d) is limited to the
initial published application. As such, Plaintiff cannot seek
§ 154(d) pre-issuance damages based on the later amended
November 2011 claims published to the application file
Leave to File Amended Complaint
moves for leave to file an amended complaint to add (1)
pre-suit infringement claims, and (2) infringement claims
under 35 U.S.C. § 271(f).
Federal Rule of Civil Procedure 15(a) governs amendments to
the pleadings generally, Rule 16(b) also applies when a party
moves to amend past the date set by the scheduling order.
E. Minerals & Chemicals Co. v. Mahan, 225 F.3d
330, 340 (3d Cir. 2000); Media Pharm. Inc. v. Teva Pharm,
USA, Inc., 2016 WL 6693113, at *1 & n.2 (D. Del.
Nov. 14, 2016). Rule 16(b)(4) provides that "[a]
schedule may be modified only for good cause and with the
judge's consent." Fed.R.Civ.P. 16(b)(4). "Good
cause is present when the schedule cannot be met despite the
moving party's diligence." Media Pharm.,
2016 WL 6693113, at *1. "In contrast to Rule 15(a), the
good cause standard under Rule 16(b) hinges on ...