United States District Court, D. Delaware
before the Court is Plaintiffs motion for leave to amend
complaint (D.I. 230). I have considered the parties briefing.
(D.I. 231, 240, 250).
Technology LLC ("TC Tech") filed this action on
March 10, 2016, alleging that Sprint Corporation and Sprint
Spectrum, L.P. (collectively, "Sprint") infringed
U.S. Patent No. 5, 815, 488 ("the '488 patent")
with certain wireless services on its LTE network. (D.I. 1).
November 2016, Sprint stated in response to an interrogatory
that it first became aware of the '488 patent in February
2016. (D.I. 232, Ex. 5 at 15-16 (Interrogatory No. 5)).
December 2017, Sprint amended its response to disclose that
it received an email on January 9, 2012, from IAG, the broker
representing the prior owner of the '488 patent, with the
subject line "CableLabs Patent Sale Offering -
IAG." Attached to the email was a 12-page document
titled, "CableLabs Patent Sale Offering Presented by
IAG," which identified and described the '488
patent. The attachment stated, in bold, "Any discussion
of the use or potential use of the referenced patents .. .
should not be construed as being . . . notice of
infringement, or any form of actual or prospective
infringement." The email was sent to Charlie Wunsch,
then general counsel at Sprint. Mr. Wunsch forwarded the
email to Sprint employees Keith Cowan and Harley Ball. Sprint
stated that "after thorough investigation[, ] Sprint
believes that the attachment was never opened by Messrs.
Wunsch, Cowan, or Ball, that neither the email nor its
attachment was forwarded to anyone else at Sprint, and that
Messrs. Wunsch, Cowan, and Ball, while Sprint employees,
never discussed this email or its attachment with each other
or with any other employee at Sprint," and, in fact,
"have no recollection of the email whatsoever."
Therefore, Sprint maintained its position that it first
became aware of the '488 patent in February 2016.
(Id., Ex. 6 at 2-3 (Interrogatory No. 5)).
Accompanying the interrogatory response, Sprint produced a
February 24, 2012 follow-up email from IAG that Mr. Wunsch
also forwarded to Mr. Ball. (D.I. 241, Ex. J; D.I. 240 at 6).
designated Mr. Ball as its Rule 30(b)(6) witness regarding
Sprint's pre-suit knowledge and/or awareness of the
'488 patent. (D.I. 232, Ex. 7 at 27:14-23 (Ball
Deposition)). TC Tech deposed Mr. Ball on July 18, 2018.
(Id.). The parties met and conferred on August 29,
2018. (D.I. 231 at 4-5). TC Tech filed this motion for leave
to amend on September 28, 2018. (D.I. 230). The deadline to
amend the pleadings under the Court's scheduling order
was May 12, 2017. (D.I. 14).
Rule of Civil Procedure 15 governs amendments to the
pleadings generally. Rule 15(a)(2) provides that "[t]he
court should freely give leave [to amend] when justice so
requires." Fed.R.Civ.P. 15(a). "Among the grounds
that could justify a denial of leave to amend are undue
delay, bad faith, dilatory motive, prejudice, and
futility." Shane v. Fauver, 213 F.3d 113, 115
(3d Cir. 2000).
Rule of Civil Procedure 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, "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 diligence of the
movant, and not on prejudice to the non-moving party."
S. Track & Pump, Inc. v. Terex Corp., 722
F.Supp.2d 509, 521 (D. Del. 2010).
TC Tech Meets Good Cause Under Rule 16(b)
argues that TC Tech has failed to show diligence in pursuit
of its new willful infringement claim, as required to show
good cause under Rule 16(b). (D.I. 240 at 8-10). The crux of
the parties' dispute is whether TC Tech obtained new
information related to willfulness from Mr. Ball's July
2018 deposition. Sprint argues that TC Tech has been in
possession of all relevant information since December 2017
when Sprint submitted its amended interrogatory response and
accompanying production. (Id. at 9-10). TC Tech
argues that there are inconsistencies between the December
2017 response and Mr. Ball's testimony, which support its
claim for willful infringement. (D.I. 231 at 7).
December 2017 response states that "after thorough
investigation," Sprint believed the attachment to the
January 2012 IAG email, which includes references to the
'488 patent, was never opened by any Sprint employees,
namely Messrs. Wunsch, Cowan, and Ball. (D.I. 232, Ex. 6 at
2-3). Mr. Ball testified during deposition that "there
was no way to verify one way or the other" whether the
attachment had been opened, other than the recollections of
himself, Mr. Wunsch, and Mr. Cowan that it was not opened.
(Id., Ex. 7 at 194:8-196:4). Mr. Ball also testified
that he did not think he, Mr. Wunsch, or Mr. Cowan would have
opened the attachment in the normal course of business.
(Id.). TC Tech argues that Mr. Ball's testimony
shows that Sprint did not investigate whether the IAG email
attachment was opened, contrary to its December 2017
response. (D.I. 231 at 3-4; D.I. 250 at 2). I agree
that there is a meaningful difference between a
"thorough investigation," in the December 2017
response, and having "no way to verify one way or the
other," as stated by Mr. Ball.
TC Tech meets the good cause requirement of Rule 16(b). TC
Tech's willful infringement claim is based on new
information obtained in Mr. Ball's July 2018 deposition.
TC Tech also appears to have worked diligently in the period
between the deposition and this motion-TC Tech followed up
with Sprint two days after the deposition, arranged a meet
and confer shortly after receiving Mr. Ball's final
deposition transcript, and filed this motion about a month
after the meet and confer. (D.I. 231 at 7). See Cornell
Univ. v. Illumina, Inc., 2016 WL 3046258, at *5 (D. Del.
May 27, 2016) (finding good cause met where the party's
new allegations were based on "a new set of facts
obtained and confirmed during discovery which took place
after the Scheduling Order's deadline for amending
pleadings," and the party "worked diligently to
obtain and confirm facts" supporting its new
allegations); Enzo Life Sciences, Inc. v. Digene