Judge Sue Robinson recently denied a patent infringement plaintiff’s motion for leave to file an amended complaint adding claims of induced infringement. See Walker Digital, LLC v. Google, Inc., C.A. No. 11-309-SLR, Memorandum Order at 1 (D. Del. Apr. 11, 2013). Although the plaintiff had included allegations of induced infringement in preliminary infringement contentions, it did not formally move to amend pleadings until significantly later, approximately nine months after the deadline for filing amended pleadings and a month before the close of fact discovery. The plaintiff asserted good cause for its amendment based on (1) the Federal Circuit’s decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012), (2) defendants’ claim constructions raising the potential need to rely on inducement, and (3) the lack of undue prejudice. Id. at 2. Judge Robinson found that (1) Akamai was inapplicable because the plaintiff did not allege that only some steps were performed by third parties, (2) the defendants’ representations that they did not intend to assert a non-infringement argument based on claim constructions were acceptable and binding, and (3) there was no good cause for plaintiff to amend regardless of whether or not such an amendment would prejudice defendants. Accordingly, she denied the motion to amend. Id. at 2-4.
Judge Robinson also denied the defendants’ request to stay the case pending reexamination. Id. at 4. Between the filing of the motion to stay and Judge Robinson’s decision, the PTO issued an “Action Closing Prosecution” in an inter partes reexamination initiated by defendants, which rejected every claim of the patent-in-suit. Although “there [was] no dispute that a final resolution of the administrative process would simplify the judicial process, and that . . . the administrative process is less expensive than the judicial process,” Judge Robinson found that “the judicial process had proceeded far enough (and the administrative process has not) that a stay would unduly prejudice [the plaintiff.]” Id. at 4-6. The prejudice to plaintiff was not diminished by the fact that “is a non-practicing entity,” because “it is a research-oriented business that will be prejudiced if its rights under the [patent-in-suit] are not adjudicated timely” and there is “no reliable time table to conclusion” of the administrative process. Id. at 5.