Free Reply Brief - District Court of Delaware - Delaware

Case 1:04-cv-00858-SLR Document 258-2 Filed 08/16/2005 Page 1 BM? 2 OM
Westlaw
Not Reported in F.Supp.2d Page 1
Not Reported in F.Supp.2d, 2003 WL 1905637
(Cite as: Not Reported in F.Supp.2d)
H begin on September 8, 2003. Presently before the
Not Reported in F.Supp.2d, 2003 WL 1905637 court is plaintiffs motion for leave to amend its
Briefs and Other Related Documents complaint. (D.I.160) This court has jurisdiction
Only the Westlaw citation is currently available. pursuant to 28 U.S.C. §§ 1331 and 1338. For the
United States District Court,D. Delaware. reasons that follow, plaintiffs motion to amend is
SYMBOL TECHNOLOGIES, INC., Plaintiff, granted.
v.
PROXIM INCORPORATED, Defendant.
No. 01-80l—SLR. II. STANDARD OF REVIEW
April 17, 2003. "A party may amend the party's pleading once as a
matter of course at anytime before a responsive
pleading is seryed .... " I—`ed.R.Civ.P. I5(a). "
Andre G. Bouchard , and Karen L. Pascale , of Otherwise a party may amend the party's pleading
Bouchard, Margules & Friedlander, Wilmington, only by leave of court or by written consent of the
Delaware, for Plaintiff. adverse party; and leave shall be given freely when
Eric J. Lobenfeld , Ira J. Schaefer , and Jonathan M. justice so requires." [al Courts may deny leave to
Sobel , of Clifford, Chance, US, LLP, New York, amend where they find "undue delay, bad faith or
New York, of counsel. dilatory motive on the part of the movant, repeated
Richard L. Horwitz , of Potter, Anderson & failure to cure deficiencies by amendments
Corroon, LLP, Wilmington, Delaware, for previously allowed, undue prejudice to the
Defendant. opposing party by virtue of allowance of the
Hany J. Roper , George S. Bosey , Raymond N. amendment, [or] futility of amendment .... " Foman
Nimrod , Aaron A. Barlow , and Timothy J. Barron v. Davis, 371 U.S. 178, 182 (1962). "If the
, of Roper& Quigg, Chicago, Illinois, of counsel. underlying facts or circumstances relied upon by a
plaintiff may be a proper subject of relief he ought
MEMORANDUM OPINION to be afforded an opportunity to test his claim on
the merits." Id
ROBINSON, Chief J.
I. INTRODUCTION III. DISCUSSION
*1 On December 4, 2001, plaintiff Symbol Plaintiff seeks leave of the court to amend its
Technologies, Incorporated ("Symbol") filed this complaint to add additional allegations of
action against defendant Proxim, Incorporated (" inequitable conduct by defendant in procuring U.S.
Proxim") alleging infringement of four U.S. Patents Patent No. 5,231,634 ("the ‘634 patent"), the patent
owned by plaintiff. (D.I.1) On December 18, 2001, asserted in defendant's counterclaim of infringement
Proxim answered the complaint and asserted, inter against plaintiff. (D.I.160) Plaintiff also seeks to
alia, a counterclaim of infringement of one of its re~sty1e its prior request for declaratory relief of
own patents. (D.I.6) On January 9, 2002, this court invalidity, non-infringement and unenforceability of
entered a scheduling order requiring all the ‘634 patent as an affirmative count seeking a
amendments to the pleadings to be submitted by declaratory judgment of said requests. Finally,
August 1, 2002, with discovery to be concluded by plaintiff seeks to amend its complaint to reflect the
January 31, 2003. Trial is currently scheduled to fact that it is no longer asserting one of its patents,
© 2005 Thomson/West. No Claim to Orig. U.S. Govt. Works.
http://print.westlaw.com/delivery.html?dest=atp&format=HTMLE&dataid=A005 5 800000... 8/16/2005

Case 1 :04-cv-00858-SLR Document 258-2 Filed 08/16/2005 Page 2 Bree 3 OM
Not Reported in F.Supp.2d P¤g€ 2
Not Reported in F .Supp.2d, 2003 WL 1905637
(Cite as: Not Reported in F.Supp.2d)
U.S. Patent No. 5,688,803 (“the '803 patent"), in person who committed inequitable conduct during
this case. the prosecution of the '634 patent. Second, plaintiff
fails to properly plead inequitable conduct under
In support of its motion to amend, plaintiff contends Fed.R.Civ.P. 9(b).
that the facts supporting its inequitable conduct
claims did not come to light until the end and Defendant's final concern is that plaintiffs
beyond of discovery. Plaintiff states that although amendment removing references to the now
fact discovery ended on October 17, 2002, the non~asserted '803 patent may curtail its unfair
parties have both been actively taking numerous competition claims and claims for attorneys fees
fact discovery depositions into early December based on this patent.
2002. Based on these facts, plaintiff contends that it
has not delayed in bringing its inequitable conduct In its reply, plaintiff argues that it did not delay
allegations and defendant would not be unduly seeking to amend and, additionally, delay alone is
prejudiced by the amendment. not the basis for denial of a motion for leave to
amend. (D.l.l66) It asserts that it conducted a
*2 Defendant opposes plaintiffs motion for leave to reasonable and diligent investigation of the facts
amend on a number of grounds. (D.I.16l) First, surrounding inequitable conduct despite defendant's
defendant argues that plaintiffs motion is untimely. efforts to hinder the investigation. The documents
In support of this argument, defendant contends that defendant produced in May 2002 were “buried
at no time prior to December 2002 did plaintiff among 200 boxes of documents" produced within a
indicate that it would be pursing additional two-week period. The facts supporting its
inequitable conduct claims. Furthermore, all the inequitable conduct claims did not come to light
documents relied on by plaintiff for its inequitable until the September 2002 depositions and then
conduct allegations were produced as early as May plaintiff began conducting an investigation to
24, 2002. Plaintiff also deposed numerous witnesses confirm these facts. A key fact needed was the
about many of these documents with regard to any source code related to the charges which defendant
potential inequitable conduct in September 2002. delayed in providing until December 2002.
Thus, defendant argues plaintiffs delay is undue
and solely the fault of plaintiff Next, plaintiff argues that allowing the amendment
will not prejudice defendant or burden the court. In
Next, defendant argues that allowing the support of this argument, plaintiff contends that
amendment will prejudice it and burden the court. defendant has been on notice of its charges since
Defendant argues that allowing the amendment at December 2002 and its on—sale bar affirmative
this late date would require it to take additional defense (related to the inequitable conduct charge)
discovery which would increase its costs and has been in the case since the beginning. Therefore,
potentially delay the case. Furthemrore, the no extensive additional discovery will be required
inequitable conduct allegations would certainly be and all of the facts related to the conduct of the
raised on summary judgment and, therefore, the inventors is under the control of defendant.
amendment would delay this briefing as well.
*3 Finally, plaintiff argues that its amendment is not
Finally, defendant argues that plaintiffs amendment futile. It argues that its amended complaint names
would be futile. In support of this argument, specific individuals who were aware of material
defendant asserts that plaintiffs inequitable conduct references and failed to disclose them to the patent
charge is legally deficient for at least two reasons. office. It also asserts that its complaint is properly
First, plaintiff alleges in its amended complaint that pled under Rule 9(b)
defendant committed inequitable conduct. As a
matter of law, only a natural person, not a Upon review of the parties' arguments and the
corporation, can commit inequitable conduct. amendments to the complaint, the court shall grant
Plaintiffs complaint fails to point to any specific plaintiffs motion. The court agrees with plaintiff
© 2005 Thornson/West. No Claim to Orig. U.S. Govt. Works.
http://print.westlaw.com/delivery.html‘?dest=atp&format=HTMLE&dataid=A0055800000. .. 8/16/2005

Case 1 :04-cv—00858-SLR Document 258-2 Filed 08/16/2005 Page 3 Bits? 4 OM
Not Reported in F.Supp.2d Page 3
Not Reported in F.Supp.2d, 2003 WL 1905637
(Cite as: Not Reported in F.Supp.2d)
that allowing the amendment will not unfairly · l:0ICV00801 (Docket) (Dec. 04, 2001)
prejudice defendant or cause delay to the case.
Plaintiffs proposed amendment is narrow and END OF DOCUMENT
largely based on facts defendant has known
throughout the case. Furthermore, based on the
record, there is no evidence that the delay of
plaintiffs amendment is undue or that it is being
made in bad faith or for a dilatory motive.
The court does not believe the amendment will
prolong discovery or delay trial. To the extent
defendant needs to conduct any additional
depositions related to the narrow issue of
inequitable conduct, the court will allow the
discovery and plaintiff shall produce any requested
witness promptly. Furthermore, inequitable conduct
is rarely appropriately decided on summary
judgment so defendant's concerns about its ability to
brief the issue are not persuasive.
Finally, defendant's concerns that plaintiffs
amendments will curtail its unfair competition
claims and claims for attorneys fees based on the
'803 patent shall be assuaged. Defendant will still be
entitled to pursue these claims against plaintiff at
trial.
IV. CONCLUSION
For the reasons stated, plaintiffs motion for leave to
amend its complaint (D.I.l60) is granted. An
appropriate order shall issue.
ORDER
At Wilmington this 17th day of April 2003,
consistent with the memorandum opinion issued this
same day;
IT IS ORDERED that plaintiffs motion for leave to
amend its complaint (D.I.160) is granted.
D.Del.,2003.
Symbol Technologies, Inc. v. Proxim Inc.
Not Reported in F.Supp.2d, 2003 WL 1905637
Briefs and Other Related Documents (Back to top)
© 2005 Thomson/West. No Claim to Orig. U.S. Govt. Works.
http://print.west1aw.com/delivery.htm1?dest=atp&format=HTMLE&dataid=A005 5 800000... 8/16/2005