Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The patents-in-suit relate to needleless intravenous medical connector valves.  Previously, the Court issued a Scheduling Order directing the parties to file amendments to pleadings and calling for discovery to end by a date certain.  Thereafter, the parties filed a Stipulation And Order For Amending Answer, Defenses And Counterclaims granting Defendant leave to amend its original Answer.  Accordingly, Defendant filed an Amended Answer adding certain affirmative defenses alleging unenforceability due to patent misuse and inequitable conduct. Defendant filed the instant Motion To Modify Scheduling Order And For Leave To File Second Amended Answer after the deadline for filing amended pleadings had passed.  By its Motion To Amend, Defendant seeks to add a Tenth Affirmative Defense, which alleges that the patents-in-suit are unenforceable due to inequitable conduct. Specifically, the proposed amendment alleges that plaintiff failed to disclose an inventor or co-inventor and other key contributors to the inventions claimed in the patents-in-suit.  Defendant contends that it has diligently pursued discovery since learning of information giving rise to the proposed inequitable conduct claim, that the facts and conduct alleged in the Tenth Affirmative Defense have been known to plaintiff, and that no additional discovery would be required by either party.  The Court agrees and finds that defendant has demonstrated good cause to amend its Answer as required by Rule 16(b).  Defendant's proposed Second Amended Answer pleads a new legal theory-inequitable conduct-based on new set of facts obtained and confirmed during discovery which took place after the Scheduling Order's deadline for amended pleadings.  Plaintiff ICU Medical, Inc.'s Motion For Leave To File Sur-Reply will also be granted.