Complaint must be amended or face dismissal

Eidos Communications, et al. v. Skype Technologies SA, et al., Civ. No.09-234-SLR, February 24, 2010.

Robinson J.  Defendant’s motion to dismiss for failure to state a claim or, in the alternative, for a more definite statement is granted in part.

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Failure to plead false marking claims results in partial dismissal

Jennifer L. Brinkmeier v. Graco Children’s Products Inc., C.A. No.09-262-JJF, February 16, 2010.

Farnan, J.  Defendant's Motion To Dismiss is granted in part and denied in part. Plaintiff’s Motion For Leave To File Amended Complaint is granted.

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Leave to file second amended answer after deadline is permitted

Webxchange Inc. v. Fedex Corporation, et al., C.A. No.08-133a-JJF, January 20, 2010.

Farnan, J.  Defendant’s motion for leave to amend its answer is granted.

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Leave to file second amended answer after deadline is permitted

Webxchange Inc. v. Dell Inc., C.A. No.08-132-JJF, January 20, 2010.

Farnan, J.  Defendant’s motion for leave to amend its answer is granted.

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Defendant permitted to amend answer to add inequitable conduct claim

ICU Medical, Inc. v. Rymed Technologies, Inc., Civil Action No. 07-468-JJF, December 16, 2009.

Farnan, J.  Defendant's Motion To Modify Scheduling Order And For Leave To File Second Amended Answer and Counter-Plaintiff's Counterclaims is granted.  Plaintiff's Motion For Leave To File Sur-Reply is also granted.

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Amended and supplemental pleadings are permitted

Mallinckrodt Inc., et al. v. E-Z-EM Inc. and Acist Medical Systems, Inc., C.A. No. 09-228-JJF, December 3, 2009.

Farnan, J.  Plaintiffs’ motion for leave to file an amended and supplemental complaint is granted; Defendants’ motion to strike is denied as moot.

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Fast-track schedule is bumped for provisional damages and willfulness discovery

Arendi Holding Ltd. v. Microsoft Corporation, et al., Civ. No. 09-119-JJF-LPS, November 4, 2009.

Stark, M. J.  The court will enter a new scheduling order to accommodate new discovery needed on provisional damages. Discovery issues are resolved.

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Formulaic recitation of claims is insufficient to defeat dismissal motion under 12(b) (6).

LG Electronics U.S.A., Inc., et al., v. Whirlpool Corporation, C.A. No. 08-234-GMS, November 9, 2009.

Sleet, C. J.  
Court grants motion to dismiss certain counts alleged in Second Amended Complaint for failure to state a claim pursuant to 12(b)(6).

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Lanham Act claims are dismissed. Complaint may not be amended after close of discovery

Robert Bosch LLC v. Pylon Manufacturing Corp., Civ. No. 08-542-SLR, October 19, 2009.

Robinson, J.  Plaintiff’s motions to reconsider dismissal of Lanham Act claim and to amend the pleadings to add an inequitable conduct claim are denied.

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Amendment of complaint is allowed to encompass additional patents

Infineon Technologies AG, et al. v. Fairchild Semiconductor International, et al., Civ. No. 08-887-SLR-LPS, September 30, 2009.

Stark, M. J.  Plaintiffs’ motion to amend their complaint to additional patents is granted. Costs associated with the motion are denied.

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Inequitable conduct defense fails as untimely

Laboratory Skin Care, Inc., et al. v. Limited Brands, Inc., et al., Civil Action No. 06-601-JJF, August 17, 2009.

Farnan, J.  Plaintiffs’ motion to strike Defendants’ motion for Defendants’ motion for summary judgment of unenforceability is granted.

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Amendment to allege willfulness is allowed

St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electronic Industrial Co., LTD., et al., Civil Action No. 04-1436-JJF-LPS, July 28, 2009.

Farnan, J.  Court overrules Nokia’s objections to Magistrate Stark’s Memorandum Opinion granting plaintiff leave to file a second amended complaint.

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Various counterclaims are dismissed with leave to amend with detail

Sun Microsystems, Inc. v. Versata Enterprises, Inc., et al., Civil Action No. 07-782-JJF, July 1, 2009.

Farnan, J.  Plaintiff’s motion to dismiss defendants’ counterclaims is granted in part and denied in part.  Plaintiff’s motion to strike is also granted in part and denied in part.  Defendants are granted leave to amend their defenses and counterclaims.

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Court declines to unseal inflammatory answer

Accenture Global Services GMBH, et al., v. Guidewire Software Inc., Civ. No. 07-826-SLR, June 30, 2009.

Robinson, J.  Defendant’s motion to dismiss tortious interference with business claim is denied; its motion to amend its answer to allege trade secret misappropriation claim is granted; and its motion to unseal its proposed amended answer is denied.

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Antitrust claims permitted in MDL patent dispute

In Re: Rembrandt Technologies, LP Patent Litigation, MDL Docket No. 07-1848-GMS-LPS, June 29, 2009.

Stark, M.J.  A motion to amend complaint filed by equipment vendors is granted.  The Magistrate Judge further recommends that Rembrandt’s motion to strike or dismiss antitrust counter-counterclaims be denied as moot; and a motion for judgment on the pleadings relating to certain claims filed by the cable defendants be denied.

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Leave to amend Complaint and Answer is granted

St. Clair Intellectual Property Consultants, Inc. v. Research In Motion LTD., et al., Civil Action No. 08-371-JJF-LPS, June 10 , 2009.

Stark, M. J.  Plaintiff’s unopposed Motion for Leave to File a First Amended Complaint and Defendant’s contested Motion for Leave to File Amended Answer and Counterclaims are granted.

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Amendment adding inequitable conduct defense is permitted

St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holdings Corporation, et al., Civil Action No. 08-373-JJF-LPS, June 10 , 2009.

Stark, M. J.  Defendants’ Motion for Leave to Amend their Answer, Affirmative Defenses, Counterclaims and Jury Demand to add defenses and counterclaims based on inequitable conduct and patent exhaustion and/or license is granted.

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Timely request to amend to allege willful infringement is granted

St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., et al., Civil Action No. 06-404-JJF-LPS, June 10 , 2009.

Stark, M. J.  Plaintiff’s Motion for Leave to File a Third Amended Complaint is granted.

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Timely request to amend to allege willful infringement is granted

St. Clair Intellectual Property Consultants, Inc. v. Matsushita Electrical Industrial Co. LTD., et al., Civil Action No. 04-1436-JJF-LPS, June 10 , 2009.

Stark, M. J.  Plaintiff’s Motion for Leave to File a Second Amended Complaint is granted.

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Inequitable conduct counterclaim is allowed where there was no delay or prejudice to the plaintiff

Roquette Freres v. SPI Pharma, Inc., et al., C.A. No. 06-540-MPT, May 21 , 2009.

Thynge, M. J.  Defendant’s motion to amend its answer to add a defense and counterclaim based on inequitable conduct is granted.  Plaintiff’s motion for leave to file a sur-reply is also granted and the arguments set forth therein were considered by the Court.

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Plaintiff fails to establish that the agency or alter ego theories of jurisdiction apply

LivePerson, Inc. v. NextCard, LLC, et al., C.A. No. 08-062-GMS, March 20, 2009.

Sleet, C.J.   Court grants defendants’ motion to dismiss for lack of personnel jurisdiction.  Plaintiff’s motions for jurisdictional discovery and to amend are denied.

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Amendments to answer and counterclaim are permitted over futility argument

JP Morgan Chase & Co., et al. v. Affiliated Computer Services, Inc., Civ. No. 08-189-SLR, March 4, 2009.

Robinson, J.  Defendants’ motion for leave to file an amended answer and counterclaim is granted.

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Untimely motion to amend to assert inequitable conduct is granted in part

Cordance Corporation v. Amazon.com, Inc., Civ. No. 06-491-MPT, February 18, 2009.

Thynge, M. J.  Magistrate grants in part defendant’s motion to amend to add new inequitable conduct counterclaims.

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Motion to amend answer is granted 2 1/2 years after action began

St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., LTD, et al., Civ. No. 04-1436-JJF-LPS, February 17, 2009.

Stark, M.J.  Defendant’s motion for leave to amend the answer and affirmative defenses is granted.

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Court grants motion to amend the pleadings to add inequitable conduct claims

Parker-Hannifin Corporation v. Zippertubing (Japan), LTD., C.A. No. 06-751-MPT, September 24, 2008.

Thynge, M.J.  Court finds defendant’s proposed amendments meet Rule 9(b) requirements and grants motion to amend to add inequitable conduct claims.

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Reconsideration granted; Magistrate recommends finding of standing.

McKesson Automation, Inc. v. Swisslog Holding AG, et al., C.A. No. 06-28-SLR-LPS, August 29, 2008.

Stark, M.J. Following submission of additional documentation, the Court grants plaintiff’s motion to reconsider its earlier recommendation of dismissal for lack of standing.  Motions by both sides to amend pleadings are granted.  Defendants’ motion to dismiss willfulness claim in light of Seagate is denied.

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Inequitable conduct claims survive but false marking claims are ruled untimely

Venetec International, Inc., v. Nexus Medical, LLC, C.A. No. 07-57-MPT, March 28, 2008.

Thynge, M.J.  Court denies plaintiff’s motion for partial judgment on the pleadings and grants defendant’s motion in part to amend its answer and counterclaim to expand on its unenforceability defense.


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Motion to amend and to supplement an inequitable conduct counterclaim is granted over futility argument

Amgen, Inc., et al. v. Ariad Pharmaceuticals, Inc. et al., C.A. No. 06-259-MPT, January 31, 2008.

Thynge, M.J.  The Court grants plaintiffs’ motion to amend and supplement their counterclaim for inequitable conduct.

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Patentee wins forum shopping contest

Abbott Laboratories, et al. v. Johnson & Johnson, Inc. and Cordis Corporation, C.A. Nos. 06-613-SLR and 07-259-SLR, November 28, 2007.

Robinson, J.  Plaintiffs' motion to supplement their complaints are denied.  Plaintiffs' motion to enjoin Defendants from prosecuting a New Jersey action is denied.  Defendants' motion to dismiss one action based on a covenant not to sue is granted and the court dismisses the second Delaware action sua sponte in favor of a first-filed New Jersey action.

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Stay pending reexamination is granted

Abbott Diabetes Care, Inc., v. Dexcom, Inc., C.A. No. 06-514-GMS, September 30, 2007.

Sleet, C.J.  Defendant’s motion to strike the complaint is denied.  Dexcom’s motion to consolidate this proceeding and to stay this proceeding pending reexamination of the seven patents-in-suit is granted.


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Declaratory judgment action dismissed as unripe

Angiodynamics v. Diomed Holdings, Inc., No. 06-02 –GMS Sept. 7, 2006.

Sleet, J.  Declaratory judgment action was dismissed due to no justiciable controversy.  A motion to amend the complaint was also denied as futile.


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Untimely amendment allowed to assert prosecution laches defense, but not inequitable conduct

Inline Connection Corp. v. AOL Time Warner Inc., et al., Nos. 02-272-MPT and 02-477-MPT (consolidated), Aug. 23, 2006.

Thynge, M.J.  The court granted defendants’ motion to amend their pleadings to assert prosecution laches defenses and counterclaims, and denied the motion with respect to three additional inequitable conduct allegations.

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DJ count dismissed as unripe where accused product lacked FDA approval; stay granted pending reexamination

Abbott Diabetes Care, Inc. v. Dexcom, Inc., No. 05-590 GMS, Aug. 16, 2006.

Sleet, J.  Motion to dismiss complaint is granted as to declaratory judgment count, and denied as to infringement count; motion to strike amended complaint is granted; and motion to stay pending reexamination is granted.

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Trade secret count survives motion to dismiss

Mobius Management Systems, Inc. v. Acartus, Inc., No. 05-346-SLR, June 28, 2006.

Robinson, J.  Defendant’s motion to strike, dismiss and stay amended complaint is denied.

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New Lanham Act claims added on eve of expert discovery claims permitted

Affinion Net Patents, Inc. v. Maritz, Inc., No. 04-360-JJF, June 8, 2006.

Farnan, J.  Plaintiff’s motion to amend complaint to assert Lanham claims and to dismiss counterclaims based on testimony that accused product was never implemented was granted.

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Court declined to dismiss, bifurcate or stay antitrust counts and permitted 4 patent claims to be added

Synopsys, Inc. v. Magma Design Automation, No. 05-701-GMS, May 25, 2006.

Sleet, J.  The Court denied plaintiff’s motion to dismiss 6 counts of defendant’s amended answer relating to the Sherman Act, Lanham Act and state law claims.  It further denied plaintiff’s motion to bifurcate or stay the antitrust claims from the patent claims.  Defendant’s motion to amend to add four counterclaims of patent infringement was granted.

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Temporary lack of jurisdiction cured when affiliate was substituted for plaintiff

Affinion Loyalty Group, Inc. v. Maritz, Inc., C.A. 04-360-JJF, May 22, 2006.

Farnan, J.  Defendant moved to dismiss for lack of subject matter jurisdiction due to a corporate acquisition which assigned rights to patents-in-suit to Affinion Patents, leaving Affinion Loyalty without standing.  The court substituted Affinion Patents for Affinion Loyalty.

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