Court: District Court, D. Delaware; August 12, 2011; Federal District Court
Asahi Glass Company, Ltd. and AGC Flat Glass North America, Incorporated filed a lawsuit against Guardian Industries Corporation on July 15, 2009, claiming infringement of U.S. Patent Nos. 6,334,938 and 6,193,856, which relate to sputtering targets for creating thin transparent oxide films with a high refractive index. The plaintiffs sought an injunction and damages for the defendant's sales of 'Low-E' and 'First Surface Mirror' glass products. Guardian Industries countered on December 18, 2009, with claims of noninfringement, invalidity, and unenforceability based on allegations of inequitable conduct.
In March 2010, a scheduling order set a deadline for amended pleadings, and on March 4, 2011, Guardian filed a motion to amend its counterclaims to include new theories of inequitable conduct, specifically regarding misrepresentations of inventorship during the patent prosecution process. The defendant alleged that the plaintiffs submitted false declarations to overcome a prior art rejection linked to the '856 patent, claiming that inventors Sasaki and Oyama contributed to an invention they did not actually make. Sasaki's deposition testimony contradicted his prior declarations, asserting a lack of involvement in sputter target development.
Additionally, the defendant alleged that the inventorship of the '938 patent had been misrepresented to secure a priority date ahead of prior art publication JP-469. This claim was supported by contradictory deposition testimony from Suzuki-Komatsu, who asserted unfamiliarity with sputtering targets despite her previous declarations to the Patent and Trademark Office (PTO) asserting her role as an inventor. The court ultimately denied Guardian's motion to amend its counterclaims.
Leave to amend pleadings is generally granted liberally when justice requires, as established in Foman v. Davis. However, the court has discretion to deny such leave if the moving party has delayed unreasonably, particularly if the delay is motivated by bad faith or causes prejudice to the opposing party. The denial of leave to amend is warranted if the non-moving party faces substantial prejudice, or if the moving party demonstrates bad faith, a pattern of dilatory behavior, unexplained delays, repeated failures to address prior deficiencies, or if the proposed amendment is futile. Undue delay is characterized by placing unwarranted burdens on the court or if the requesting party has previously had opportunities to amend.
Defendant's request to amend pleadings was submitted six months after the August 15, 2010 deadline and after the close of fact discovery, leading to inherent prejudice to the plaintiff. In evaluating if the delay was undue, the court considered several factors presented by the defendant, including the need for translation of primarily Japanese documents, depositions of key witnesses conducted in November 2010, and the supplementation of interrogatory responses by the plaintiffs that added new claims. However, the critical documents central to the defendant's new inequitable conduct claims were publicly available, and the defendant did not specify how the translation delays hindered their ability to discover new claims after November 2010. The plaintiffs indicated their document production was largely completed by July 16, 2010, a fact the defendant did not dispute. The court found that aside from a general claim of needing time for translation, the defendant failed to justify the delay from November 2010 to March 2011 in asserting the inequitable conduct claim. Although the delay was not deemed egregious, allowing the amendment would unduly burden the court and prejudice the plaintiffs by necessitating additional discovery while risking disruption of the trial schedule. Consequently, the court denied the defendant's motion for leave to amend.
On August 8, 2011, the court denied the defendant's motion for leave to amend. The '938 patent is a continuation application that claims priority to the previously issued '856 patent, both having the same specification. The document references Japanese Patent Abstract Publication No. 07-233469, with the individual involved, Ms. Suzuki, now known as Ms. Komatsu. To avoid confusion, she will be referred to as 'Suzuki-Komatsu.' The defendant incorrectly cited a different Japanese Patent Abstract publication number, which was not included in the motion and lacks a clear publication date. During her testimony, Suzuki-Komatsu acknowledged she might have conducted analysis or testing related to the patent but was uncertain. The defendant claims that claim 10 exemplifies the most significant instance of inequitable conduct. The depositions referenced were fact depositions rather than those related specifically to patent prosecution. These depositions occurred after the amendment deadline, with transcripts received by the defendant on December 3, 2010. Additionally, plaintiffs indicated that Mr. Kida, a plasma spray engineer, proposed investigating plasma-sprayed targets as a solution to issues with sintered targets. The court's trial schedule is fully booked through 2013, making rescheduling a trial of this length in 2011 or 2012 challenging.
