Magistrate Judge Burke issued an R&R today addressing an interesting procedural situation.
In Shure Incorporated et al v. Clearone, Inc., C.A. No. 19-1343-CJB (D. Del. June 1, 2020), the plaintiff moved to amend to add an additional patent, just before the patent issued.
In response, and before oral argument on the motion, the defendant filed a DJ action on the new patent in another jurisdiction, trying to keep that part of the case out of the District of Delaware.
After the Court granted the motion to amend, plaintiff then moved to dismiss under the first-filed rule.
Judge Burke rejected plaintiff's approach, holding both that the amended complaint related back, so it was filed first, and that even if it didn't, the anticipatory suit exception applied.
Judge Burke nonetheless pointed out that plaintiff's strategy was not necessarily improper:
The Court is not suggesting that in filing the DJ Action when it did, ClearOne engaged in anything like “affirmative misconduct.” (D.I. 86 at 6) These parties are clearly engaged in a fierce battle over intellectual property rights, and their respective counsel are simply doing all that they can within the bounds of the law to obtain any perceived advantage. The Court’s point here is just that normally, if one party files suit as to a patent before its adversary does, that “firstness” is credited, at least in part because that side was more swift and nimble (and arguably more invested) than its adversary in bringing the matter to a court’s attention. But here, Shure had both of its legs tied before that race to the courthouse even started, due to the Court’s order that set oral argument on the motion to amend for two weeks after the design patent was to issue. It just seems strange to credit ClearOne for winning this race to the courthouse, when Shure could not even have participated in the race.
Shure Incorporated et al v. Clearone, Inc., C.A. No. 19-1343-CJB, at 25 n.1 (D. Del. June 1, 2020) (emphasis added).
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