In Reputation.com, Inc. v. Birdeye, Inc., C.A. No. 21-129-LPS (D. Del.), the plaintiff moved for a preliminary injunction.
Judge Stark referred the PI motion to Judge Burke, who held an initial status conference and set a truncated schedule for PI discovery. The scheduling order set deadlines for PI discovery and supplemental briefing to be completed within 4 months.
Shortly after the PI motion, defendant moved to dismiss on § 101 grounds; in response, the plaintiff amended the complaint.
After the amendment, the Court issued an oral order sua sponte denying the motion to dismiss as moot—a common practice among some D. Del. judges (these orders helpfully make explicit that the pending motion to dismiss is moot in light of the amendment, even if that may arguably be true even without the order):
ORAL ORDER: The Court, . . . hereby ORDERS that in light of Plaintiffs filing of the First Amended Complaint, (D.I. 33), Defendant's pending motion to dismiss the original Complaint, (D.I. 21), is DENIED as MOOT.
Days after the Court's order, the defendant filed a letter requesting that the Court find plaintiff's preliminary injunction motion moot as well. The Court agreed; its opinion suggests that there is some leeway here, but that Plaintiff misstepped by including new infringement allegations and new asserted claims:
ORAL ORDER: The Court has reviewed the parties' recent letters regarding Plaintiff's motion for preliminary injunction ("PI Motion") . . . With regard to the issues addressed therein: (1) The case law cited by the parties indicates that if the filing of a new complaint significantly alters the substance of the plaintiff's allegations, then it is appropriate for the Court to order that the PI Motion be denied as moot and to require the Plaintiff to file a new such motion. Here, though Plaintiff may have largely intended for the new allegations in the First Amended Complaint ("FAC") to be directed to the Section 101 issue alone, the Court agrees with Defendant that these amount to significant additions to the governing pleading. There are 70 new paragraphs added to the FAC, after all. Even those new allegations that are intended to address patent eligibility may have some spillover effect on other liability issues. And the new allegations do also: (a) introduce seven new specifically asserted claims (some of which contain limitations that were not included in the four specifically asserted claims listed in the original Complaint); and (b) make new assertions about how Defendant infringes the asserted claims.; (2) Relatedly, it is probably fair to say that had Defendant seen the FAC, it might have changed, in some way, the written discovery requests it propounded on Plaintiff regarding the PI Motion. . . . In light of all of this, the Court ORDERS as follows: (1) The PI Motion is DENIED as MOOT and the Scheduling Order is VACATED.
Judge Burke also pointed out, however, that defendant may have been overselling the motion a bit:
(3) All of the above said, Defendant's rhetoric in its letters is a little overheated. The FAC is still alleging infringement of the same four patents. None of the paragraphs in the original Complaint were removed from the FAC. And the Court suspects that the discussion of key liability issues in the PI Motion briefing will be pretty similar to what it would have been (though, again, probably not identical to what it would have been) had no FAC been filed.
The Court also placed some limits on representative claims in the new PI briefing, and permitted limited additional discovery as to the allegations in the amended complaint:
In the opening brief, Plaintiff shall identify one claim for each of the four asserted patents that it is putting at issue for purposes of the PI Motion (i.e., in resolving the PI Motion the Court is not going to address 11 claims; it will address no more than four claims, one from each asserted patent). . . . The Court expects that the new proposed schedule will, inter alia, . . . provide some ability for Defendant to serve limited new written discovery (though the Court expects that most of the previously served discovery will still be useful, so the amount of new discovery should be cabined).
Ultimately, the Court ordered the parties to negotiate a new schedule, and set a deadline for a new PI hearing 16 days after the originally-scheduled one.
The Court Refused to Stay the Whole Case
The defendant also sought to use the amended complaint as a basis to stay the whole case pending a new § 101 motion that they had not filed yet:
At no point did Reputation inform or even hint to Birdeye or the Court that it might file an amended complaint. Tellingly, the Amended Complaint includes no facts that were not already in Reputation’s possession or publicly available before Reputation filed its original complaint, further evidencing Reputation’s gamesmanship. Reputation should not be permitted to continue abusing Birdeye’s good faith efforts to resolve issues on a timely basis and the Court’s efforts to do the same. In view of Reputation’s conduct, the Court should stay all proceedings pending resolution of Birdeye’s forthcoming motion to dismiss.
Judge Burke denied that portion of the motion without comment. That's not surprising, given Chief Judge Stark's longstanding guidance that the Court "will not defer the CMC and scheduling process solely due to the pendency of [motions to dismiss, transfer, or stay]."
Good Move by Defendant? I'm Not Completely Sold...
In the abstract, it looks like all the defendant really achieved is a 16-day delay on the PI hearing, a new set of briefing (which may well mirror the original briefing), and an adjustment of the schedule similar to what the parties might have agreed to regardless.
It's hard to say if that is worth the effort. Their costs going forward will probably increase similarly to plaintiffs', and they may well have expended a bit of their credibility with the Court (see the Court's comment re: their "overheated" rhetoric). Plus there is the cost of bringing the motion in the first place.
That said, they may have had some other motivation. Maybe they have better arguments against a PI on the amended complaint, for example. So it's hard to say for sure.
In any case, if you're a plaintiff with a preliminary injunction motion, keep this possibility in mind when considering whether to amend your complaint.
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