One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"
It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.
Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .
The Court normally permits parties to later add or remove asserted claims or accused products as discovery progresses (including under the Court's Default Standard), although it can sometimes be risky to make significant changes near the close of fact discovery. Parties normally agree that adding new asserted patents, though, requires amending the complaint.
Plaintiffs Do Not Have to List All Accused Products
Yesterday, the Court confirmed the usual practice here, when Judge Fallon denied a motion to strike new accused products that were not listed in the complaint. According to the Court, a plaintiff is free to add new products outside of what was originally accused:
Defendant's motion to strike Plaintiff's identification of accused products is . . . DENIED because discovery on the additional 14 accused products is relevant and proportional to the needs of the case, and it would be premature to grant dispositive relief on this issue in the context of a discovery dispute. Defendant cites no authority suggesting that discovery must be limited only to accused products identified in the complaint, and authority from this district establishes that discovery need not be so limited. See Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273, 281 (D. Del. 2012) (declining to impose a "bright-line proposition that, in all cases, a plaintiff cannot take discovery on products it has not accused of infringement.").
PerDiemCo LLC v. CalAmp Corp., C.A. No. 20-1397-VAC-SRF (D. Del. May 17, 2022).
This is consistent with Delaware's Default Standard for Discovery, which includes a deadline for plaintiff to identify accused products (which wouldn't make a lot of sense if those products had to be identified in the complaint).
Plaintiffs Must List All Asserted Patents
The Court also confirmed that all asserted patents much be in the complaint, when it shot down what looks like an attempt to add an asserted patent via infringement contentions alone:
(4) Defendant's motion to strike Plaintiff's infringement contentions is GRANTED-IN-PART. The motion is GRANTED with respect to infringement contentions relating to U.S. Patent No. 10,819,809, which was not identified as an infringed patent in Plaintiff's complaint.
So yeah, if you have patents you want to assert, include them in your complaint.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
