In Exeltis USA, Inc. v. Lupin Ltd., C.A. No. 22-434-RGA-SRF (D. Del.), plaintiff asserted infringement of claims from six patents. Back in July, 2023, Judge Andrews ordered the plaintiff to narrow its case to seven asserted claims across all of the patents prior to trial, which is set for Monday, February 26, 2024.
On Tuesday of this week, the Court issued its ruling on several pre-trial claim construction disputes. Plaintiff lost some of the disputes and, apparently, decided that it needed to stipulate to non-infringement of that claim.
With one of its seven claims out of the case, and with less than a week to go before trial, Plaintiff sought leave to re-assert one of the claims it had previously dropped. It argued that there was good cause, and no prejudice, because it had previously asserted the claim:
We write to request that Exeltis be allowed to assert claim 16 of U.S. Patent No. 11,491,113 (the “’113 Patent”) in lieu of claim 33 of U.S. Patent No. 10,179,140 Patent (the “’140 Patent”), currently asserted by Exeltis, for good cause as shown here. 1 In light of the Court’s February 20, 2024 [claim construction opinion], Exeltis intends to stipulate to noninfringement of the ’140 Patent. Exeltis is prejudiced by this late-stage claim construction ruling. Had this claim construction ruling occurred earlier in the case—before Exeltis had to narrow its case per the Court’s order—Exeltis would have at that time stipulated to noninfringement of the ’140 patent and would have had an opportunity to pursue a different claim. Exeltis should have that option now. Lupin of course would have the ability to assert its chosen three invalidity defenses for claim 16 of the ’113 Patent from those previously identified for this claim 16 in Lupin’s first case narrowing proposal, served on August 16, 2023.
The re-assertion of claim 16 of the ’113 Patent will not prejudice Lupin. Exeltis will still be asserting the same number of claims as required by the Court. Claim 16 of the ’113 Patent was an asserted claim in this case up until Exeltis’s second case narrowing, served on December 23, 2023. Lupin had every opportunity to conduct fact and expert discovery on claim 16 of the ’113 Patent, with all expert depositions concluded before Exeltis’s second case narrowing.
Id., D.I. 302.
Unsurprisingly, the Court didn't bite. But—interestingly—in rejecting the request, it focused primarily on the prejuduce to the plaintiff:
ORAL ORDER: The request to reassert claim 16 of the 113 patent (D.I. 302) is DENIED. Presumably, if asserted, it would be the seventh best claim from the five related patents that remain. Plaintiffs argue there would be no prejudice to Defendants from its reassertion, since it was only dropped two months ago. But the more important issue is whether its failure to be asserted would prejudice Plaintiffs. Plaintiffs only argue that they would have asserted it had they known that they would have had to drop a claim in the 140 patent, a sixth patent. I do not think Plaintiffs argument is sufficient to establish good cause to reassert the claim a few business days before trial. Ordered by Judge Richard G. Andrews on 2/22/2024.
Id., D.I. 304.
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