New Patents in Amended Complaint May Relate Back to Original Complaint’s Filing Date
Anza Technology, Inc. v. Muskhin, Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. Aug. 16, 2019) (Prost, Newman, BRYSON) (D. Colo.: Hegarty) (3 of 5 stars)
Fed Cir part-reverses, part-vacates dismissal of Anza’s second amended complaint. In that complaint, Anza added claims under patents not addressed by the previous complaints; the district court held that these claims did not relate back to the filing date of the original complaint, and were thus time-barred.
Procedural items: The question of whether new claims relate back to the original complaint is resolved under Federal Circuit law. The opinion reasons that it is a procedural issue bearing an “essential relationship” to matters within the Federal Circuit’s exclusive control, as per O2 Micro, 467 F.3d 1355 (Fed. Cir. 2006). Review is de novo. The opinion reasons that this is the majority rule in most other circuits in appeals regarding application of the relation back doctrine, and cites authority. With respect to any factual issues material to the relation back issue, review is for clear error.
Relation back doctrine: The opinion discusses Supreme Court, Court of Claims, and Federal Circuit authority material to the doctrine. It reasons that, “at bottom, . . . The question [is] whether the general factual situation or the aggregative of operative facts underlying the original claim for relief gave notice to Mushkin of the nature of the allegations it was being called upon to answer.” Op. at 16–17. Applying that test, the patents asserted in Anza’s second amended complaint were sufficiently similar to the originally asserted patents as to warrant relation back. The opinion discusses how the patents, though addressing different techniques, “share the same underlying technology,” Op. at 17, and are “focused on solving the same problem by the same solution[.]” Id. at 18. It rejects Mushkin’s contention that Anza had materially limited the scope of its contentions under the prior complaints in such a way as to affect the analysis, noting that Anza’s infringement contentions were “preliminary” and that District of Colorado Local Patent Rules permit amendments for good cause. It also rejects Mushkin’s argument that there was a material difference in the time frame of the conduct accused in each complaint, reasoning that because the second time period was “wholly encompassed within the first,” Op. at 21, there was no lack of notice and not substantial prejudice to Mushkin. It also rejects Mushkin’s argument that this holding would allow litigants to evade the statute of limitations; litigants would still have to get original complaints on file within the statutory period.
Most of Anza’s new claims addressed products accused in previous complaints. For the reasons above, these claims relate back to the original complaint, and thus are within the statutory period, so the district court’s dismissal as to the common accused products is reversed. Anza had also added two new accused products, and additional fact finding is necessary to determine whether those products are “too far afield from the original complaint to put Mushkin on notice of the allegations against which it would be required to defend.” Op. at 23. The district court’s dismissal as to the newly added accused products is vacated and remanded for fact-finding and proper application of relation back doctrine.
KEYWORDS: CIVIL PROCEDURE; RELATION BACK; AMENDED COMPLAINT; PLEADINGS; DISMISSAL