By Memorandum Order entered by The Honorable Sue L. Robinson in Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., Civil Action No. 13-453-SLR (D.Del. September 7, 2016), the Court granted defendants’ motion to amend their answer to include a defense of improper inventorship with respect to U.S. Patent No. 5,938,742 (“the ‘742 patent”) more than one year after the deadline in the Court’s Scheduling Order for the filing motions to join parties and/or to amend the pleadings and more than seventeen years after the issuance of the ‘742 patent.  Defendants moved to amend to include the defense of improper inventorship based on information obtained during the June 1, 2016 deposition of the individual the defendants claim is a co-inventor that was not named in the ‘742 patent. Id. at *1-2.

Despite the facts that the case was filed in 2013 and trial is scheduled to start on January 17, 2017, the Court recognized the importance of proper inventorship and granted the motion to amend. Id. at *5.  However, the Court also noted that it “recognizes the extraordinary delay between the issuance of the ‘742 patent and the assertion of improper inventorship, as well as the fact that, in most instances, the remedy for improper inventorship is a certificate of correction, not invalidation.” Id. Thus, the Court bifurcated the newly-added defense to allow for additional discovery and a separate motion practice and trial. Id.

A copy of the Memorandum Order is attached.