`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELA WARE
`
`GENENTECH, INC. and CITY OF
`HOPE,
`
`Plaintiffs,
`
`Civ. No. 17-1407- CFC, Consol.
`
`v.
`
`AMGEN INC.,
`
`Defendant.
`
`MEMORANDUM ORDER
`
`Amgen has moved for leave to amend its First Amended Answer,
`
`Affirmative Defenses, and Counterclaims to add an affirmative defense and
`
`counterclaim that U.S. Patent 8,574,869 ("Kao") is unenforceable because of
`
`inequitable conduct before the United States Patent and Trademark Office
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`("PTO"). D.I. 507. In Amgen's words: "The inequitable conduct ... relates to
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`actions taken at the PTO by Genentech's inventors and prosecuting attorneys(cid:173)
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`specifically their deliberate withholding of data and conclusions concerning
`
`Example 8 and Figure 20 of Kao." D.I. 558 at 3.
`
`As a general matter, Rule 15(a) governs the amendment of pleadings before
`
`trial. But when, as here, a party seeks to amend a pleading after the scheduling
`
`
`
`Case 1:17-cv-01407-CFC-SRF Document 628 Filed 02/12/20 Page 2 of 3 PageID #: 43361
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`order's deadline for pleading amendments has passed, the court will apply Rule
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`16(b) as opposed to Rule 15(a). Eastern Minerals & Chems. Co. v. Mahan, 225 F.3d
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`330, 340 (3d Cir. 2000). Rule 16(b) requires district courts to impose a schedule and
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`instructs that once the schedule is set, it "may be modified only for good cause and
`
`with the judge's consent." FED. R. C1v. P. 16(b )( 4) ( emphasis added). "Good cause"
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`exists when the party seeking leave to amend exercised reasonable diligence in
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`trying to comply with the scheduling order. See WebXchange Inc. v. Dell Inc., 2010
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`WL 256547, at *2 (D. Del. Jan. 20, 2010). Thus, "[i]n contrast to Rule 15(a), the
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`good cause standard under Rule 16(b) hinges on diligence of the movant, and not on
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`prejudice to the non-moving party." Id. (internal citation omitted).
`
`Under the then-operative scheduling order, the deadline to file amendments
`
`to pleadings was February 22, 2019. See D.I. 260. Amgen filed its motion to amend
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`seven months later, on September 20, 2019. D.I. 507.
`
`Amgen concedes that Genentech produced to it in October 2018 and January
`
`2019 three internal Genentech presentations that contained the data that Amgen
`
`alleges Genentech deliberately withheld from the PTO. D.I. 508 at 6-7. It argues,
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`however, that "it was not until the depositions" of three witnesses had been
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`completed "in July 2019 that Amgen could plead this [inequitable conduct] defense
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`with sufficient particularity." Id. at 13.
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`2
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`
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`Case 1:17-cv-01407-CFC-SRF Document 628 Filed 02/12/20 Page 3 of 3 PageID #: 43362
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`Because, by its own admission, Amgen had the ability in July 2019 to plead
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`with particularity the proposed inequitable conduct claim and defense it now seeks
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`to add to the case, I find that Amgen unduly delayed by waiting until September
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`2019 to seek leave to add that claim and defense to the case.
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`Because Amgen has failed to show good cause for its delay, IT IS HEREBY
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`ORDERED that its Motion for Leave to Amend Its First Amended Answers,
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`Affirmative Defenses, and Counterclaims (D.1. 507) is DENIED.
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`Dated: February 12, 2020
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`UNITED STATE DISTRICTG
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`3
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`
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