Although there is much debate surrounding the current state of our nation's patent system, this piece does not address any possible double standards that may exist in the system as a whole. (See, Comment 6 to "America’s Patent System Favors the Few and Inhibits Innovation—But Change Could Be Coming"). Rather, this piece focuses on one of the newest opinions decided by the CAFC regarding the relation back doctrine.
Yesterday, the CAFC decided Anza Tech., Inc., v. Mushkin., Inc., reversing in part the US District Court for the Eastern District of California's application of the relation back doctrine. The relation back doctrine, at a federal level, may be summarized by Rule 15(c)(1)(B), which states, "An amendment to a pleading relates back to the date of the original pleading when . . . the amendment asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out or attempted to be set out--in the original pleading."
In Anza, the relation back doctrine is significant because Anza filed a first complaint, entered mediation with Mushkin, then filed a second amended complaint. (Anza, No. 2019-1045 at 5). Because the allegedly infringing activity took place more than six years before the filing date of the second amended complaint, the second amended complaint would have to "relate back" to the first complaint in order to avoid dismissal under the six-year statute of limitations found in 35 U.S.C. § 286. (Id. at 10).
Anza's first complaint alleged Mushkin directly infringed claims of a method of bonding integrated circuit chips using a bonding tool having a tip made of a dissipative material to prevent electrostatic discharge that may occur during bonding. (Id. at 4-5). Soon after the first complaint was filed, the parties entered mediation. (Id.at 5). During mediation, Mushkin's president stated Mushkin "did not bond IC chips to boards or modules." (Id.) Anza then amended its first complaint, including two additional patents, omitting ten of the sixteen originally accused products from the list of allegedly infringing products, and adding two new products to the list. (Id. at 6).
The district court decided that the second complaint did not relate back to the first complaint because the patents in the first complaint encompassed a method of using a wire bonding tool, while the two newly added patents involved a flip chip bonding and solder ball placement tool. (Id. at 8). Further, the district court noted that the additional products would not involve substantially the same evidence as the original products listed in the first complaint. (Id. at 9).
The CAFC reversed the California district court in part, finding (1) that the relation back doctrine is similar to a motion to sever in that it is governed by Federal Circuit law as opposed to regional circuit law (id., at 11), (2) that a double standard applies in the CAFC's standard of review of the relation back doctrine (id., at 12-13), and (3) that a determination that a second complaint relates back to the first complaint should include determining whether there is substantial overlap in the facts of the complaints that would place the defendant on notice of allegations it would be required to defend (id., at 21-22). The double standard allows the CAFC to use a de novo standard to determine that claims amended into subsequent complaints "[arise] out of the conduct, transaction, or occurrence" found in the original complaint, and to use a clear error standard for disputed facts material to the relation back issue.
A significant factor in the CAFC's decision was the liberal interpretation of the relation back doctrine by the Supreme Court. (See, Tiller v. Atl. Coast Line R.R. Co., 323 U.S. 574, 580-81 (1945)). (Id., at 13-14). A liberal interpretation of the relation back doctrine seems to support the rationale that notice is the primary concern, meaning that an improper form of a complaint will not outweigh the notice of potential litigation the substance of the complaint provides. Finally, because there was an open question remaining regarding whether the two newly added products were too far afield from the original complaint to put Mushkin on notice, this issue was remanded for further proceedings and review. (Id., at 23).
The takeaway from this case is that broad allegations of infringement may be sufficient to put a potential infringer on notice. These broad complaints may even be amended to more specifically address infringement at a point in litigation that falls after the statute of limitations in 35 U.S.C. § 286 has passed.
(#relation back doctrine statute of limitations)
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