By John Presper
On May 10, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 27 denying Complainants InterDigital Technology Corporation, IPR Licensing, Inc. and InterDigital Holdings, Inc.'s (collectively, "InterDigital") motion for leave to amend the complaint in Certain Wireless Devices With 3G And/Or 4G Capabilities and Components Thereof (Inv. No. 337-TA-868).

According to the Order, InterDigital sought to add allegations of infringement of certain claims of U.S. Patent No. 8,380,244 to the complaint, arguing that the '244 patent had not yet issued and could not be asserted at the time it filed the complaint.  InterDigital also argued that good cause exists for granting leave because the '244 patent would not complicate the case since it is "closely related" to another patent at issue, all the Respondents are already familiar with the scope of technology of the '244 patent, and any required discovery would likely be duplicative of information being currently collected.  Also, InterDigital contended that granting its motion would obviate the need to initiate a separate investigation.

Respondents countered that no good cause exists to amend the complaint because Respondents would be prejudiced, arguing that InterDigital delayed issuance of the '244 patent several times, and that InterDigital chose not to wait until the '244 patent issued to file its complaint even though the '244 application was allowed by the PTO only one day after the complaint was filed and before the investigation was instituted by the ITC.  Respondents also pointed out that (1) the investigation currently includes seven patents and 109 asserted claims; (2) adding claims of the '244 patent would raise new claim construction issues, necessitate new prior art searches, and require supplemental discovery; (3) the '244 patent touches on technical areas unrelated to the patents-in-suit, which would require an additional expert; and (4) six of the 11 claim charts for the '244 patent are for products not identified in the original complaint, and add a new category of accused products (dual mode devices that lack 4G capability and designed to operate with 3G networks) that does not exist in the current investigation.

ALJ Rogers denied the motion, finding that InterDigital's delay of more than three weeks after the '244 patent issued to file its motion for leave to amend defeated any assertion of good cause based on the patent issuing after the complaint was filed.  The ALJ rejected InterDigital's argument that it needed this time to investigate whether to assert the '244 patent, noting that InterDigital had more than one month before the patent officially issued to determine whether to add '244 claims to the investigation.  Moreover, assuming arguendo that good cause existed, ALJ Rogers found that adding the '244 patent at this stage would prejudice Respondents in light of the number of issues already raised in the original complaint and the already accelerated schedule of Section 337 investigations.