Amended Complaint May Relate Back to Original Complaint Despite Asserting Different Patents
Before Prost, Newman, and Bryson. Appeal from the United States District Court for the District of Colorado.
Summary: Patent infringement claims in an amended complaint may relate back to the date of an original complaint that asserted different patents if the facts underlying the original infringement claims gave notice to the defendant of the nature of the allegations in the amended complaint.
Anza filed a complaint against Mushkin alleging patent infringement. Subsequently, Anza filed its first amended complaint to join an additional party. After the first amended complaint was dismissed, Anza filed its second amended complaint, in which it omitted the previously-asserted patent and alleged infringement of two new patents. Anza also omitted ten of the sixteen products that had been accused in the original complaint and added two new products. The district court dismissed the second amended complaint, finding that the claims in that complaint did not relate back to the date of the original complaint and were therefore time-barred.
On appeal, the Federal Circuit considered: “the overlap of parties, the overlap in the accused products, the underlying science and technology, time periods, and any additional factors that might suggest a commonality or lack of commonality between the two sets of claims.” Based on these factors, the Federal Circuit held that the claims in the second amended complaint against the six products that had been accused in the original complaint related back to the date of the original complaint.
The Federal Circuit explained that the infringement claims based on the previously asserted patent gave adequate notice of the infringement claims based on the newly asserted patents because all of the patents were “focused on solving the same problem by the same solution.” Thus, as to the six originally accused products, the Federal Circuit reversed the dismissal. As to the newly accused products, the Federal Circuit vacated and remanded to the district court to determine whether the allegations relating to those products relate back to the filing date of the original complaint.
Editor: Paul Stewart