The Chief Judge of the District Court of Delaware just denied an Apple motion to amend its answer to an HTC complaint in order to bring infringement counterclaims over four patents. Apple will now have to look for another opportunity, most likely a separate lawsuit, to assert those patents against HTC.
HTC started this particular litigation in September 2011 in order to assert some of the patents it previously obtained from Google for the purpose of suing Apple. Apple filed its answer to HTC's complaint on Halloween. At the time, Apple brought counterclaims of a defensive nature (declaratory judgment requests), but no infringement counterclaims. In late November, HTC responded to those counterclaims. The week before Christmas, the court stayed all of Apple's Delaware lawsuits against HTC pending the ITC's adjudication of a limited subset of those claims. On April 30, 2012, Apple asked for permission to amend its answer and counterclaims -- six months after filing the original answer and counterclaims -- in order to assert four patents against HTC. That motion was denied today.
In retrospect it's clear that Apple should have brought infringement counterclaims last fall. Today's denial is partly based on the claim that Apple's patents are "unrelated to the technology at issue", but that would have been a non-issue if Apple had brought these claims earlier. However, when Apple answered HTC's complaint, it didn't and couldn't know that all of its own Delaware lawsuit were going to be stayed. Such sweeping stays are unusual. Apple had enough claims pending against HTC in Delaware and probably didn't want to turn that district into too much of a center of gravity for its patent assertions against Android in general, given that other defendants would otherwise have strong arguments for transferring Apple's lawsuits to that district.
As a result of all of this, HTC's September 2011 claims against Apple may actually go to trial now before Apple's March 2010 claims against HTC. And if that happens, there won't be any infringement counterclaims that at least get adjudicated at the same time. The Delaware court's inconsistent case management decisions have definitely disadvantaged Apple so far. The court could have allowed Apple's counterclaims, but somehow Apple isn't very popular in the First State.
The same (chief) judge who issued today's order denying Apple's motion to amend its counterclaims scolded Apple in January for a "disingenuous" argument: even though Apple itself had brought some lawsuits in Delaware in the past, it claimed in a pleading that Delaware was a "forum non conveniens" for a litigation with Motorola Mobility. That struck the chief judge as a very unreasonable argument.
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