Relating back to the Original Complaint

by Dennis Crouch

Anza Tech., Inc. v. Mushkin, Inc. (Fed. Cir. 2019).

The district court dismissed Anza’s infringement lawsuit — finding it barred by the six-year statute of limitations on collecting back-damages.  The statute:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

35 U.S.C. § 286.

The original complaint filed March 2017 was within six-years of the alleged infringement.  However, once the patentee got around to filing its second amended complaint in June 2018, the six year deadline was passed.  The district court dismissed the case holding that the second complaint did not sufficiently “relate back” to the original complaint and therefore was given its actual (later) filing date.  On appeal the Federal Circuit has reversed – finding the “district court’s application of the relation back doctrine … overly restrictive.”

Relation Back: Fed. R. Civ. Proc. R. 15(c) provides the rules for when an amendment “relates back” to the original. This issue almost always arises in the situation seen here — the original filing was timely, but the amendment was made after expiration of some statute of limitations. Under the Rule, an amended pleading relates back to the original pleading if its claims “arise out of upon the conduct, transaction, or occurrence set out—or attempted to be set out—in the original pleading.” (Note the Rule provides three mechanisms for relating back, and this is the most relevant for this case).

In its appeal, the Federal Circuit ruled that its own law applies (rather than the regional circuit court) because the relation-back question can depend upon an “analysis of the accused acts of infringement.”  Here, the court treated the relation-back issue as a question of law (reviewed de novo on appeal) except as to factual conclusions made by the district court, which are reviewed for clear error.

The relevant complaint timeline:

  • Original complaint – March 2017 – alleging Mushkin infringed U.S. Patent 7,124,927 associated with 16 products.
  • First amended complaint – September 2017 – joining Avant Tech as co-defendant (that case was then severed and the Mushkin case transferred from California to Colorado)
  • Second amended complaint – June 2018 – dropping the ‘927 patent and instead added two different patents U.S. Patents 6,354,479 and 6,651,864; dropping ten of the accused products and adding two additional products.

By the third filing, the original patent is no longer asserted but rather two family member patents; and two new products had been added as infringing (along with ten being deleted).

On appeal, the Federal Circuit held that the claims directed to the six originally accused products properly relate back to the original complaint. For the allegations again the two new products, the court remanded for a new analysis on whether those allegations should also relate back.

In its opinion, the appellate panel primarily focused on the question of notice — finding that the “technological overlap [between the patents] suggests that the aggregate of operative facts underlying infringement under the ’927 patent in the original complaint gave notice of the substance of the claims of infringement under the ’479 and ’864 patents in the second amended complaint.”

= = = = =

What is a Statute of Limitations: One element of interest in this case is the the statement by the court that Section 286 is a “statute of limitations.” I have always called it such, but others have regularly called-me-out on that point — arguing that patent law does not have a statute of limitations or statute of repose.  This opposing argument is that Section 286 limits back-damage recovery but does not prevent the lawsuit itself.  Of course, that argument is bunk.  The Supreme Court explained as much in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954, 961–62 (2017):

First Quality contends that … § 286 of the Patent Act is not a true statute of limitations. A true statute of limitations, we are told, “runs forward from the date a cause of action accrues,” but § 286 “runs backward from the time of suit.”  . . .  This argument misunderstands the way in which statutes of limitations generally work. First Quality says that the accrual of a claim, the event that triggers the running of a statute of limitations, occurs when “a plaintiff knows of a cause of action,” ibid., but that is not ordinarily true. As we wrote in Petrella, “[a] claim ordinarily accrues ‘when [a] plaintiff has a complete and present cause of action.’ ” 572 U.S., at ––––, 134 S.Ct., at 1969; see Graham County Soil & Water Conservation Dist. v. United States ex rel. Wilson, 545 U.S. 409, 418–419, 125 S.Ct. 2444, 162 L.Ed.2d 390 (2005). While some claims are subject to a “discovery rule” under which the limitations period begins when the plaintiff discovers or should have discovered the injury giving rise to the claim, that is not a universal feature of statutes of limitations.

So, it is nice to see that the Federal Circuit has at least accepted this instruction from the Supreme Court by specifically identifying Section 286 as a “statute of limitations.”

5 thoughts on “Relating back to the Original Complaint

  1. 3

    Two problematic aspects; If the original patent is no longer asserted, it seems a stretch that the original complaint, citing only that patent would have any effect at all. Also, infringement is binary; it occurred or it did not. The statute, as a statue of limitations, seems independent of any particular patent nexus once infringement, the sole factor limited by the statue, has been adjudged or stipulated. Why should the regional circuit law not control?

  2. 2

    Just for the sake of further argument, assume a known, complete and present cause of action for infringement of a patent exists for the entire life term of the patent, and further assume there is no more laches. When does the Section 286 “statute of limitations” bar the infringement suit? Not until slightly less than 6 years after the patent expires, right? After the entire life term of the patent plus another 6 years, right? Isn’t that a very long time period from the start of a known, complete and present cause of action for suing for infringement [or any other tort action] for any normal statute of limitations? [Albeit such a long-delayed suit could only recover of damages for the last year.]

  3. 1

    What are the critical dates of the three different patents?

    Would the first complaint been timely if that complaint had only used one (or both) of the other family patents?

    In other words, would the cause have had already expired for the two earlier family member patents at the first complaint date (which may speak to why only the latest family member was used in that first complaint)?

      1. 1.1.1

        I was traveling, hence a question that I would normally look up and answer myself. Your point is the better one: there are terminal disclaimers (plural) in the image file wrapper.

        Basically, one may easily presume that each of the family members carry the same “life expectancy,” but I do not that this may not be a given, as PAIR also shows that the family comprises several Continuations-In-Part. Also interestingly, the family still has a member in prosecution (albeit reexamination): application 90/014,228.

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