A Liberal Notice-Based Interpretation of Rule 15(c) Applies, As Opposed to an Overly Restrictive Application of the “Relation Back” Doctrine

The Federal Circuit reversed and vacated in part an “overly restrictive” application of the relation back doctrine. The district court had addressed an amended complaint that completely changed the asserted patents, but maintained accusations against some of the originally accused products. Applying Federal Rule of Civil Procedure 15(c)(1)(B), the district court held that the new claims were not “part and parcel” of the original complaint because the new claims “did not relate to identical products and technology” and because proof of the new infringement claims would not entail the same evidence as proof of the original claims. Thus, the district court held that the new claims did not relate back to the original filing date and dismissed the second amended complaint as untimely.

The Federal Circuit first confirmed that the appeal involved issues unique to patent law such that Federal Circuit law, rather than regional circuit law, should govern “whether newly alleged claims in an amended complaint related back to the date of the original complaint when the new claims are based on newly asserted patents.”

Next, the court adopted a liberal, notice-based interpretation of Rule 15(c) designed to determine whether the original claim for relief gives notice of the nature of the claims in the subsequent amendment. In making such a determination, the panel stated that courts should “consider 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.”

Applying this framework, the Federal Circuit held that the underlying technology of the original and new claims were sufficiently similar because all of the patents “focused on solving the same problem by the same solution.” Thus, for most of the accused products the proof required to show infringement would not be substantially different under the new claims, and those claims should relate back to the date of the original complaint under Rule 15(c). There were, however, a small number of accused products that were added as part of the new claims, and for these, the Federal Circuit remanded for further proceedings, reasoning “that it is improbable that allegations regarding different products, involving different patents, would have a common core of operative facts.”