ALZHEIMER'S INSTITUTE OF AMERICA, INC.
AVID RADIOPHARMACEUTICALS, et al.
In this patent infringement action, the University of South Florida Board of Trustees (“USF”) moves, pursuant to Federal Rule of Civil Procedure 15(b)(2), to amend the pleadings to conform to the evidence and allow it to plead the counterclaim that it had submitted with its motion to intervene in the action. In the proposed counterclaim, USF requests a declaration that USF owns the two patents-in-suit and two related patents owned by Alzheimer’s Institute of America (“AIA”). In the present motion, USF seeks an order “entering” the counterclaim and directing AIA to “execute an assignment” of the two patents-in-suit and two related patents to USF.
Contrary to USF’s contention, its ownership interest, if any, in the patents was not fully litigated by the express or implied consent of the parties as required by Rule 15(b)(2). Allowing a post-trial amendment would prejudice AIA. Therefore, USF’s motion for leave to amend shall be denied.
Procedural and Factual Background
AIA brought this action against defendants Avid Radiopharmaceuticals (“Avid”) and The Trustees of the University of Pennsylvania (“Penn”), alleging that the defendants infringed two patents that issued off the patent application for the so-called “Swedish mutation” invention that Michael Mullan assigned to AIA in 1992. Because the defendants raised the issue of AIA’s standing, we decided to resolve AIA’s standing before reaching the infringement issue. After discovery limited to the issue of whether AIA had standing to bring the action was concluded, Avid and Penn moved for summary judgment, contending that the assignor of the patents, Mullan, was not the sole inventor; and, if he were, ownership of the invention vested in his university-employer, USF, by operation of Florida law. AIA countered that Mullan was the sole inventor and the legal owner of the patents, giving rise to a presumption of validity of the patents.
Ruling on the cross-motions, we issued a memorandum opinion (“August 31, 2011 Opinion”) and an order holding that pursuant to Florida law, the rights to the invention vested in USF because the purported sole inventor, Mullan, who had executed an assignment to AIA of his rights in the invention, was employed by USF at the time the invention was conceived and the invention was in the field or discipline of Mullan’s employment. Because there were contested material facts on the inventorship issue, we ordered a trial on the issues of whether USF had waived its ownership rights in the invention and whether Mullan was the sole inventor.
USF subsequently filed a motion to intervene, requesting that it be allowed to “assert and defend its ownership interests in the patents at issue” and in two related patents owned by AIA, and to plead a counterclaim asserting those interests. The proposed counterclaim alleged that USF owned the four patents that issued off the patent application for the Swedish mutation, and it had legal title to the four patents. In its motion, USF characterized the August 31, 2011 Opinion as finding that “title in the patents-in-suit vested in USF.” It argued that the only remaining issue as to ownership of the patents was a contested issue of fact as to whether USF had effectively waived its rights in the patents.
Granting USF’s motion in part, we ruled that USF could intervene, but only with respect to “the issue of whether or not it waived its rights in the invention claim by Michael J. Mullan as his own which is claimed in U.S. Patent Nos. 5455169 and 7538258.” We specifically denied the motion “to intervene for any other purpose.”
Relying on Federal Rule of Civil Procedure 15(b)(2), USF moved, immediately after the jury’s verdict, to amend the pleadings to “enter its counterclaim.” In essence, USF seeks a declaratory judgment directing AIA to “execute an assignment” of the two patents and two related patents to USF. It argues that because the issue whether USF is the legal and equitable owner of the patents has been fully litigated with the express consent of all parties, the amendment to add USF’s counterclaim will conform the pleadings to the evidence.
Federal Rule of Civil Procedure 15(b)(2) provides, in pertinent part, that
[w]hen an issue not raised by the pleadings is tried by the parties’ express or implied consent, it must be treated in all respects as if raised in the pleadings. A party may move – at any time, even after judgment – to amend the pleadings to conform them to the evidence and to raise an unpleaded issue.
To determine whether an issue was tried by implied consent, we look to three factors: (1) knowledge – whether the parties recognized that the unpleaded issue was in the case at trial; (2) acquiescence – whether the opposing party acquiesced to trying the issue by failing to object to the evidence supporting the unpleaded issue that was introduced at trial; and (3) prejudice – whether the opposing party’s opportunity to respond to the issue was prejudiced. Liberty Lincoln-Mercury, Inc. v. Ford Motor Co., 676 F.3d 318, 326-28 (3d Cir. 2012); see also Evans Prods. Co. v. West Am. Ins. Co., 736 F.2d 920, 924 (3d Cir. 1984) (“The primary consideration in determining whether leave to amend under Fed.R.Civ.P. 15(b) should be granted is prejudice to the opposing party.” (citation omitted)). The principal test for prejudice when a party seeks to assert a new theory “is whether the opposing party was denied a fair opportunity to defend and to offer additional evidence on that different theory.” Evans, 736 F.2d at 924 (citation omitted).
USF argues that the issue of whether “USF is the legal and equitable owner of the patents in suit has been fully litigated with the express consent of all parties.” It contends that Avid and Penn “raised the issue of USF’s ownership and waiver in its original pleadings [and that] AIA responded to those pleadings without objecting.” USF contends that when ruling on the summary judgment motions, we determined that if a jury were to find that USF had not waived ...