Cornell University, et al. v. Illumina, Inc., C.A. No. 10-443-LPS-MPT, May 27, 2016.

Thynge, C.M.J. Report and Recommendation recommending that defendant’s motion to amend to assert inequitable conduct claims be granted.

The deadline to amend pleadings was August 7, 2015 and fact discovery concluded on December 4, 2015. Defendant alleges that the applicants and prosecuting attorney violated their duty of candor to the PTO regarding the date of their reduction to practice of the LDR/PCR methods in order to swear behind three references. An amended, supported by a declaration submitted by the applicants, asserted the three references could not be prior art. At the time the amendment was filed, deposition testimony shows the methods had not been reduced to practice. Testimony relied upon by defendant occurred after the deadline, and the court determines that the defendant worked diligently to obtain and confirm facts relevant to the amendment. The court rejects plaintiff’s position that the amendment would be futile and recommends granting the motion to amend.