District Judge Colleen McMahon granted plaintiff Droplets’s motion to amend its complaint to add claims of infringement of newly-issued U.S. Patent 8,402,115 (“the ’115 patent”). The ’115 patent is related to the two patents already in suit — U.S. Patent 6,687,745 (“the ’745 patent”) and U.S. Patent 7,502,838 (“the ’838 patent”) — but is broader in scope than those two patents; it is directed to a system and method for delivering remotely stored applications and information.

Upon reexamination, the ’828 patent was invalidated in its entirety and litigation regarding that patent has been stayed. Defendants have informed the court that they will seek reexamination of the ’115 patent.

In a previous Markman decision on January 28, 2014, the court construed a term in the ’745 patent in a manner favorable to defendants. In light of the claim construction, defendants intend to move for summary judgment that none of their products infringes the ’745 patent.

The court determined that while it would allow Droplets to add the ’115 patent, it would stay litigation regarding that patent. The court found this would be “an extremely efficient way to proceed” and permit the court to “retain control over litigation involving these related patents – even if we litigate over them seriatim.” The court reasoned that “litigation seriatim” made sense because the parties would be able to “focus their undivided attention on the ’745 patent until we are done litigating over the ’745 patent” and permit the related patents to be litigated in a single court before a single fact-finder. In addition, the court indicated that if the ’115 patent entered reexamination, it would stay proceedings relating to that patent.

Defendants argued against adding the ’115 patent because under 35 U.S.C. § 299 of the America Invents Act, patent holders must sue different defendants in separate patent infringement suits in cases filed after September 16, 2011. The court found this argument unpersuasive because although this case was filed in 2012, no party had objected to litigating more than one patent in a single suit until the instant motion.

Defendants also argued that adding the ’115 patent to the case was inappropriate because Droplets waited until after an alleged unfavorable claim construction ruling to add the new patent when it could have done so earlier. The court acknowledged the apparent “gamesmanship” and found that allowing the amendment and staying the litigation with respect to the ’115 patent was appropriate.

The court concluded that it would stay litigation regarding the ’115 patent until the later of the conclusion of the ’745 patent litigation or the conclusion of any review of the ’115 patent by the Patent Office.

Case: Droplets, Inc. v. E*Trade Fin. Corp., No. 12 Civ. 2326 (CM) (S.D.N.Y. Mar. 25, 2014)