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Leupold & Stevens, Inc. v. Lightforce USA, Inc.

United States District Court, D. Oregon

January 3, 2018

LEUPOLD & STEVENS, INC., Plaintiff,
v.
LIGHTFORCE USA, INC. d/b/a NIGHTFORCE OPTICS and NIGHTFORCE USA, Defendant.

          Kassim M. Ferris Nathan C. Brunette Elliot J. Williams Stoel Rives LLP, Brian C. Park Stoel Rives LLP Attorneys for Plaintiff

          Scott E. Davis Todd M. Siegel Klarquist Sparkman, LLP, David A. Casimir Casimir Jones, SC Attorneys for Defendant

          OPINION & ORDER

          MARCO A. HERNÁNDEZ UNITED STATES DISTRICT JUDGE

         Before the Court is Plaintiff's motion for leave to amend [46]. Plaintiff moves for leave to supplement its complaint to add claims based on two certificates of correction for U.S. Patent No. 9, 665, 120 (“the'120 Patent”) issued by the United States Patent and Trademark Office (“USPTO”). Defendant opposes the Motion. Upon review of the parties' arguments and the relevant law, the Court GRANTS Plaintiff's Motion.

         BACKGROUND

         Plaintiff and Defendant design, manufacture, and sell, among other things, optical scopes and components. Am. Compl. ¶¶ 2-4, ECF 28. Plaintiff filed its Amended Complaint on April 20, 2017, one day after the deadline to file amended pleadings. Id.; see also Minutes of Proceedings, Feb. 7, 2017, ECF 25. Plaintiff alleged that Defendant's products infringed several of its patents. Am. Compl. ¶ 2. On May 30, 2017, the USPTO issued the ‘120 Patent. See Pl.'s Mot. for Leave to File Supp. Claim for Patent Infringement Based on Certificates of Correction, Ex. 1, ECF 46 [hereinafter “Pl.'s Mot. for Leave”].The Court granted the parties' joint motion to permit Plaintiff to file supplemental claims based on the ‘120 Patent. See Order, June 27, 2017, ECF 36. Plaintiff's supplemental Claim VIII alleges, in relevant part, that some of Defendant's riflescopes and other products infringe the ‘120 Patent. See Supp. Compl. ¶ 2, ECF 37. On July 4 and September 19, 2017, the USPTO issued certificates of correction making minor changes to the ‘120 Patent. See Pl.'s Mot. for Leave, Exs. 2 & 3. On October 13, 2017, Plaintiff filed its Motion, seeking leave to amend Claim VIII based on the certificates of correction. Defendant opposes the Motion, arguing that Plaintiff has not shown good cause to amend the scheduling order and that Plaintiff's proposed amendment would be improper under Rule 15 of the Federal Rules of Civil Procedure. Def.'s Resp., ECF 49.

         STANDARDS

         When a party seeks leave to amend under Rule 15 after the date specified in the scheduling order, the district court must first determine whether that party has shown “good cause” for amending the scheduling order under Rule 16(b). Branch Banking & Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751, 764 (9th Cir. 2017); Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992). “Rule 16(b)'s ‘good cause' standard primarily considers the diligence of the party seeking the amendment. The district court may modify the pretrial schedule ‘if it cannot reasonably be met despite the diligence of the party seeking the extension.'” Johnson, 975 F.2d at 609 (quoting Fed.R.Civ.P. 16 advisory committee's notes (1983 amendment)). If the moving “party was not diligent, the inquiry should end.” Branch Banking & Trust Co., 871 F.3d at 764 (quoting Johnson, 975 F.2d at 607-08). On the other hand, if “good cause” is shown, “the party must demonstrate that amendment was proper under Rule 15.” Johnson, 975 F.3d at 609 (citing Forstmann v. Culp, 114 F.R.D. 83, 85 (M.D. N.C. 1987)).

         A party may move for leave to supplement pleadings under Rule 15(d). Fed.R.Civ.P. 15(d). “A district court ‘shall grant leave to amend freely when justice so requires.'” Owens v. Kaiser Found. Health Plan, Inc., 244 F.3d 708, 712 (9th Cir. 2001) (internal quotation marks omitted) (quoting Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir. 2000) (en banc)). The Ninth Circuit “ha[s] stated that ‘this policy is to be applied with extreme liberality.'” Id. (quoting Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir.1990)). Courts consider the following four Foman factors in determining whether to grant leave to amend: “bad faith, undue delay, prejudice to the opposing party, and/or futility.” Id. (quoting Griggs v. Pace Am. Group, Inc., 170 F.3d 877, 880 (9th Cir.1999)).

         DISCUSSION

         Plaintiff filed its Motion for Leave after the scheduled deadline for such filings and the Court must therefore determine whether Plaintiff has shown “good cause” to modify the scheduling order under Rule 16 before considering whether amendment is proper under Rule 15. The parties dispute whether Plaintiff was diligent in seeking to amend based on the certificates of correction. The parties also dispute whether a balancing of the four Foman factors supports granting leaving to amend.

         I.Good Cause”

         The issue is whether Plaintiff was diligent in seeking amendment based on the certificates of correction. The Court adopted the parties' proposed case schedule contained in their Joint Rule 16(f) Report [18], setting April 19, 2017, as the deadline to amend pleadings to add claims. See Minutes of Proceedings, Feb. 7, 2017. The ‘120 Patent was not issued until May 30, 2017, after the deadline to amend pleadings had passed. See Pl.'s Mot. for Leave, Ex. 1 at 1. On June 22, 2017, the parties filed a stipulated motion permitting Plaintiff to file a supplemental claim under the ‘120 Patent. See Stip. Mot. for Leave to File Supp. Claim, ECF 35. The Court granted the parties' motion five days later on June 27, 2017. See Order, June 27, 2017. The USPTO issued a certificate of correction a week later on July 4, 2017 (“Certificate 1”). Pl.'s Mot. for Leave, Ex. 2. On September 19, 2017, a second certificate of correction was issued (“Certificate 2”). Id. at Ex. 3. The parties conferred on September 26, 2017, a week after the USPTO issued Certificate 2. Brunette Decl. ¶ 4, ECF 57. Plaintiff informed Defendant of its intent to file supplemental pleading based on Certificate 2. Id. Defendant's counsel then notified Plaintiff of its opposition to a supplemental pleading on September 29, 2017. Id. at ¶ 5. Plaintiff filed its Motion for Leave on October 13, 2017. Lastly, Defendant filed its Opening Claim Construction Brief [52] on November 8, 2017.

         Based on this timeline, the Court concludes that Plaintiff was diligent and has satisfied Rule 16's “good cause” requirement. The April 19, 2017 deadline to amend pleadings could not have been met here. That deadline expired before the ‘120 Patent was issued. The Court granted the parties' stipulated motion to include a new claim based on the ‘120 Patent a week before Certificate 1 was issued. Certificate 1 made a single change to the ‘120 Patent's claims replacing “The adjustment apparatus of claim 6” with “The adjustment apparatus of claim 8.” Pl.'s Mot. for Leave, Ex. 2. Approximately two and a half months later, the USPTO issued Certificate 2-a one-page document listing eleven claim corrections. The parties immediately conferred and Plaintiff filed its Motion for Leave fifteen days after Defendant signaled that it opposed the proposed amendment. Given that the ‘120 Patent was issued and included in this lawsuit ...


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