United States District Court, D. Oregon
M. Ferris Nathan C. Brunette Elliot J. Williams Stoel Rives
LLP, Brian C. Park Stoel Rives LLP Attorneys for Plaintiff
E. Davis Todd M. Siegel Klarquist Sparkman, LLP, David A.
Casimir Casimir Jones, SC Attorneys for Defendant
OPINION & ORDER
A. HERNÁNDEZ UNITED STATES DISTRICT JUDGE
the Court is Plaintiff's motion for leave to amend .
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.
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.
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)).
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)).
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.
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 , 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  on November 8, 2017.
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