Ascion, LLC v. Tempur Sealy International, Inc.
5:17-cv-00403
E.D. Ky.Sep 23, 2021Background:
- Ascion, LLC d/b/a Reverie sued Tempur defendants for patent infringement (seven patents) and breach of confidentiality; case filed in E.D. Michigan (2015) and transferred to E.D. Kentucky (2017).
- Tempur answered with 14 counterclaims asserting noninfringement and invalidity/unenforceability of Reverie’s patents.
- Reverie moved to supplement its complaint to add infringement of U.S. Patent No. 9,451,833 (issued Sept. 2016), allegedly discovered in spring/summer 2019 (DE 129).
- Motion to supplement was fully briefed and heard Sept. 22, 2021; parties contested undue delay, prejudice, and futility under Rule 15(a)(2).
- The court learned the ‘833 patent was held invalid for lack of written description in a separate district-court action (now on appeal to the Seventh Circuit).
- The Court denied leave to supplement primarily on futility grounds and required the parties to submit a joint scheduling stipulation by Sept. 24, 2021.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether leave to supplement should be granted to add infringement of the ‘833 patent | Reverie: newly issued patent and later-discovered infringement justify amendment under Rule 15(a) | Tempur: amendment is untimely, prejudicial, and futile given prior invalidity finding | Denied — leave denied; amendment futile |
| Whether proposed amendment is futile (would survive a Rule 12(b)(6) motion) | Reverie: claim is plausible and should proceed to adjudication | Tempur: separate district court found ‘833 invalid for lack of written description, so claim cannot succeed | Denied — amendment would be futile and fail to withstand 12(b)(6) review |
| Whether delay or prejudice warrant denial | Reverie: discovery timing explains delay; no bad faith | Tempur: amendment would prejudice defense and comes after considerable litigation | Court considered delay/prejudice but found futility dispositive |
Key Cases Cited
- Robinson v. Michigan Consol. Gas Co. Inc., 918 F.2d 579 (6th Cir. 1990) (factors for evaluating leave to amend)
- Foman v. Davis, 371 U.S. 178 (U.S. 1962) (Rule 15 leave-to-amend standards)
- Yuhasz v. Brush Wellman, Inc., 341 F.3d 559 (6th Cir. 2003) (amendment may be denied as futile)
- Rose v. Hartford Underwriters Ins. Co., 203 F.3d 417 (6th Cir. 2000) (futility assessed by whether amendment would survive a Rule 12(b)(6) motion)