Edgewell Personal Care Brands, LLC v. Albaad Massuot Yitzhak, Ltd.
1:15-cv-01188
D. Del.Jun 7, 2017Background
- Edgewell sued Albaad for patent infringement (’075, ’522, and ’775 patents), later dropping the ’775 claim and adding the ’034 claim; motions and pleadings progressed through 2016–2017.
- Edgewell sought leave to file a Third Amended Complaint to add copyright and trade dress claims for Playtex Sport packaging and to drop the ’034 patent claim.
- The scheduling-order deadline for amendments expired in November 2016; Edgewell moved to amend in February 2017 after a supplemental copyright registration issued in January 2017.
- Albaad filed inter partes review petitions in January 2017 challenging the ’522 and ’075 patents; Edgewell withdrew certain ’522 claims and the court dismissed the ’034 count without prejudice.
- The magistrate judge evaluated the motion under Fed. R. Civ. P. 15(a) (leave to amend) and Rule 16(b)(4) (modification of scheduling order/good cause), focusing on undue delay, bad faith, prejudice, futility, and good cause.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether amendment should be allowed under Fed. R. Civ. P. 15(a) (undue delay) | Edgewell: delay excused because supplemental copyright registration issued only in Jan 2017 and ongoing settlement/motion practice prevented earlier amendment | Albaad: Edgewell knew of the claims by Aug 2016 and waited strategically past the Nov deadline | Delay not undue — Edgewell offered a colorable excuse, so delay alone did not bar amendment |
| Whether amendment shows bad faith or dilatory motive | Edgewell: conducted investigation before seeking leave and sought consent in good faith | Albaad: waiting until after IPRs and after the deadline indicates tactical/dilatory motive | No persuasive evidence of bad faith; Albaad’s assertions unsupported |
| Whether amendment would unfairly prejudice Albaad | Edgewell: limited discovery needed; accused products identical; schedule allows completion | Albaad: would require extensive new discovery and increased costs with insufficient time remaining | Amendment would cause undue prejudice — Albaad showed need for extensive further discovery and increased litigation costs |
| Whether good cause under Rule 16(b)(4) to modify schedule exists | Edgewell: claims arose during the case; investigated promptly; claims concern same accused products | Albaad: Edgewell’s delay was tactical and mirrors cases denying relief where plaintiff controlled timing | No good cause — Edgewell controlled timing, conduct inconsistent with Rule 16, so modification denied |
Key Cases Cited
- Foman v. Davis, 371 U.S. 178 (1962) (standards for granting leave to amend under Rule 15)
- In re Burlington Coat Factory Secs. Litig., 114 F.3d 1410 (3d Cir. 1997) (amendment denied if undue delay, bad faith, futility, or prejudice present)
- Cureton v. National Collegiate Athletic Ass'n, 252 F.3d 267 (3d Cir. 2001) (undue prejudice inquiry focuses on whether amendment deprives opponent of opportunity to present facts or requires additional discovery)
- Arthur v. Maersk, 434 F.3d 196 (3d Cir. 2006) (movant should articulate a colorable excuse for delay)
- Bechtel v. Robinson, 886 F.2d 644 (3d Cir. 1989) (unfair prejudice factors include added costs and surprise from new claims)