2:10-cv-02252
D. Ariz.Mar 15, 2012Background
- Plaintiffs filed suit Oct 21, 2010 seeking declarations of invalidity and non-infringement of three patents and asserting an intentional interference with a contract claim.
- Defendant answered Oct 7, 2011 after initial scheduling and a later order requiring a motion for leave to amend.
- Court previously denied the defendant’s motion to dismiss and set deadlines for amendments; December 14, 2011 order required leave to amend or counterclaim or waivers would apply.
- Defendant moved Dec 28, 2011 for leave to file an amended answer and a patent infringement counterclaim.
- Court grants leave to amend under Rule 15 and Rule 16, finding good cause and that counterclaims are compulsory and not prejudicial to plaintiffs.
- Parties to submit joint three-page discovery status and a detailed timeline of efforts to disclose confidential technical documents by March 26, 2012.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether amendment is permissible under Rule 15 and 16 after scheduling deadlines | Pacific Sci. opposes amendment due to potential prejudice and delay | Ensign-Bickford asserts good cause and necessity to avoid Rule 11 sanctions | Granted leave to amend and add counterclaim |
| Whether Rule 11 considerations justify withholding counterclaims until now | Plaintiffs contend no justification to delay amendment | Rule 11 concerns justified by potential sanctions and discovery limits | Rule 16 good cause found; Rule 11 considerations discussed but do not bar amendment |
| Whether the infringement counterclaim is compulsory under Rule 13(a) | Counterclaim not necessary for declaratory judgment relief | Counterclaim is compulsory and should be included | Counterclaim deemed compulsory and thus permissible to amend |
| Whether the Declaratory Judgment Act and case-or-controversy requirements permit the non-infringement declaration | MedImmune framework supports declarations | Counterclaim necessary to preserve rights and timing | Continued viability of declaratory judgment action with amended counterclaims |
Key Cases Cited
- Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048 (9th Cir. 2003) (Rule 15 liberal amendment standard; prejudice is key factor)
- Owens v. Kaiser Found. Health Plan, Inc., 244 F.3d 708 (9th Cir. 2001) (Policy favoring leave to amend; undue delay/prejudice limit grants)
- Foman v. Davis, 371 U.S. 178 (1962) (Leave to amend should be freely given when justice requires)
- Johnson v. Mammoth Recreations, Inc., 975 F.2d 604 (9th Cir. 1992) (Good cause standard; focus on movant’s reasons for modification)
- View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981 (Fed. Cir. 2000) (Bare minimum infringement analysis required for Rule 11 sanctions in patent cases)
- Hoffmann-La Roche, Inc. v. Invamed, Inc., 213 F.3d 1359 (Fed. Cir. 2000) (Sanctions ruling in patent context示fact-specific; not per se disallowing pre-suit inquiry)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (Declaratory Judgment Act requires substantial controversy with immediacy)
- Polymer Indus. Prods. Co. v. Bridgestone/Firestone, Inc., 347 F.3d 935 (Fed. Cir. 2003) (Rule 13(a) counterclaims in DJ action for non-infringement are typically compulsory)
- Vivid Techs., Inc. v. American Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 1999) (Compulsory patent infringement counterclaims ordinarily should not be barred)
- Holgate v. Baldwin, 425 F.3d 671 (9th Cir. 2005) (Rule 11 sanctions standard in the Ninth Circuit; patent context variations)
- Micron Tech., Inc. v. Vysis, Inc., 518 F.3d 897 (Fed. Cir. 2008) (Patent Rule 11 considerations in pre-suit and post-filing analyses)