United States District Court, D. Delaware
Phillip A. Rovner, Esq., POTTER ANDERSON & CORROON LLP,
Wilmington, DE; Jonathan A. Choa, Esq., POTTER ANDERSON &
CORROON LLP, Wilmington, DE; George I. Lee, Esq., LEE
SULLIVAN SHEA & SMITH, LLP, Chicago, IL; Sean M.
Sullivan, Esq., LEE SULLIVAN SHEA & SMITH, LLP, Chicago,
IL; Rory P. Shea, Esq., LEE SULLIVAN SHEA & SMITH, LLP,
Chicago, IL; J. Dan Smith, Esq., LEE SULLIVAN SHEA &
SMITH, LLP, Chicago, IL; Michael P. Boyea, Esq., LEE SULLIVAN
SHEA & SMITH, LLP, Chicago, IL. Attorneys for Plaintiff
B. Blumenfeld, Esq., MORRIS NICHOLS ARSHT & TUNNELL LLP,
Wilmington, DE; Michael J. Flynn, Esq., MORRIS NICHOLS ARSHT
& TUNNELL LLP, Wilmington, DE; John M. Jackson, Esq.,
JACKSON WALKER LLP, Dallas, TX; Kurt A. Schwarz, Esq.,
JACKSON WALKER LLP, Dallas, TX; Nathaniel (Nate) S. Clair II,
Esq., JACKSON WALKER LLP, Dallas, TX; Matthew C. Acosta,
Esq., JACKSON WALKER LLP, Dallas, TX; Blake T. Dietrich,
Esq., JACKSON WALKER LLP, Dallas, TX; David Folsom, Esq.,
JACKSON WALKER LLP, Texarkana, TX. Attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE.
before the Court is Defendants' Motion for Leave to Amend
Their Answer to Add the Defense of Inequitable Conduct. (D.I.
176). The issues have been fully briefed. (D.I. 177, 189,
192). For the reasons that follow, the Court will deny
filed this patent infringement lawsuit against Defendants on
October 14, 2014. (D.I. 1). On August 25, 2015, the Court
issued a Scheduling Order specifying that amendments to the
pleadings to assert the defense of inequitable conduct must
be filed on or before August 1, 2016. (D.I. 65). On August 1,
2016, Defendants filed a Motion for Leave to Amend Answer to
Add the Defense of Inequitable Conduct. (D.I. 141). At that
time, Defendants filed their proposed First Amended Answer.
(D.I. 141-2). Plaintiff opposed Defendants 'motion,
arguing that Defendants proposed First Amended Answer did not
meet the heightened pleading standard required for
inequitable conduct. (D.I. 152 at 8). On September 9, 2016,
Defendants filed their reply brief, including a proposed
Second Amended Answer containing substantially more material
related to their inequitable conduct defense. (D.I. 160).
Unsurprisingly, Plaintiff filed a Motion to Strike
Defendants' New Amended Answer Submitted with Their Reply
Brief. (D.I. 161). On October 7, 2016, the Court issued an
Order directing Defendants to advise the Court by October 12,
2016 as to whether they intended to rely on the First Amended
Answer or the Second Amended Answer. (D.I. 172). The Court
further advised that if Defendants intended to rely on the
Second Amended Answer, they would need to file a new motion
to amend. (Id.). On October 12, 2016, Defendants
filed the instant Motion to Amend in which they indicated
that they elected the proposed Second Amended Answer. (D.I.
177 at 8). In light of this election, the Court dismissed
Defendants' first Motion to Amend as moot. (D.I. 180).
15(a) of the Federal Rules of Civil Procedure provides that
"[a] party may amend its pleading once as a matter of
course within 21 days after serving it." A party seeking
to amend after this deadline or more than once may only do so
"with the opposing party's written consent or the
court's leave." Fed.R.Civ.P. 15(a)(2). Leave to
amend "should [be] freely give[n] ... when justice so
requires." Id. The decision to grant or deny
leave to amend lies within the discretion of the court.
Foman v. Davis, 371 U.S. 178, 182 (1962); In re
Burlington Coat Factory Sees. Litig., 114 F.3d 1410,
1434 (3d Cir. 1997). The Third Circuit has adopted a liberal
approach to the amendment of pleadings. Dole v.
Arco, 921 F.2d 484, 487 (3d Cir. 1990). In the absence
of undue delay, bad faith, or dilatory motives on the part of
the moving party, the amendment should be freely granted,
unless it is futile or unfairly prejudicial to the non-moving
party. Foman, 371 U.S. at 182; In re
Burlington, 114 F.3d at 1434.
pleading deadline imposed by a scheduling order has passed,
however, a party seeking to amend must, as a threshold
matter, show "good cause" to modify the deadlines.
Fed.R.Civ.P. 16(b)(4); E. Minerals & Chemicals Co. v.
Mahan, 225 F.3d 330, 340 (3d Cir. 2000). Good cause is
found when, despite diligence on the part of the party
seeking to amend, the deadline in the scheduling order
"cannot reasonably be met." Fed.R.Civ.P. 16
Advisory Committee's Notes (1983 amendments). The focus
of the "good cause" inquiry is, therefore, on
diligence of the moving party, rather than on prejudice,
futility, bad faith, or any of the other Rule 15 factors.
Glaxosmithkline LLC v. Glenmark Pharm. Inc., 2016 WL
7319670, at *1 (D. Del. Dec. 15, 2016).
initial matter, I reject Defendants' assertions that the
current motion is not subject to the more stringent
"good cause" standard of Rule 16(b). Defendants
argue that because they "openly disclosed their legally
sufficient theories of inequitable conduct" prior to the
deadline, the current proposed amendment should not be
subject to the "good cause" standard. (D.I. 177 at
17-18, n.5). This is incorrect. Disclosing a legal theory is
not the equivalent of substantively amending a pleading.
Defendants' proposed Second Amended Answer is
substantially and materially different from their First
Amended Answer. If Defendants wanted their motion to
be considered under the more lenient standard of Rule 15,
they should have elected to rely on their proposed First
Amended Answer, which was filed by the deadline imposed by
the Court's Scheduling Order. Since Defendants elected
their proposed Second Amended Answer with its much more
extensive allegations, they must, as a threshold matter, meet
the more stringent "good cause" standard.
have not shown good cause for this belated amendment. In
fact, Defendants focus in their briefing primarily on why
they should not have to meet the good cause standard and why
they believe they meet the lesser Rule 15 standard. The only
argument Defendants make in support of diligence, the only
factor important in the Rule 16 analysis, is that they
"have diligently pursued their request for leave since
August 1, 2016." (D.I. 177 at 18). This is the wrong
time frame for the diligence analysis, however. To show good
cause, Defendants must show diligence in pursuing their
inequitable conduct defense prior to the deadline for
amendments; whether Defendants acted diligently, after the
deadline, in addressing the deficiencies Plaintiff identified
in their First Amended Answer is simply irrelevant.
Furthermore, Defendants have not argued that their defense is
based on newly disclosed evidence that could not have been
obtained prior to the deadline. Nor could they. The
inequitable conduct allegations in the proposed Second
Amended Answer rest entirely on information that was publicly
available months or even years before the deadline for
Defendants have failed to show good cause for allowing this
belated amendment, I decline to address the parties'
arguments regarding prejudice and futility.