United States District Court, D. Delaware
LIQWD, INC. and OLAPLEX LLC, Plaintiffs,
L'OREAL USA, INC., L'OREAL USA PRODUCTS, INC., L'OREAL USA S/D, INC., and REDKEN 5th AVENUE NYC, L.L.C., Defendants.
R. FALLON UNITED STATES MAGISTRATE JUDGE
before the court in this patent infringement action is the
motion for leave to file a third amended complaint, filed by
plaintiffs Liqwd, Inc. and Olaplex LLC (together,
Olaplex"). (D.I. 592) For the following reasons,
Olaplex's motion to amend is granted.
November 22, 2016, United States Patent No. 9, 498, 419
("the '419 patent") was issued by the United
States Patent and Trademark Office ("USPTO"), and
Olaplex filed a complaint against defendants L'Oreal USA,
Inc., L'Oreal USA Products, Inc., L'Oreal USA S/D,
Inc., and Redken 5th Avenue NYC, L.L.C.
(collectively, "L'Oreal") for infringement of
the '419 patent and false advertising in the Central
District of California (the "California Action").
(D.I. 592, Ex. 1 at ¶ 112; CD. Cal. C.A. No.
16-8708-R-AFM, D.I. 1) Olaplex filed the present action on
January 5, 2017 against L'Oreal after dismissing the
California Action, asserting causes of action for the alleged
infringement of the '419 patent, among other causes of
action. (D.I. 2) The original complaint identified the
infringing products as the Matrix Bond Ultim8 Step 1
Amplifier, Redken pH-Bonder #1 Bond Protecting Additive, and
L'Oreal Professionnel Smartbond Step 1 Additive.
(Id. at 1)
filed its first amended complaint as a matter of right on
March 20, 2017. (D.I. 53) In response, L'Oreal filed its
motion to dismiss the first amended complaint on April 17,
2017. (D.I. 66) On June 21, 2017, Olaplex moved for leave to
file a second amended complaint, seeking to add a cause of
action for infringement of United States Patent No. 9, 668,
954 ("the '954 patent"), which issued on June
6, 2017. (D.I. 126, Ex. 2) On February 28, 2018, the court
issued a Report and Recommendation granting Olaplex's
motion to amend the complaint, denying L'Oreal's
motion to dismiss, and granting-in-part L'Oreal
S.A.'s motion to dismiss. (D.I. 186) The district judge
adopted the Report and Recommendation on April 23, 2018.
filed its second amended complaint on May 14, 2018, modifying
the definition of "Accused Products" to encompass
the Step 2 and Step 3 products. (D.I. 262) On June 12, 2018,
L'Oreal filed a motion to dismiss the second amended
complaint for failure to state a claim pursuant to Rule
12(b)(6). (D.I. 302) The court held oral argument on
L'Oreal's motion to dismiss the second amended
complaint on December 12, 2018. On December 17, 2018, the
court issued its Report and Recommendation, recommending that
the district judge grant L'Oreal's motion to dismiss
and deny L'Oreal's request for judicial notice. (D.I.
579) In lieu of filing objections to the Report and
Recommendation, Olaplex filed the instant motion for leave to
file a third amended complaint ("TAC"). (D.I. 592
at 4) The TAC identifies the Matrix Bond Ultim8, Redken
pH-Bonder, and L'Oreal Professionnel Smartbond three-step
systems as the "Accused Products." (D.I.
592, Ex. 1 at 1, ¶ 61)
to the district judge's adoption of the February 28, 2018
Report and Recommendation, Olaplex served interrogatories and
requests for production of documents in March 2018 that
defined the "Accused Products" to include the Step
1, Step 2, and Step 3 products from each of L'Oreal's
three accused product lines. (D.I. 334, Ex. C at 2, Ex. E at
2, Ex. F at 2, Ex. G at 2) Olaplex served its initial
infringement contentions on June 1, 2018, outlining the basis
for its infringement allegations regarding the Step 1, Step
2, and Step 3 products. (D.I. 280; D.I. 334, Ex. A) On
September 11, 2018, Olaplex served its amended infringement
contentions. (D.I. 397; D.I. 592, Ex. 3)
15(a)(2) of the Federal Rules of Civil Procedure provides
that a party may amend its pleading after a responsive
pleading has been filed "only with the opposing
party's written consent or the court's leave,"
and "[t]he court should freely give leave when justice
so requires." Fed.R.Civ.P. 15(a)(2). The decision to
grant or deny leave to amend lies within the court's
discretion. See 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.
See 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. See Foman, 371 U.S. at 182;
In re Burlington, 114 F.3d at 1434.
the legal framework of Rule 15(a) to the present case, the
court finds that there is no undue delay, bad faith, or
dilatory motive on Olaplex's part. The court's
consideration of undue delay "focus[es] on the
movant's reasons for not amending sooner."
Cureton v. Nat 7 Collegiate Athletic Ass
'n, 252 F.3d 267, 273 (3d Cir. 2001). The motion for
leave to file a second amended complaint was timely filed on
June 21, 2017. (D.I. 126) When the amended pleading was
filed, L'Oreal responded with a motion to dismiss based
in part on the fact that Olaplex exceeded the grant of
permission to amend by including the Step 2 and Step 3
products in the definition of "Accused Products."
(D.I. 302) The court recommended granting the motion to
dismiss without prejudice. (D.I. 579) Without undue delay,
Olaplex filed its procedurally proper motion for leave to
file the TAC less than two weeks after the court issued
its Report and Recommendation granting L'Oreal's
motion to dismiss the second amended complaint. (D.I. 592)
the court does not countenance the overreaching on
Olaplex's part, a practical issue remains as to the best
solution for both sides in this case. To deny Olaplex's
motion to amend would have the practical effect of endorsing
piecemeal litigation over the Accused Products by permitting
litigation of the Step 1 products in isolation. Granting the
motion to amend and permitting litigation on all Accused
Products raises a related concern of whether L'Oreal
would be unfairly prejudiced by the addition of the Step 2
and Step 3 products at this stage of the proceedings.
considered the case history and the parties' arguments,
the court finds that the prejudice alleged by L'Oreal is
insufficient to overcome the Third Circuit's liberal
approach to the amendment of pleadings. The determination of
prejudice focuses on the hardship to the non-movant if the
amendment is permitted, and may include "additional
discovery, cost, and preparation. . . ."
Cureton, 252 F.3d at 273. The history of this case
demonstrates that the alleged infringement of the Step 1
products has not been litigated in a vacuum. The Step 1