The opinion of the court was delivered by: Magistrate Judge Bissoon
Defendant's Motion for Leave to Amend its Answer and Counterclaim (Doc. 89) will be granted.
Defendant seeks to amend its pleadings to assert a defense and counterclaim of patent invalidity and/or unenforceability based on Plaintiff's purported inequitable conduct in the procurement of U.S. Patent No. 6,074,454 ("the PIS").*fn1 See Def.'s Br. (Doc. 90) at 1. In large part, Defendant relies on Plaintiff's alleged failure to disclose to the USPTO information regarding related patent applications it filed in foreign countries. See generally id. at 6. While acknowledging that some of these materials are part of the public record, Defendant asserts that others are not. See id.
In response, Plaintiff argues that Defendant's January 2008 discovery requests sought "all documents pertaining to all patents or patent applications" relating to "the same or similar subject matter described" in the PIS, and that this request did not reasonably include foreign patents or applications. See Pl.'s Opp'n Br. (Doc. 92) at 2. Plaintiff claims it first learned of the request for foreign patent materials through a correspondence sent by Defense counsel in November 2008, and Plaintiff claims to have promptly produced the documents in December 2008. Id. Plaintiff argues that Defendant's failure to previously request foreign documents constitutes undue and inexcusable delay. Id.
Plaintiff's arguments regarding delay are founded on the presumption that Defendant's January 2008 discovery request was insufficiently broad to capture information regarding foreign patents and applications. See discussion supra. The Court cannot join this presumption, as there was no language in the relevant document request limiting production to materials relating to U.S. patents or applications. See Pl.'s Opp'n Br. at 2 (Defendant requested "all documents pertaining to all patents or patent applications owned" by Plaintiff regarding "the same or similar subject matter described" in PIS) (quoting Def.'s Jan. 2008 Doc. Request No. 6, emphasis added). And although Plaintiff asserts that "the non-privileged documents . . . relied upon by [Defendant in] its present Motion" already were in Defendant's possession, Plaintiff's evidence neither establishes this fact nor refutes Defense counsel's assertion that less than all of the foreign materials were publicly available. Compare Pl.'s Opp'n Br. at 4 (relying exclusively on Defense counsel's letter dated Nov. 7, 2008) with Def. Counsel's Nov. 7th Ltr. (filed under Doc. 92-9) at 2 (making only passing reference to "the European counterpart to the [PIS]"); cf. also generally Bowser Cadillac, LLC v. General Mot. Corp., 2008 WL 2802523, *2 (W.D. Pa. Jul. 18, 2008) (Fischer, J.) ("[p]resumably, the liberal ethos of [Federal Rule 15(a)] means that the party opposing amendment bears a burden of production to come forward with reasons or evidence to deny leave to amend") (citation omitted).*fn2
Plaintiff's only other basis for resisting amendment is the purported futility of the same. See Pl.'s Opp'n Br. at 5-9 (arguing, among other things, that information regarding foreign patents was not "material" to examination of PIS). Plaintiff's "materiality" arguments invite the application of a "no reasonable [patent] examiner" standard, see id. at 6-7, and the Court finds such an inquiry inappropriate given the relatively low hurdles presented by Defendant's request for amendment. See generally Oran v. Stafford, 226 F.3d 275, 291 (3d Cir. 2000) ("[f]utility is governed by the same standard of legal sufficiency that applies under [R]ule 12(b)(6)") (citation to quoted source omitted).
Finally, as to prejudice, Plaintiff does not contest Defendant's assertions that:
(1) Plaintiff has always been in possession of the information relevant to Defendant's new defense and counterclaims; (2) the proposed amendments will not require the taking of additional discovery; and (3) adequate time remains for Plaintiff to prepare its case. Compare Def.'s Br. at 13 with Pl.'s Opp'n Br. (failing to refute same).
For all of these reasons, and consistent with Federal Rule 15(a), Defendant's Motion (Doc. 89) is GRANTED, and Defendant shall file its amended pleadings by January 8, 2009.
Cathy Bissoon United States ...