United States District Court, M.D. Pennsylvania
before the Court is Plaintiffs Motion for Leave to File a
Third Amended Complaint (Doc. 166). For the reasons that
follow, the Court will grant the Motion.
InterMetro Industries Corporation ("InterMetro"),
filed its first Complaint in this action on November 22,
2013, alleging violations of its patent claims in certain
mobile medical point-of-care carts. (See Doc. 1). On
September 30, 2014, this Court granted Motions to Dismiss by
Defendant Enovate Medical, LLC ("Enovate") and by
other similarly-situated Defendants in related cases.
(See, e.g., Doc. 52). Plaintiff responded by filing
an Amended Complaint (Doc. 55) which Enovate moved to dismiss
on October 31, 2014 (Doc. 56). In late 2015, before the Court
had ruled on the second Motion to Dismiss, Plaintiff moved
for leave to file a Second Amended Complaint. In February,
2016, the Court granted Plaintiffs Motion subject to certain
limitations. (See Docs. 140, 141).
Second Amended Complaint asserted claims against Enovate for
infringement of 35 claims within the following six patents:
6, 493, 220 ("220"); 6, 721, 178 ("178");
7, 612, 999 ("999"); 7, 791, 866 ("866");
7, 990, 691 ("691"); 8, 526, 176 ("176").
(See generally, Doc. 142). Defendant answered
Plaintiffs Second Amended Complaint in February, 2016 (Doc.
145) and asserted Counterclaims seeking a declaration of
noninfringement of the patents at issue, a declaration of
invalidity of the asserted claims by Plaintiff, and a
declaration of unenforceability of the asserted patents for
failure to disclose co-inventors and failure to disclose
information material to patentability (id. at
11, 2016, an Administrative Patent Judge on the Patent Trial
and Appeal Board ("PTAB") issued two decisions
following Inter Partes Reviews, requested by
Enovate, of certain claims contained in Patents 178 and 220.
The Judge found that claims 27, 28, 88, 101, and 108 of U.S.
Patent No. 6, 721, 178 B1 were unpatentable, as were claims 1
and 2 of U.S. Patent No. 6, 493, 220 B1. (See Doc. 154;
Enovate Med., LLC v. InterMetro Indus. Corp., Case
IPR2015-00300 (PTAB May 11, 2016); Enovate Med., LLC v.
InterMetro Indus. Corp., Case IPR2015-00301 (PTAB May
11, 2016)). On May 31, 2016, InterMetro filed notices of
appeal of both decisions to the Federal Circuit (see Doc.
160, Ex. C, D) and the cases have been consolidated for
purposes of the appeal.
28, 2016, Plaintiff moved for leave to file a Third Amended
Complaint pursuant to Federal Rule of Civil Procedure 15(d).
(Doc. 166). Plaintiffs Third Amended Complaint seeks to add a
Count alleging that Enovate "has and is infringing,
directly, indirectly, and willfully" Patent 9, 389, 643
("643"). (Id. at 2). Patent 643 was issued
on July 12, 2016, and is "part of the same family of
patents that have been asserted against Enovate in the
original Complaint." (Id.). A review of
Plaintiffs red-lined copy of the Third Amended Complaint
(Doc. 167-3) reveals that, with the exception of a
typographical error in paragraph 107, the only apparent
alteration to the Complaint is the addition of Count VII,
alleging infringement of Patent 643. Enovate opposes
InterMetro's Motion. (Doc. 220).
Standard of Review
to the Federal Rules of Civil Procedure, "the court may,
on just terms, permit a party to serve a supplemental
pleading setting out any transaction, occurrence, or event
that happened after the date of the pleading to be
supplemented." Fed.R.Civ.P. 15(d). "Because it
refers to events that occurred after the original pleading
was filed, a supplemental pleading differs from an amendment,
which covers matters that occurred before the filing of the
original pleading but were overlooked at the time."
Owens-Illinois, Inc. v. Lake Shore Land Co., Inc.,
610 F.2d 1185 (3d Cir. 1979). Nonetheless, "the standard
applicable to motions to amend under Fed.R.Civ.P. 15(d) is
essentially the same standard that applies to Fed. Civ. P.
15(a)." Medeva Pharma Ltd. v. Am. Home Prods.
Corp., 201 FRD 103, 104 n.3 (D. Del. 2001).
application of Federal Rule of Civil Procedure 15(a) and (d)
is within the "sound" and "broad"
discretion of the Court. Intel Corp. v. Amberwave Sys.
Corp., 233 FRD 416, 418 (D. Del. 2005); Medeva
Pharma, 201 FRD at 104. A party may amend its pleading
with leave of court. The Court should "freely give"
such leave "when justice so requires." Fed.R.Civ.P.
15(a)(2). The Supreme Court has described this rule as
[Rule 15(a)(2)'s] mandate is to be heeded. If the
underlying facts or circumstances relied upon by a plaintiff
may be a proper subject of relief, he ought to be afforded an
opportunity to test his claim on the merits. In the absence
of any apparent or declared reason-such as undue delay, bad
faith or dilatory motive on the part of the movant, repeated
failure to cure deficiencies by amendments previously
allowed, undue prejudice to the opposing party by virtue of
allowance of the amendment, futility of amendment, etc.-the
leave sought should, as the rules require, be "freely
Foman v. Davis,
371 U.S. 178, 182, 83 S.Ct. 227,
230, 9 L.Ed. 222 (1962) (internal citations omitted); see
also Arthur v. Maersk, Inc.,434 F.3d 196, 204 (3d Cir.
2006) ("Among the factors that may justify denial of
leave to amend are undue delay, bad faith, and
futility."). The Third Circuit has "consistently
recognized, however, that 'prejudice to the non-moving
party is the touchstone for the denial of an
amendment.'" Id. (quoting Lorenz v. CSX
Corp.,1 F.3d 1406, 1414 (3d Cir. 1993)). Similarly,
"[l]eave to supplement should be granted if it will
promote the just disposition of the case, will not cause
undue prejudice or delay and will not prejudice the rights of