Gutterglove, Inc. v. Lasell et al

Filing 39

ORDER Re 31 Motion for Leave to File First Amended Answer and Counterclaims signed by Senior Judge William B. Shubb on 4/24/2018: IT IS ORDERED that defendants' 31 Motion for Leave to File a First Amended Answer and Counterclaims to Plain tiff's Second Amended Complaint be, and the same hereby is, GRANTED. This order is without prejudice to the right of any defendant to file a motion to dismiss or motion for summary judgment on any grounds, including the ground that the court does not have subject matter jurisdiction over defendants' counterclaims. (Kirksey Smith, K)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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GUTTERGLOVE INC., a California
Corporation,

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Civ. No. 17-1372 WBS CKD

Plaintiff,
ORDER RE: MOTION FOR LEAVE TO
FILE FIRST AMENDED ANSWER AND
COUNTERCLAIMS

v.
WILLIAM LASELL, an individual;
AMERICAN DIE AND ROLLFORMING,
INC., a California Corporation;
and ARTESIAN HOME PRODUCTS, a
California Corporation, dba
VALOR GUTTER GUARD,
Defendants.

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Plaintiff Gutterglove, Inc. brought this action against

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defendants William Lasell, American Die and Rollforming, Inc.

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(“American Die”), and Artesian Home Products doing business as

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Valor Gutter Guard (“Valor”) alleging various claims in

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connection with defendants’ misappropriation of plaintiff’s trade

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secrets.

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(Pretrial Scheduling) Order that prohibited further amendments to

On November 1, 2017, the court issued a Status

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the pleadings “except with leave of court, good cause having been

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shown under Federal Rule of Civil Procedure 16(b).”

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25.)

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to File a First Amended Answer and Counterclaims.

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31.)

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claim and defense for inequitable conduct as well as additional

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facts to bolster their existing claim for conversion and defense

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of unclean hands.

(Docket No.

Presently before the court is defendants’ Motion for Leave
(Docket No.

Defendants seek to amend their answer to include a new

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(Defs.’ Mot. at 2, 4-5.)

Here, defendants filed their original answer on

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November 8, 2017, and on December 5, 2017, U.S. Patent No.

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9,834,936 (“’936 Patent”) was issued, which listed Robert C.

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Lenney as the sole inventor.

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2).)

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instigated an investigation, which was only recently completed,

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to determine the significance of the ‘936 patent to this case.

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(Defs.’ Mem. at 6.)

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defendants filed their original answer, defendants did not have a

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sufficient basis to allege their new claim and defense until

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after they learned about the ‘936 patent and conducted an

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investigation, and therefore defendants have shown good cause

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under Rule 16(b).

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First Amended Answer will not cause any unnecessary delay in the

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litigation as discovery is still open, little discovery has yet

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been conducted, and the pretrial conference and trial dates will

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remain unchanged.1

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(Costello Decl. ¶ 5 (Docket No. 31-

After learning about the ‘936 patent, defendants’ counsel

Thus, because the ‘936 patent issued after

(See id. at 12-13.)

Moreover, defendants’

See Johnson v. Mammoth Recreations, Inc.,

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Discovery is open until September 20, 2018 and only two
witness depositions have been taken, both which were noticed by
defendants. (Defs.’ Mem. at 11.)
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975 F.2d 604, 607-08 (9th Cir. 1992) (holding that if good cause

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is shown then leave to amend should be granted unless amendment

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would cause prejudice to the opposing party, is sought in bad

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faith, is futile, or creates undue delay).

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Plaintiff argues that amendment is futile because the

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court does not have subject matter jurisdiction.

(Pl.’s Opp’n at

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3 (Docket No. 36).)

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on a motion to dismiss or motion for summary judgment.

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courts will determine the legal sufficiency of a proposed

However, this issue would be better resolved
“While

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amendment using the same standard as applied on a Rule 12(b)(6)

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motion . . . such issues are often more appropriately raised in a

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motion to dismiss rather than in an opposition to a motion for

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leave to amend.”

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Supp. 2d 1081, 1086 (S.D. Cal. 2002).

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SAES Getters S.p.A. v. Aeronex, Inc., 219 F.

Plaintiff also argues that defendants’ failure to file

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the First Amended Answer with the Court pursuant to Local Rule

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137(c) warrants denial of the Motion.

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Rule 137(c) of the Local Rules of the United States District

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Court for the Eastern District of California provides in relevant

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part that, “[i]f filing a document requires leave of court . . .

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counsel shall attach the document proposed to be filed as an

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exhibit to moving papers seeking such leave.”

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Court has discretion to deny a motion to amend for the failure to

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attach a proposed pleading as required by local rule.”

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Weyerhaeuser Lanier v. Fresno Unified Sch. Dist., Civ. No. 1:09-

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01779-AWI, 2013 WL 3892953, at *1 (E.D. Cal. July 26, 2013)

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(citing Mortgage Co., 582 F.2d 503, 507 (9th Cir. 1978)).

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(Pl.’s Opp’n at 6.)

Local

Further, “[t]he

Waters v.

Notwithstanding Local Rule 137(c), the court declines
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to deny leave to amend due to failure to attach the proposed

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answer, because both plaintiff and the court were provided with

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the proposed answer.

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Motion for Leave to File the First Amended Answer on the same day

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it filed its Request to Seal the First Amended Answer.2

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Nos. 30, 31.)

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Request to Seal, defendant emailed the court and plaintiff3 a

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copy of its First Amended Answer, and thus both the court and

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plaintiff had time to review the proposed amended answer.

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Compare Perryman v. Duffy, Civ. No. 2:15-08 DB P, 2016 WL

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5815938, at *3 (E.D. Cal. Oct. 4, 2016) (“Without a proposed

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amended complaint, the Court is unable to review plaintiff’s

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claims and therefore cannot grant his motion.”).

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unique circumstances of this case and the fact that plaintiff had

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the opportunity to review the First Amended Answer, the court

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finds that plaintiff was not prejudiced by defendants’ failure to

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file the First Amended Answer with its Motion for Leave to File

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the First Amended Answer.

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its discretion to permit defendants to file the First Amended

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Answer.

On March 15, 2018, defendants filed their

(Docket

In order to permit the court to rule on its

Given the

Accordingly, the court will exercise

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On March 21, 2018 the court denied defendants’ Request
to Seal without prejudice to the right of either party to submit
a more tailored request. (Mar. 21, 2018 Order (Docket No. 33).)
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Defendants certified that defendants submitted their
Request to Seal Documents, including an un-redacted FAA by email
to the undersigned Judge and to plaintiff’s counsel. (Defs.’
Request to Seal Documents Per Local Rule 141 at 2. (Docket No.
30).) In addition, defendants state in their reply that they
emailed the draft FAA, with confidential-designated information,
and asked for plaintiff to stipulate to allow the filing of the
FAA. (Defs.’ Reply at 6 (Docket No. 37).)
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IT IS THEREFORE ORDERED that defendants’ Motion for

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Leave to File a First Amended Answer and Counterclaims to

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Plaintiff’s Second Amended Complaint (Docket No. 31) be, and the

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same hereby is, GRANTED.

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right of any defendant to file a motion to dismiss or motion for

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summary judgment on any grounds, including the ground that the

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court does not have subject matter jurisdiction over defendants’

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counterclaims.

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Dated:

This order is without prejudice to the

April 24, 2018

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