Klein v. Cultured Gourmet, LLC

Filing 39

ORDER GRANTING 36 MOTION FOR LEAVE TO FILE AN AMENDED ANSWER by Judge Phyllis J. Hamilton.(pjhlc2S, COURT STAFF) (Filed on 5/12/2020)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ERIC A. KLEIN,

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United States District Court
Northern District of California

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Case No. 17-cv-05034-PJH

Plaintiff,

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v.

ORDER GRANTING MOTION FOR
LEAVE TO FILE AN AMENDED
ANSWER

CULTURED GOURMET, LLC,

Re: Dkt. No. 36

Defendant.

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Before the court is defendant Cultured Gourmet, LLC’s (“defendant”) motion for

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leave to file an amended answer (Dkt. 36). The matter is fully briefed and suitable for

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decision without oral argument. Having read the parties’ papers and carefully considered

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their arguments and the relevant legal authority, and good cause appearing, the court

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GRANTS the motion for the following reasons.

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BACKGROUND
This case is an action for infringement of a patent concerning a design for

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vegetable fermenting kitchenware. Compl. ¶ 4. Defendant filed its initial answer on

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October 27, 2017. Dkt. 14. On January 16, 2020, following on almost two-year stay in

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litigation pending the Patent and Trademark Office’s ex parte reexamination of the patent

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at issue, defendant filed its motion for leave to file an amended answer. Dkt. 36. In its

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proposed amended answer (Dkt. 36-1), defendant seeks to add an affirmative defense of

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unclean hands, as well as an allegation in support of its preexisting inequitable conduct

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affirmative defense. Compare Dkt. 14 with Dkt. 36-1 at ¶¶ 19-30, 36.

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DISCUSSION

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A.

Legal Standard
Under Rule 15, a party generally may amend its pleadings as a matter of course

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within 21 days of their service. Fed. R. Civ. Pro. 15(a)(1). After that, a party may amend

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its pleadings only if it obtains the opposing party’s written consent or leave of court. Fed.

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R. Civ. Pro. 15(a)(2). In the latter scenario, courts “should freely give leave when justice

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so requires.” Id.
When deciding whether to grant leave, courts consider the following five factors:

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“(1) bad faith, (2) undue delay, (3) prejudice to the opposing party, (4) futility of
amendment; and (5) whether plaintiff has previously amended his complaint.” In re W.

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United States District Court
Northern District of California

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States Wholesale Nat. Gas Antitrust Litig., 715 F.3d 716, 738 (9th Cir. 2013). In the

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Ninth Circuit, “[n]ot all of the factors merit equal weight,” rather “it is the consideration of

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prejudice to the opposing party that carries the greatest weight.” Eminence Capital, LLC

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v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003).
“The party opposing amendment bears the burden of showing prejudice.” DCD

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Programs, Ltd. v. Leighton, 833 F.2d 183, 187 (9th Cir. 1987). Absent such showing, or

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a strong showing under the above remaining factors, “there exists a presumption under

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Rule 15(a) in favor of granting leave to amend.” Eminence Capital, LLC, 316 F.3d at

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1052 (emphasis in the original).

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B.

Analysis

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Here, plaintiff failed to rebut the presumption favoring leave to amend. In its

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opening brief, defendant explained why each relevant factor cuts in favor of amendment.

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Dkt. 36 at 3-5. Significantly, defendant pointed out that (1) “the record before the court

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shows no indication of a bad faith purpose” for its request, (2) it filed this request early in

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this litigation, (3) as of the time of the motion’s filing, “discovery ha[d] just begun,” (4) the

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additional factual allegations proffered in the amended answer would support its unclean

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hands and inequitable conduct defenses, and (5) defendant has not previously sought

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leave to amend. Id.
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In its two-page opposition, plaintiff challenges the merits of several of the

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affirmative defenses. In particular, plaintiff argues the following: (1) defendant is judicially

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and collaterally estopped from asserting its first (unclean hands), sixth (inequitable

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conduct), seventh (estoppel), and eighth (implied license) affirmative defenses (all

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numbered as amended) because of its purported prior representations to Magistrate

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Judge Ryu in a previously remanded action, Cultured Gourmet LLC v. Klein, 15-1631; (2)

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defendant’s first affirmative defense is improper in a patent-related action; and (3)

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defendant’s third affirmative defense (invalidity) is insufficiently specific. Dkt. 37 at 2.

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Plaintiff does not address any of the factors controlling whether granting the requested
leave is proper. Most fatal, plaintiff failed to make any showing that it would be

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United States District Court
Northern District of California

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prejudiced by defendant’s requested amendments.

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Further, various of the affirmative defenses challenged by plaintiff in its opposition

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appear entirely unaffected by defendant’s amendments. Compare Dkt. 14 (first through

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fourth, sixth, and seventh affirmative defenses) with Dkt. 36-1 (second through fifth,

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seventh, and eighth affirmative defenses). In any event, whatever the merits of plaintiff’s

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criticisms (which themselves neglect any reference to controlling authority), its opposition

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to the instant motion is not the proper vehicle to raise them.
CONCLUSION

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For the foregoing reasons, the court GRANTS defendant’s motion for leave to file

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an amended answer. Accordingly, the court ORDERS defendant to refile its proposed

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amended answer (Dkt. 36-1), which, when refiled, will serve as defendant’s operative

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amended answer.

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IT IS SO ORDERED.
Dated: May 12, 2020
/s/ Phyllis J. Hamilton
PHYLLIS J. HAMILTON
United States District Judge

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