Simonian v. Monster Cable Products, Inc.

Filing 81

ORDER Granting 73 MOTION for Leave to Amend. Case Management Conference set for 9/21/2011 02:00 PM in Courtroom 4, 5th Floor, San Jose. Signed by Judge Koh on 6/8/2011. (lhklc1, COURT STAFF) (Filed on 6/8/2011)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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United States District Court
For the Northern District of California

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THOMAS A. SIMONIAN,
Plaintiff,
v.
MONSTER CABLE PRODUCTS, INC.,

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Defendant.

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Case No.: 10-CV-05544-LHK
ORDER GRANTING PLAINTIFF
LEAVE TO FILE SECOND AMENDED
COMPLAINT

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I.

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On February 24, 2010, Thomas A. Simonian (Plaintiff) filed a complaint alleging false

INTRODUCTION AND BACKGROUND

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patent marking against Monster Cable Products, Inc. (Defendant) in the Northern District of

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Illinois. On March 5, 2010, Plaintiff filed a First Amended Complaint (FAC). On November 22,

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2010, Judge Bucklo granted Defendant’s motion to transfer the case to this District. Accordingly,

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the case was transferred to the Northern District of California on December 7, 2010. On March 14,

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2011, Defendant filed a motion to dismiss Plaintiff Thomas Simonian’s First Amended Complaint

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(“FAC”) for False Patent Marking. On March 15, 2011, after Defendant filed its motion, the

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Federal Circuit issued a decision clarifying the pleading standard applicable to false marking

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claims under 35 U.S.C. § 292. In re BP Lubricants USA Inc., --- F.3d ----, 2011 WL 873147, Misc.

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No. 960 (Fed. Cir. Mar. 15, 2011). Pursuant to the Federal Circuit’s decision, “Rule 9(b)’s

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particularity requirement applies to false marking claims and . . . a complaint alleging false

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marking is insufficient when it only asserts conclusory allegations that a defendant is a

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‘sophisticated company’ and ‘knew or should have known’ that the patent expired.” Id. at *1.
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Case No.: 10-CV-05544-LHK
ORDER GRANTING PLAINTIFF LEAVE TO FILE SECOND AMENDED COMPLAINT

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Plaintiff filed both an opposition to Defendant’s motion to dismiss as well as a motion for

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leave to file a Second Amended Complaint (“Motion,” “SAC”) in light of BP Lubricants. See Dkt.

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Nos. 73, 74. In the Motion, Plaintiff appeared to concede that the FAC was deficient in light of the

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BP Lubricants standard. Accordingly, the Court deemed the FAC dismissed and found

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Defendant’s motion to dismiss the FAC moot. The Court has considered the briefing submitted by

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the parties relating to the Motion, and finds this matter suitable for decision without oral argument.

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See Civ. L. R. 7-1(b). Accordingly, the hearing and further case management conference set for

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June 16, 2011 at 1:30 p.m. are hereby VACATED. The case schedule in the Court's March 2, 2011

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Case Management Order remains as set. In addition, a further Case Management Conference is set

United States District Court
For the Northern District of California

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for September 21, 2011 at 2 p.m. For the reasons set forth below, the Court GRANTS Plaintiff

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leave to file the SAC.

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II.

LEGAL STANDARD

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Pursuant to Federal Rule of Civil Procedure 15(a), a party may amend its pleading once as a

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matter of course within 21 days of serving it. Fed. R. Civ. Pro. 15(a)(1). After that initial period

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has passed, amendment is permitted only with the opposing party’s written consent or leave of the

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court. Id. 15(a)(2). Rule 15 instructs that “[t]he court should freely give leave when justice so

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requires.” Id. Although this rule “should be interpreted with extreme liberality, leave to amend is

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not to be granted automatically.” Jackson v. Bank of Hawaii, 902 F.2d 1385, 1387 (9th Cir. 1990)

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(internal citation and quotation marks omitted). Courts commonly consider four factors when

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determining whether to grant leave to amend: (1) bad faith on the part of the movant; (2) undue

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delay; (3) prejudice to the opposing party; and (4) futility of the proposed amendment. Foman v.

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Davis, 371 U.S. 178, 182 (1962); Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980,

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986 (9th Cir. 1999). Of these factors, prejudice to the opposing party is the most important.

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Jackson, 902 F.2d at 1387.

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III.

APPLICATION

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Defendant does not oppose Plaintiff's amendment of his complaint on any of the grounds

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mentioned above (bad faith, undue delay, prejudice, or futility). Instead, Defendant argues that

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Plaintiff’s complaint should be additionally amended to add a reference to one of its patents, U.S.
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Case No.: 10-CV-05544-LHK
ORDER GRANTING PLAINTIFF LEAVE TO FILE SECOND AMENDED COMPLAINT

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Patent D549,174S (the ’174 Patent). Defendant argues that this patent “either covers or would

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reasonably seem to cover” several of the products Plaintiff alleges were mismarked. Opp’n to Mot.

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at 3-4. Defendant asserts this argument because “the existence of this patent is germane to

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pleading plausibly that Defendant had specific intent to deceive the public.” Id. at 4.

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Essentially, Defendant asks the Court to order Plaintiff to include a reference to the ’174
Patent because it is relevant to one of Defendant’s claimed defenses. Defendant cites no authority

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for this position, and the Court is unaware of any authority that would support such an order.

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Generally, of course, “the plaintiff is the master of the complaint . . . .” Lincoln Prop. Co. v.

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Roche, 546 U.S. 81, 91 (U.S. 2005). If Defendant wishes to reference its ’174 Patent in connection

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United States District Court
For the Northern District of California

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with a motion to dismiss the SAC, it may certainly do so. While the Court declines to take judicial

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notice of this patent now (as there is no reason to do so), it will entertain a request for judicial

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notice in connection with Defendant’s motion to dismiss. As Defendant points out, the Court may

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take judicial notice of facts that are “capable of accurate and ready determination by resort to

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sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b)(2). Because the

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’174 Patent is a U.S. Patent, its contents can readily be determined. If it is appropriate to do so, the

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Court will take notice of the ’174 Patent in connection with Defendant’s motion to dismiss.

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IV.

CONCLUSION

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Other than Defendant’s unsupported request to add reference to the ’174 Patent to the

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SAC, Defendant does not oppose Plaintiff’s motion for leave to amend the complaint.

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Accordingly, Plaintiff’s motion is hereby GRANTED. Plaintiff shall file the SAC within 2 days of

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the date of this Order.

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IT IS SO ORDERED.

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Dated: June 8, 2011

_________________________________
LUCY H. KOH
United States District Judge

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Case No.: 10-CV-05544-LHK
ORDER GRANTING PLAINTIFF LEAVE TO FILE SECOND AMENDED COMPLAINT