Digital Ally, Inc. v. Enforcement Video, LLC d/b/a WatchGuard Video
ORDER granting 41 motion for leave to file amended answer. Signed by Magistrate Judge James P. O'Hara on 1/20/2017. (srj)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
DIGITAL ALLY, INC.,
Case No. 16-2349-JTM
ENFORCEMENT VIDEO, LLC,
d/b/a WATCHGUARD VIDEO,
The defendant in this patent infringement case has filed a motion for leave to file
an amended answer (ECF No. 41). Applying the liberal standards of Fed. R. Civ. P.
15(a)(2), the motion is granted.
Before bringing the instant action against defendant, plaintiff filed a patent
infringement suit against Taser International, Inc. (“Taser”).1 Defendant alleges that on
or about September 15, 2016, its counsel discovered that Taser is defending against
plaintiff’s patent infringement claims, in part, by asserting plaintiff committed inequitable
conduct with respect to two of the patents at issue in this case. Defendant summarizes
Taser’s allegations as follows: “[p]laintiff knew about a product manufactured by another
company (ICOP)—the ICOP 20/20 system—knew that the ICOP system was similar to
(and prior art to) the inventions for which [plaintiff] initially sought patent protection, and
purposefully did not disclose the ICOP system to the Patent Office so that its patent
See Case No. 16-2032-CM.
applications would not be rejected.”2 On October 10, 2016, defendant served document
requests on plaintiff seeking, in defendant’s words, “information related to [plaintiff’s]
inequitable conduct before the Patent Office.”3 In response, on November 16, 2016,
plaintiff produced approximately 5,012 documents, certain of which defendant claims
“further support the allegation that [plaintiff] committed inequitable conduct by choosing
not to disclose the ICOP system to the Patent Office.”4 Based on this information, and
within the deadline for filing motions to amend pleadings set forth in the scheduling order
entered in this case (ECF No. 19), defendant filed the instant motion seeking to add to its
answer the affirmative defense of inequitable conduct.
Pursuant to Fed. R. Civ. P. 15(a)(2), once a responsive pleading has been filed, “a
party may amend its pleading only with the opposing party’s written consent or the
court’s leave.” Rule 15(a)(2) directs the court to “freely give leave when justice so
requires.” The Supreme Court has indicated that this directive to freely give leave is a
“mandate … to be heeded.”5 “A district court should refuse leave to amend ‘only [upon]
a showing of undue delay, undue prejudice to the opposing party, bad faith or dilatory
motive, failure to cure deficiencies by amendments previously allowed, or futility of
ECF No. 42 at 2.
Id. at 3.
Foman v. Davis, 371 U.S. 178, 182 (1962).
Plaintiff opposes amendment only on the basis of undue delay, noting “the exact
defense [defendant] now seeks to add” was publicly filed in the Taser litigation on July
20, 2016, nearly five months before defendant’s instant motion to amend.7 Plaintiff,
however, does not dispute that defendant did not discover Taser’s allegations of
inequitable conduct until September 15, 2016. Within one month, defendant served
document requests seeking to confirm Taser’s allegations. The court does not fault
defendant for waiting for further evidence to support its inequitable conduct defense. To
the extent plaintiff argues defendant’s proposed amendment does not rely on any newly
discovered evidence because the proposed amendment merely “cop[ies], verbatim,
Taser’s allegations,”8 the court does not find the two to be mutually exclusive.
Although not addressed by plaintiff, the court further notes none of the other
factors weighing against granting amendment is present here. First, the court does not
find that plaintiff will be unduly prejudiced by the amendment, as this case is in its early
stages and plaintiff will have an adequate chance to conduct discovery on the affirmative
defense. Indeed, fact discovery remains open until November 17, 2017.9 Second, there is
no bad faith or dilatory motive present. Third, defendant has not previously sought
Wilkerson v. Shinseki, 606 F.3d 1256, 1267 (10th Cir. 2010) (quoting Duncan v.
Manager, Dep’t of Safety, City & Cnty. of Denv., 397 F.3d 1300, 1315 (10th Cir. 2005)).
ECF No. 46 at 1.
Id. at 6.
See ECF No. 19.
amendment. Fourth, based on the record before it, the court cannot find that amendment
would be futile.
IT IS THEREFORE ORDERED that defendant’s motion for leave to file an
amended answer is granted. Defendant shall file its amended answer by January 24,
Dated January 20, 2017, at Kansas City, Kansas.
s/ James P. O’Hara
James P. O=Hara
U.S. Magistrate Judge
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