Ascion, LLC v. Tempur Sealy International, Inc. et al
Filing
144
OPINION AND ORDER: 1. denying 129 Plt Ascion, LLC's Motion for Leave to Supplement the Complaint.(2) No later than September 24, 2021, the parties SHALL file a Joint Stipulation, outlining the amount of time necessary to complete all relevant tasks and remaining deadlines. Signed by Judge Joseph M. Hood on 9/23/21. (JLM)cc: COR and Andrew Kolozsvary, Benjamin Weed, Bryce Rucker by US mail
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION at LEXINGTON
ASCION, LLC, d/b/a Reverie,
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)
)
)
)
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)
)
)
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Plaintiff,
V.
TEMPUR SEALY INT’L, INC.,
et al.,
Defendants.
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Civil No. 5:17-403-JMH
OPINION and ORDER
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This matter is before the Court on the Plaintiff’s Motion for
Leave to Supplement the Complaint. (DE 129). This matter has been
fully briefed (see DE 130, 131) and the Court held a motion hearing
on September 22, 2021. For the reasons that follow, the Plaintiff’s
Motion is denied.
Plaintiff
Ascion,
LLC
(d/b/a
“Reverie”)
initiated
this
lawsuit against Defendants Tempur Pedic International, LLC and
Tempur Pedic Management, LLC (jointly “Tempur”) on June 5, 2015 in
the United States District Court for the Eastern District of
Michigan. It was transferred to this Court on October 16, 2017.
(DE
88,
89).
Reverie’s
Complaint
asserts
seven
(7)
patent
infringement claims and one (1) claim for breach of confidentiality
agreements
pursuant
to
state
law.
(See
generally
DE
1).
In
response, Tempur has asserted fourteen (14) counterclaims – half
of which address the non-infringement of Reverie’s seven patents,
Page 1 of 4
and
the
other
half
of
which
address
invalidity
and/or
unenforceability contentions. (See generally DE 31).
In its Motion, Reverie requests leave of Court to supplement
its complaint to add one new count for patent infringement. This
new count is based on Reverie’s U.S. Pat. No 9,451,833 (“the ‘833
Patent”), which issued in late September 2016, but whose alleged
infringement was not discovered until sometime in the spring or
summer of 2019 (see DE 129-1 at 4; DE 131 at 2).
In a case where 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. The court should freely give leave
when
justice
so
requires.” FED.
R.
CIV.
P.
15(a)(2).
The
determination of when “justice so requires” is “left to the sound
discretion of the trial judge.” Robinson v. Michigan Consol. Gas
Co. Inc., 918 F.2d 579, 591 (6th Cir. 1990). A number of factors
inform this Court's exercise of discretion: (1) the moving party's
“[u]ndue delay in filing [its motion for leave],” (2) “lack of
notice to the opposing party,” (3) “bad faith by the moving party,”
(4)
“repeated
failure
to
cure
deficiencies
by
previous
amendments,” (5) “undue prejudice to the opposing party,” and (6)
“futility
of
amendment.” Robinson,
918
F.2d
at
591; Foman
v.
Davis, 371 U.S. 178, 182 (1962).
In their briefs, the parties focus their attention to just a
few of these factors; most notably, (1) undue delay, (5) undue
Page 2 of 4
prejudice, and (6) futility. Upon review, while the Court finds
that the named factors are instructive and certainly at play in
this case — at least to some degree — the Court concludes that the
last factor, futility, is the most telling.
At the motion hearing, the Court was informed that Reverie’s
‘833 patent was found to be invalid for lack of an adequate written
description in a separate federal lawsuit, and has since been
dismissed. See Ascion, LLC v. Ashley Furniture Indus., Inc., No.
19-cv-856-jdp, 2021 WL 964884, at *4-6 (W.D. Wis. Mar. 15, 2021).
The parties further advised that this case is now pending before
the United States Court of Appeals for the Seventh Circuit.
A district court may deny a plaintiff leave to amend his
complaint
when
the
proposed
amendment
would
be
futile. See,
e.g., Yuhasz v. Brush Wellman, Inc., 341 F.3d 559, 569 (6th Cir.
2003) (citing Foman, 371 U.S. at 178). An amendment is deemed
futile when it would not withstand a Rule 12(b)(6) motion to
dismiss. Rose v. Hartford Underwriters Ins. Co., 203 F.3d 417,
420-21 (6th Cir. 2000). Consequently, having learned that the ‘833
patent has found no success on the invalidity merits in a separate,
federal district court, the Court finds that supplementing the
complaint to add this new patent infringement claim would simply
be futile.
Accordingly, IT IS HEREBY ORDERED as follows:
Page 3 of 4
(1)
Plaintiff Ascion, LLC’s Motion for Leave to Supplement
the Complaint (DE 129) is DENIED.
(2)
No later than September 24, 2021, the parties SHALL file
a
Joint
Stipulation,
outlining
the
amount
of
time
necessary to complete all relevant tasks and remaining
deadlines.
This the 23rd day of September, 2021.
Page 4 of 4
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