Carson Optical, Inc. et al v. Prym Consumer USA, Inc.

Filing 37

ORDER granting 35 : See attached Order for details. Ordered by Magistrate Judge Arlene R. Lindsay on 10/22/2012. c/ecf (Johnston, Linda)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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CARSON OPTICAL, INC., et al.,
Plaintiffs,

ORDER
CV 11-3677 (SJF)(ARL)

-againstPRYM CONSUMER USA, INC., et al.,
Defendants.
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LINDSAY, Magistrate Judge:
Plaintiff Carson Optical, Inc. (“Carson Optical”), a New York corporation that markets
and sells optical products, and plaintiff Leading Extreme Optimist Indus. Ltd, a Hong Kong
company that manufactures optical products (collectively “plaintiffs”), commenced an action on
July 29, 2011 against defendant Prym Consumer USA, Inc. (“Prym”), a manufacturer of
magnification products, and commenced an action on January 6, 2012 against defendant Jo-Ann
Stores, Inc., a retailer of Prym’s products (“Jo-Ann Stores”), seeking to recover damages due to
Prym and Jo-Ann Store’s alleged patent infringement, trade dress infringement, unfair
competition and tortious interference with prospective business relations in connection with four
of plaintiff Carson Optical’s design patents.1 By Order dated March 9, 2012, the district court
consolidated the two actions. By Order dated September 28, 2012, the undersigned granted
Prym’s request, on consent, to extend the deadline to commence motion practice for joinder of
additional parties or amendment of pleadings to October 5, 2012.
Defendant Prym now moves for an order granting Prym leave to amend its answer to
assert (1) two additional affirmative defenses concerning plaintiff Carson’s trade dress claim; and
(2) six counterclaims. (Smirti Jr. Letter, dated October 5, 2012.) In particular, Prym seeks to
assert counterclaims: (i) alleging false patent marking, under 35 U.S.C. § 292, with respect to
Carson’s ATTACH-A-MAG and RimFree products; (ii) alleging false advertising, in violation of
15 U.S.C. § 1125(a) and N.Y. General Business Law § 350; and (iii) seeking declarations of noninfringement and invalidity of the patents at issue in this action. (Id.) Plaintiff Carson does not
oppose the motion as to the assertion of the additional affirmative defenses, however, Carson
does oppose the proposed amendment to the answer to assert new counterclaims on the grounds
that the proposed amendment is dilatory, unduly prejudicial, and the claims, in any event, are not
plausible. (Cordani Jr. Letter, dated October 9, 2012.)
Amendment of an Answer containing counterclaims is governed by Federal Rule of Civil
Procedure 15. Fed. R. Civ. P. 15. Rule 15 (a) allows a party to amend its pleadings by leave of
court or by the written consent of the other party, and further directs that “the court should freely

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The patents at issue are U.S. Patent Nos. D495,726 S, D563,779 S, D508,063 S, and
D613,437 S, which were issued by the United States Patent and Trademark Office.

give leave when justice so requires.” Fed. R. Civ. P. 15(a)(2). “[I]t is within the sound
discretion of the district court to grant or deny leave to amend.” McCarthy v. Dun & Bradstreet
Corp., 482 F.3d 184, 200 (2d Cir. 2007). Thus, leave to amend “should be freely given,” in the
absence of “undue delay, bad faith or dilatory motive on the part of the movant, . . . undue
prejudice to the opposing party . . . [or] futility of amendment.” Forman v. Davis, 371 U.S. 178,
182 (1962). “The Federal Rules [of Civil Procedure] reject the approach that pleading is a game
of skill in which one misstep by counsel may be decisive to the outcome and accept the princple
that the purpose of pleading is to facilitate a proper decision on the merits.” Swierkiewicz v.
Sorema N.A., 534 U.S. 506, 514 (2002).
Plaintiff Carson’s assertion that the proposed amendment should be barred due to
defendant Prym’s delay in making this application is unavailing. “[M]ere delay, . . . absent a
showing of bad faith or undue prejudice, does not provide a basis for a district court to deny the
right to amend.” EEOC v. Thomas Dodge Corp., 524 F. Supp. 2d 227, 331 (E.D.N.Y. 2007)
(quoting State Teachers Retirement Bd. v. Fluor Corp., 654 F.2d 843, 856 (2d Cir. 1981)). As a
threshold matter, there is no evidence of undue delay. The application by defendant Prym to
amend its answer was made on October 5, 2012, which was within the date to file such motions
as set forth in the undersigned’s Order, dated September 28, 2012. In assessing the likelihood of
prejudice, the Court examines whether the proposed amendment would “(i) require the opponent
to expend significant additional resources to conduct discovery and prepare for trial; (ii)
significantly delay the resolution of the dispute or (iii) prevent the plaintiff from bringing a
timely action in another jurisdiction.” Block v. First Blood Assocs., 988 F.2d 344, 350 (2d Cir.
1993); see also Dawson v. Pelican Management, Inc., 2012 WL 2357308, at *2 (E.D.N.Y. June
1, 2012). None of these factors are implicated by the instant motion.
Plaintiff does not assert any bad faith on the part of the defendant. Although the proposed
amendment would require certain additional discovery, these concerns are mitigated by the fact
that the proposed counterclaim for the alleged false patent marking, alleged false advertising, and
declarations of non-infringement and invalidity concern the same patents at issue in this action to
which plaintiff Carson is a party and involve the same events and transactions within which
plaintiff was integrally involved. Defendant Prym also raised as affirmative defenses in its
Answer the non-infringement and invalidity of the patents at issue. The Court, therefore, does
not anticipate substantial additional discovery. See Block, 988 F.3d at 351-52 (allegations
amendment will require the expenditure of additional time, effort and money do not constitute
“undue prejudice”). Moreover, Carson’s argument that Prym’s amendment is prejudicial because
“it begs further briefing on Prym’s Motion for Judgment on the Pleadings, which has been fully
briefed,” is unpersuasive as the parties will be given leave to supplement their submissions to the
pending motion upon an application to the undersigned with a proposed schedule for such
submission.
Finally, plaintiff’s claims that the proposed counterclaims lack plausibility and rely on a
provision in the Manual of Patent Examining Procedure (“MPEP”) which plaintiff claims does
not “have the force of law,” likewise fail. In its opposition letter, Carson states:
Prym’s new counterclaims allege that Carson falsely marked its magnifier
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products with patent numbers that do not cover its products with an intent to
deceive the public. Prym’s position is best described in Prym’s own words.
Remarkably, Prym now believes that Carson’s ‘Patents disclose surfaces on the
lens-shaped elements that are opaque.’ Thus, Prym believes that Carson sought a
design patent for a magnifier with a lens that no one can look through and then
marked its magnifier products (with transparent lenses) with these patent numbers
for the purported purpose of deceiving the public. Why would any reasonable
person or magnifier manufacturer secure patent protection for a magnifier with a
lens that does not transmit and refract light? Prym’s claim is desperate and not
plausible.
(Cordani Jr. Letter, dated October 9, 2012.) Plaintiff’s arguments based on the reasonableness
of the claims are issues that should properly be placed before the finder of fact and do not form
the basis for denying defendant Prym’s motion to amend its answer. Regardless of whether
MPEP has the force of law, plaintiff’s argument that Prym erroneously bases its claim on Section
1503.02, at Section II, of the MPEP which provides that “[o]blique line shading must be used to
show transparent, translucent and highly polished or reflective surfaces, such as a mirror,” is a
consideration that properly belongs before the trier of fact. As plaintiff Carson states in its
opposition, “the only legal standard for whether a design patent covers a particular product
involves whether ‘the eye of an ordinary observer, giving such attention as a purchaser usually
gives’ and familiar with the prior art would be deceived into thinking the accused design was the
same as the patented design.” (Id.)
Accordingly, defendant Prym’s motion to amend its Answer to assert two additional
affirmative defenses and six counterclaims is granted.
Dated: Central Islip, New York
October 22, 2012

SO ORDERED:

_________/s/______________
ARLENE R. LINDSAY
United States Magistrate Judge

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