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

Filing 73

ORDER re 56 : see attached Order for details. Ordered by Magistrate Judge Arlene R. Lindsay on 5/2/2013. c/ecf (Johnston, Linda)

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

ORDER
CV 11-3677 (ARL)

-againstPRYM CONSUMER USA, INC., et al.,
Defendants.
---------------------------------------------------------------X
LINDSAY, Magistrate Judge:
Before the court is plaintiffs’ letter motion dated December 19, 2012 for leave to amend
its complaints pursuant to Fed. R. Civ. P. 15(a) to (1) consolidate the two complaints against
defendants Prym Consumer USA, Inc. (“Pyrm”) and Jo-Ann Stores, Inc. (“Jo-Ann Stores”)
(collectively “defendants”); (2) drop all counts of patent infringement for U.S. Patent No.
D613,437 S (“the ‘437 Patent”) against defendants; and (3) drop the count of tortious
interference with prospective business relations against defendant Jo-Ann Stores. In addition,
plaintiffs move by letter application to dismiss defendant Prym’s Fifth and Sixth Counterclaims
with respect to the ‘437 Patent for lack of subject matter jurisdiction pursuant to Fed. R,. Civ. P.
12(b)(1) and 12(h)(3). Defendants oppose the application by letter responses dated December
21, 2012.
Plaintiffs’ motion to amend its complaint is denied as moot. By Memorandum and Order
dated March 25, 2013, this Court granted defendants’ motions for partial judgment on the
pleadings pursuant to Fed. R. Civ. P. 12 (c) and granted plaintiffs leave to replead within ten days
of the date of the Order. On April 16, 2013, plaintiffs timely filed a Second Amended
Consolidated Complaint against defendants which consolidated the two complaints against
defendants; dropped the counts of patent infringement for the ‘437 Patent against defendants; and
dropped the count of tortious interference with prospective business relations against defendant
Jo-Ann Stores.
Plaintiffs’ motion to dismiss defendant Prym’s Fifth and Sixth Counterclaims is denied,
with leave to renew. In moving to dismiss these counterclaims, plaintiffs moved by letter
application pursuant to Local Civil Rule 37.3, which provides parties with a mode of raising
discovery and other non-dispositive pretrial disputes with the Court via a three-page letter
application. Local Civil Rule 37.3 (c) provides in relevant part:
[w]here the attorneys for the affected parties or non-party witness cannot agree on
a resolution of any other discovery dispute or non-dispositive pretrial dispute . . .
they shall notify the Court by letter not exceeding three pages in length outlining
the nature of the dispute and attaching relevant materials.

Local Civil Rule 37(c). Given that plaintiffs’ application to dismiss the counterclaims was
neither a discovery dispute nor a non-dispositive pretrial dispute, plaintiffs’ application was
improper. Defendant Prym’s request for sanctions is denied.

Dated: Central Islip, New York
May 2, 2013

SO ORDERED:

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

2