Speedfit LLC et al v. Woodway USA, Inc. et al
ORDER granting 117 Motion to Amend/Correct/Supplement Plaintiffs' Second Amended Complaint. For the reasons set forth in the attached Memorandum and Order, plaintiffs' motion for leave to file a third amended complaint is granted. Plai ntiffs shall file their Third Amended Complaint by October 23, 2015. The deadline to submit summary judgment motions is hereby adjourned without date. After defendant has responded to the Third Amended Complaint, the parties are referred to Magistr ate Judge Tomlinson to schedule a conference and set new deadlines for discovery. If the parties wish to schedule briefing for summary judgment motions after completion of discovery, they may request a pre-motion conference as provided in this court's motion practices. Ordered by Judge Kiyo A. Matsumoto on 10/19/2015. (McNulty, John)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
SPEEDFIT LLC and AUREL A. ASTILEAN,
MEMORANDUM AND ORDER
-againstWOODWAY USA, INC.
MATSUMOTO, United States District Judge:
Plaintiffs Speedfit LLC (“Speedfit”) and Aurel A.
Astilean (together, “plaintiffs”) move for leave to file a Third
Amended Complaint against defendant Woodway USA, Inc.
For the reasons discussed below, plaintiffs’
motion is granted.
This is a patent infringement action concerning the
inventorship and development of a manually-powered treadmill,
currently marketed by Woodway as the “Curve” treadmill.
Plaintiff Speedfit, founded by plaintiff Astilean, is a New
York-based company that develops fitness programs and equipment.
(See ECF No. 84, Second Amended Complaint (“Second Am. Compl.”)
Together, Speedfit and Astilean allege they have
developed the “leg-powered, non-motorized treadmill” at the
center of this litigation.
(Id. ¶ 4.)
Defendant Woodway is a
Wisconsin-based corporation that designs, manufactures, and
sells fitness and exercise products, including the manuallyoperated Curve treadmill.
(See ECF No. 93, Defendant’s Answer
to Second Am. Compl. ¶¶ 5, 38.)
On March 11, 2013, plaintiffs filed an action for,
inter alia, breach of contract and declaratory judgment
invalidating defendants Woodway and Douglas G. Bayerlein’s
patent for a manually-powered treadmill.
1, Complaint.) 1
(See generally ECF No.
Plaintiffs amended their complaint against
defendants on June 17, 2013 to abandon their declaratory
judgment claim and instead allege infringement of plaintiffs’
own patents for components of a manually-powered treadmill, U.S.
Patent Nos. 8,308,619 (the “’619 Patent”) and 8,342,016 (the
“’016 Patent”) (collectively, the “Speedfit Patents”.) (See
generally ECF No. 18, Amended Complaint.)
On November 9, 2013, Woodway filed a motion to (1)
dismiss or transfer plaintiffs’ claims based on a later-filed
action in the United States District Court for the Eastern
District of Wisconsin, and (2) dismiss plaintiffs’ state law
claims for failure to state a claim for which relief could be
Mr. Bayerlein was dismissed from this case by consent of the parties on
November 3, 2014. (See Electronic Order dated 11/3/14.)
(ECF No. 34, Motion to Dismiss.)
The court denied
Woodway’s motion except as to plaintiffs’ breach of fiduciary
duty claim, which was dismissed for failure to state a claim.
(ECF No. 59, Mem. and Order, dated October 10, 2014.)
On February 17, 2015, with the consent of remaining
defendant Woodway, plaintiffs filed a Second Amended Complaint
that, inter alia, amended their cause of action for breach of
contract to compel Woodway to assign all right, title, and
interest in two Woodway patent applications connected to the
U.S. Patent Application No.
13/235,065 (the “’065 Patent Application”) and U.S. Provisional
Patent Application No. 61/161,027 (the “’027 Provisional Patent
(Second Am. Compl. ¶ 54.)
that the information Woodway used to develop the patent
applications “was taken directly from Plaintiff’s design” and
“improperly failed to identify Astilean as the inventor of the
(Id. ¶ 35.)
the Second Amended Complaint on March 6, 2015 and included
counterclaims against plaintiffs for a declaratory judgment that
the Speedfit Patents are invalid and a claim to correct
inventorship of the Speedfit Patents to include “relevant
Woodway personnel” as sole or joint inventors.
ECF No. 93, Defendant’s Answer and Counterclaims to Second
Speedfit’s Proposed Third Amended Complaint
On June 22, 2015, plaintiffs served the instant motion
for leave to file a Third Amended Complaint.
(See ECF No. 117-
8, Plaintiff’s Memorandum in Support of Motion for Leave to
Amend the Second Amended Complaint (“Pl. Mem.”).) 2
seek to add claims to correct the inventorship of three Woodway
patents (collectively, the “Woodway Patents”) to include Mr.
Astilean and/or Dan Bostan 3 as inventors or co-inventors:
Patent No. 8,864,627 (the “’627 Patent”), issued by the United
States Patent and Trademark Office (“PTO”) on October 21, 2014;
U.S. Patent No. 8,986,169 (the “’169 Patent”), issued by the PTO
on March 24, 2015; and U.S. Patent No. 9,039,580 the (“’580
Patent”), issued by the PTO on May 26, 2015. 4
(Pl. Reply at 7
Plaintiffs additionally seek to add a claim of conversion
of the Woodway patents from Speedfit (Id. at 1) and seek a
2 The court notes plaintiffs have not modified their proposed Third Amended
Complaint to reflect the court’s dismissal of plaintiffs’ breach of fiduciary
duty claim. Nor does the proposed Third Amended Complaint name Dan Bostan,
the newly identified co-inventor of Speedfit’s patents, as a plaintiff.
On July 14, 2015, the court granted plaintiffs’ motion to correct the
inventorship of the two active Speedfit patents relating to a manuallypowered treadmill, the ‘619 Patent and the ‘016 Patent, to include coinventor Dan Bostan. (See ECF No. 121, Electronic Order dated 7/14/15.)
In plaintiffs’ reply in support of their motion for leave to amend,
plaintiffs explain that they inadvertently omitted the ‘580 Patent from the
proposed Third Amended Complaint, but do seek to add a claim to the Third
Amended Complaint “to correct inventorship of the ‘580 Patent.” (See ECF No.
119-4, Plaintiffs’ Reply in Support of Motion for Leave to Amend the Second
Amended Complaint (“Pl. Reply”) at 7 n.7.)
declaratory judgment that Mssrs. Astilean and/or Bostan are the
sole or joint inventors of the Woodway Patents.
Defendant opposes the motion, arguing that plaintiffs
should not be permitted to add claims after the deadline for
amendment of pleadings and the discovery deadline have passed.
(ECF No. 118-1, Defendant’s Motion in Opposition to Plaintiffs’
Motion for Leave to Amend (“Def. Opp.”) at 1-2.) 5
plaintiffs to add claims at this stage of the litigation,
defendant argues, will unduly prejudice Woodway by requiring
fact discovery to be reopened, which in turn will delay the
filing of summary judgment motions and setting of a trial date.
(Id. at 10.)
Defendant additionally argues that the motion
fails because plaintiffs do not show good cause for their delay
in bringing new claims, as required by Federal Rule of Civil
(Id. at 10-11.)
Plaintiffs counter that a court can only correct an
issued patent under 35 U.S.C. § 256, the Woodway Patents only
recently issued, and plaintiffs moved to amend as expeditiously
as possible thereafter.
(Pl. Reply at 9.)
They also contend
their new claims would not prejudice defendant because the
order dated November 4, 2013, the court set April 11, 2014 as the deadline
to amend the complaint or join additional parties. (ECF No. 33.) Although
the court subsequently issued amended scheduling orders, no new deadline was
set for the amendment of pleadings. Fact discovery concluded on April 24,
2015 (see ECF No. 89) and the deadline to serve summary judgment motions is
October 20, 2015. (See Electronic Order dated 5/15/15.)
Woodway Patents each trace their priority claim back to the ‘027
Provisional Patent Application, the inventorship of which has
already been “thoroughly investigated” in discovery.
Federal Rule of Civil Procedure 15(a)(2) provides that
a court “should freely give leave [to amend] when justice so
However, when a party moves to amend a complaint
after a scheduling order’s deadline to do so has elapsed, as
here, “the Court must balance Rule 15(a)’s instruction to freely
grant leave against Rule 16(b)’s instruction to not modify a
scheduling order unless good cause is shown.”
Allen v. United
Parcel Serv., Inc., 988 F. Supp. 2d 293, 298 (E.D.N.Y. 2013).
The party seeking to amend after the Rule 16(b) deadline “must
first establish good cause to modify that deadline.”
Town of Southhampton, 985 F. Supp. 2d 344, 346 (E.D.N.Y 2013).
“Once Plaintiff has established ‘good cause’ to modify the
scheduling order under Rule 16(b)(4), Plaintiff must then
satisfy the requirements of Rule 15(a) to be granted leave to
Beckett v. Incorporated Village of Freeport, No. 11-cv-
2163, 2014 WL 1330557, at *5 (E.D.N.Y. March 31, 2014).
Rule 16(b)(4) “Good Cause” Analysis
Whether good cause exists to amend after the Rule
16(b) deadline turns on “the diligence of the moving party.”
Parker v. Columbia Pictures Indus., 204 F.3d 326, 340 (2d Cir.
To satisfy the good cause standard, “the party must show
that despite having exercised reasonable diligence, the
applicable deadline could not have been reasonably met.”
Enzymotec Ltd. v. NBTY, Inc., 754 F. Supp. 2d 527, 536 (E.D.N.Y.
The court finds that plaintiffs have satisfied the
“good cause” requirement of Rule 16(b)(4).
Plaintiffs could not
have brought their proposed claims prior to the April 11, 2014
deadline for amendment of pleadings because the earliest of the
Woodway Patents, the ‘627 Patent, did not issue until October
The other two Woodway Patents did not issue until
March 24, 2015 and May 26, 2015, respectively.
Hor v. Ching-Wu Chu, 699 F.3d 1331, 1335 (Fed. Cir. 2012) (“A §
256 claim for correction of inventorship does not accrue until
the patent issues.”)
Additionally, it was not until April 30, 2015 that
defendant abandoned its ‘065 Patent Application, which included
three pending claims that plaintiffs allege are patentably
equivalent to the independent claims in the Patents-in-Suit.
(Pl. Reply at 5-6.)
Although defendant argues that plaintiffs
lacked diligence by not bringing their proposed new claims
earlier, defendant concedes that the Woodway Patents “only
issued in the last several months.”
(Def. Opp. at 10-11.)
parties also spent time engaged in negotiations to stipulate to
an amended complaint after the patents issued.
(Id. at 8-9).
After those negotiations broke down in June 2015 (see ECF No.
117-7, Declaration of Kadie M. Jelenchick in Support of
Defendant’s Opposition to Plaintiff’s Motion to Amend, Exhibit
E), plaintiffs acted diligently by serving their motion for
leave to amend on June 22, 2015.
Thus, the court finds that Woodway has satisfied Rule
16(b)(4)’s “good cause” standard and proceeds to the Rule 15(a)
Rule 15(a) Analysis
Under Rule 15(a), “[a] district court has discretion
to deny leave for good reason, including futility, bad faith,
undue delay, or undue prejudice to the opposing party.”
McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 200–01 (2d
The party opposing the motion to amend bears the
burden of establishing that an amendment would be prejudicial or
Blaskiewicz v. Cnty. of Suffolk, 29 F. Supp. 2d 134,
137–38 (E.D.N.Y. 1998).
As an initial matter, defendant does not raise
futility of amendment in opposition to plaintiffs’ motion.
does defendant argue that plaintiffs’ motion is made with a bad
faith motive, and the court finds none.
Defendant’s undue delay argument is indistinguishable
from its lack of good cause argument.
Woodway asserts that
plaintiffs had reason to know of the Woodway Patents during
discovery and should have moved to amend earlier in the
(Def. Opp. at 11.)
As discussed above, plaintiffs
filed their motion for leave to amend shortly after learning the
Woodway Patents issued, and each of the Woodway Patents issued
after the April 2014 deadline to amend pleadings.
was no undue delay.
See Sullivan v. W. N.Y. Residential, Inc.,
01–CV–7847, 2003 WL 21056888, at *2 (E.D.N.Y. Mar. 4, 2003)
(“[P]laintiffs are not guilty of repeated failure to cure
deficiencies by previous amendments, since the information on
which the present motion is based came into their possession
only after” the time within which they could amend the
As for possible prejudice to defendant, the court
finds none of consequence, let alone “undue prejudice.”
Defendant argues in very broad terms that granting the motion
will require additional discovery to establish the inventor of
the concepts disclosed in the Woodway Patents.
(Def. Opp. at
But plaintiffs’ new claims relate to Woodway’s own
patents, all of which claim priority from the same ‘027
Provisional Patent Application filed by Woodway and identified
in plaintiffs’ Second Amended Complaint.
Thus, much of the
discovery the parties might seek as a result of the amendment
has already been satisfactorily completed (or is in Woodway’s
possession), and the parties will be given an opportunity to
take discovery if necessary.
In any event, even if additional,
limited discovery is required, “the fact that the opposing party
will have to undertake additional discovery, standing alone,
does not suffice to warrant denial of a motion to amend a
U.S. ex rel. Mar. Admin. v. Cont’l Ill. Nat.’l Bank
& Trust Co. of Chi., 889 F.2d 1248, 1255 (2d Cir. 1989).
The court also finds that allowing plaintiff to add
claims related to the Woodway Patents will not significantly
delay resolution of this matter.
The new claims all arise from
the same facts as the original claims contained in plaintiffs’
Plaintiffs’ new claims will not change the
nature of the case because they are intertwined with plaintiffs’
original claims regarding inventorship and development of a
Finally, the court has a substantial interest in
adjudicating this entire dispute in one action.
If a separate
action were brought for the new claims, as Woodway suggests
(Def. Opp. at 11), it would require the parties and the court to
duplicate their efforts.
The parties and the court should not
be put to the burden of litigating two separate cases with
identical or overlapping factual predicates.
For the reasons stated above, plaintiffs’ motion for
leave to file a third amended complaint is granted.
shall file their Third Amended Complaint by October 23, 2015.
The deadline to submit summary judgment motions is hereby
adjourned without date.
After defendant has responded to the
Third Amended Complaint, the parties are referred to Magistrate
Judge Tomlinson to schedule a conference and set new deadlines
If the parties wish to schedule briefing for
summary judgment motions after completion of discovery, they may
request a pre-motion conference as provided in this court’s
October 19, 2015
Brooklyn, New York
Kiyo A. Matsumoto
United States District Judge
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