Late request to add marking and inequitable conduct defenses is granted in part
Leader Technologies, Inc. v. Facebook, Inc., Civil Action No. 08-862a-LPS, June 24, 2010.
Stark, M. J. Defendant’s Motion For Leave To Amend Its Responsive Pleading To Add A Defense And Counterclaim Of Inequitable Conduct And To Amend Its False Marking Counterclaim is granted in part and denied in part.
The patent-in-suit relates to the management and storage of electronic information. Defendant seeks to amend its existing false marking counterclaim, and to add an affirmative defense of inequitable conduct and a counterclaim seeking a declaratory judgment on unenforceability. The proposed amendments to the false marking counterclaim allege false marking on additional products. Defendant was in possession of numerous documents containing examples of how plaintiff marked the newly accused products before it previously moved to add the false marking claim. Defendant provides no explanation for why, in light of this information, it could not reasonably have complied with the Scheduling Order. Therefore, the motion to amend is denied as to amendment of the false marking claim. However defendant has demonstrated good cause to amend its answer to add an inequitable conduct defense and declaratory judgment counterclaim for unenforceability. Defendant was unable to discover key evidence for an inequitable conduct claim until the patent's inventors were deposed. The proposed amendments are not futile nor will plaintiff be prejudiced by them. Therefore, defendant’s amendment adding an affirmative defense of inequitable conduct and declaratory judgment counterclaim for unenforceability is granted.
