Portkey Technologies Pte Ltd v. Venkateswaran

Background

Portkey Technologies Pte Ltd and Vignesh Sundaresan brought trademark-infringement and related Lanham Act and state-law claims against Anand Venkateswaran. The court had previously issued an opinion granting in part and denying in part Venkateswaran’s motion to dismiss the First Amended Complaint. This order addressed three later motions: the plaintiffs’ motion for reconsideration of that earlier opinion, the plaintiffs’ motion for leave to file a Second Amended Complaint, and defense counsel’s motion to withdraw.

Motion for Reconsideration

The court denied the plaintiffs’ motion for reconsideration. It concluded that the earlier opinion contained neither clear error nor an omitted important fact or legal authority. A motion for reconsideration is an extraordinary request generally requiring an intervening change in controlling law, new evidence, or a need to correct clear error or prevent serious unfairness. The court found that none of those grounds was present.

Leave to Amend

The court granted the plaintiffs’ motion for leave to file a Second Amended Complaint. The proposed amendment would add a claim for infringement of a trademark that had become registered after the First Amended Complaint was filed. The defendant argued that including counts previously dismissed in the earlier opinion showed bad faith. The plaintiffs explained that they included those counts because their reconsideration motion was pending and to preserve their ability to seek appellate review. The court found that this did not establish bad faith.

The court also found that the amendment was not futile because the plaintiffs indicated that factual support existed for alleging that the defendant’s use occurred after the trademark’s registration date. The court found no apparent undue delay, noting that the new claim was largely coextensive with existing claims and was unlikely to substantially expand discovery. The plaintiffs were directed to file the Second Amended Complaint separately by October 11, 2024.

Withdrawal of Defense Counsel

The court granted the motion by Robert D. Carroll, Timothy Keegan, and Goodwin Procter LLP to withdraw as counsel for Venkateswaran. Applying Local Civil Rule 1.4, the court considered both the reasons for withdrawal and the effect on the schedule. Venkateswaran represented that he had been unable to meet his legal obligations for several months and would not be able to make future payments. The court found that this extended nonpayment of substantial fees justified withdrawal.

The court also found that withdrawal would not seriously disrupt the case because discovery remained in its early stages: initial document production had not begun and no depositions had been noticed. The withdrawing lawyers were ordered to serve the order on Venkateswaran within one week.

Result and Effect

Judge J. Paul Oetken denied the motion for reconsideration, granted the motion for leave to file a Second Amended Complaint, and granted the motion to withdraw as counsel. All deadlines were extended by 45 days. Within that period, Venkateswaran must either have new counsel appear or file a letter stating that he intends to proceed without counsel and providing his address. The order did not decide the underlying trademark claims.