Berger v. Lydon-Bricher Manufacturing Company
- Patrick Schiltz
- 0:17-cv-04326
- U.S. District Court · District of Minnesota
- 13
In Berger v. Lydon-Bricher Manufacturing, Judge Thorson granted plaintiffs leave to amend their patent complaint, subject to deadlines and possible defense fees.
The order allowed David Berger and Berger Table Pads, Inc. to amend their complaint, while potentially requiring defendants Lydon-Bricher Manufacturing Company and Sentry Table Pad Co. to address the new allegations and allowing defendants to seek specified reasonable attorney fees.
What happened
Berger v. Lydon-Bricher Manufacturing Company concerns plaintiffs’ request to add allegations involving patent claims 4 and 5 to their existing infringement case. Plaintiffs said they had filed an earlier amendment motion by the deadline, but that motion was stricken for failing to follow court rules; their later motion was filed after the deadline.
The court found that plaintiffs had the information needed to bring the additional allegations and prepare a proper claim chart when the case began. It concluded that the delay would unfairly burden defendants by requiring them to redo patent-related work and possibly revisit other positions. The court also found that plaintiffs’ and their lawyers’ conduct was unreasonable and vexatious, although not dishonest or in bad faith.
The court granted the motion, subject to conditions including a December 6, 2018 filing deadline, possible reimbursement of defendants’ reasonable attorney fees for specified work, and possible fees related to retaken depositions. Judge Becky R. Thorson also ordered that a second amended pretrial scheduling order would be issued separately.
The detailed version
- Berger v. Lydon-Bricher Manufacturing Company · No. 0:17-cv-04326
- Patrick Schiltz
- Nov. 30, 2018
Background
David Berger and Berger Table Pads, Inc. sued Lydon-Bricher Manufacturing Company and Sentry Table Pad Co. for patent infringement. The existing amended complaint asserted only claim 1 of U.S. Patent No. 6,165,577. Plaintiffs later sought permission to file a second amended complaint adding allegations concerning claims 4 and 5 and attaching a more detailed claim chart as Exhibit B.
The scheduling order set September 1, 2018, as the deadline for motions to amend the pleadings. It also required plaintiffs to provide a detailed claim chart and stated that a claim chart could be amended only with the court’s permission and a showing of good cause. Plaintiffs served their claim chart on June 29, 2018. Defendants’ responsive claim chart, served August 1, 2018, identified deficiencies including the failure to identify specific accused products, explain where each claim element appeared, and provide required information about infringement under the doctrine of equivalents.
Plaintiffs did not seek permission to amend their claim chart. Instead, they filed a motion to amend on August 31, 2018, without meeting and conferring with defendants, requesting a hearing, filing a memorandum of law, or submitting the redlined proposed complaint required by a local rule. The motion was stricken on September 4, 2018. Plaintiffs’ counsel learned of that action on September 12, 2018, and filed the motion addressed in this order on September 18, 2018. The second motion also lacked a required redlined complaint.
Analysis
The court first explained that plaintiffs’ September 18 motion was filed after the scheduling-order deadline because the earlier, deficient motion did not comply with the local rules. Plaintiffs therefore should have requested an extension under the local rule governing modifications to scheduling orders and shown good cause. They did not do so.
The court also concluded that the proposed amendment failed under the more liberal standard governing amendments to pleadings. The court found undue delay because plaintiffs’ counsel acknowledged that plaintiffs had possessed all the information needed for the proposed allegations and completed claim chart when the lawsuit began. Plaintiffs offered no explanation for omitting the allegations from the original complaint, first amended complaint, or initial claim chart.
The court found unfair prejudice to defendants because the amendment would require them to redo their responsive claim chart and potentially their prior-art statement and claim-construction positions. The court also found that the amendment could affect discovery and delay the pretrial schedule. Although the court did not find bad faith, it found that plaintiffs’ and their counsel’s conduct was unreasonable and vexatious under 28 U.S.C. § 1927, a statute that can require an attorney to pay excess costs and attorney fees caused by unreasonable and vexatious litigation conduct.
The court nevertheless did not completely bar the amendment. It reasoned that denying leave could potentially expose defendants to another lawsuit and that the unfair prejudice could be addressed through conditions, including possible attorney fees.
Order
The court GRANTED Plaintiffs’ Verified Second Motion for Leave to File Second Amended Complaint, subject to these conditions:
- Plaintiffs had to file the Second Amended Complaint by December 6,
- If they did, defendants’ answer would be due January 18,
- - Plaintiffs’ Exhibit B would be accepted as their amended claim chart. - Defendants could submit an affidavit by March 15, 2019, supporting reasonable attorney fees incurred in updating their patent exchanges. The court stated that the submission would be carefully reviewed for reasonableness. - If depositions needed to be retaken because of the amendment, defendants had to notify the court by December 21,
- The court reserved the right to award reasonable attorney fees and expenses related to those depositions if defendants later requested them and made the required showing.
The court also ordered that a second amended pretrial scheduling order would be issued separately.
Read the full 13-page opinion on CourtListener, the free public archive maintained by the Free Law Project.