United States District Court, D. Kansas
MEMORANDUM AND ORDER
MURGUIA UNITED STATES DISTRICT JUDGE
case is before the court on a multi-part motion filed by
plaintiff (Doc. 132). Plaintiff asks the court to (1) grant
leave to amend the scheduling order to permit pleading
amendments out of time; (2) allow plaintiff to voluntarily
dismiss the ‘292 patent infringement claim with
prejudice; and (3) dismiss defendant's ‘292 patent
counterclaim for lack of jurisdiction. Defendant does not
oppose plaintiff's request for leave to amend to
voluntarily dismiss the ‘292 patent infringement claim.
But defendant does oppose dismissal of its counterclaim
relating to the ‘292 patent. For the following reasons,
the court grants plaintiff's motion.
amending the scheduling order to delete the ‘292 patent
claim. When, as here, the deadline to amend pleadings has
passed, a party seeking leave to amend must (1) demonstrate
good cause to modify the scheduling order under Fed.R.Civ.P.
16(b)(4) and (2) satisfy the standard for amending pleadings
under Rule 15(a). Gorsuch, Ltd., B.C. v. Wells Fargo Nat.
Bank Ass'n, 771 F.3d 1230, 1240 (10th Cir. 2014). To
show good cause, a party must “show that the deadline
could not have been met even if it had acted with ‘due
diligence.'” Cent. States Underwater
Contracting, Inc. v Price, No. 12-2556-JWL-DJW, 2013 WL
12250909, at *1 (D. Kan. June 20, 2013). To show due
diligence, a party “must provide an adequate
explanation for any delay.” Minter v. Prime Equip.
Co., 451 F.3d 1196, 1205 n.4 (10th Cir. 2006).
under Rule 15(a)(2), on the other hand, is freely given
“when justice so requires.” The court ordinarily
will grant leave except when it “finds undue delay,
undue prejudice to the opposing party, bad faith or dilatory
motive, failure to cure deficiencies by amendments previously
allowed, or futility of amendment.” Bushnell Inc.
v. Brunton Co., No. 09-2009-KHV, 2009 WL 2914209, at *1
(D. Kan. Sept. 9, 2009) (citation omitted).
has met both of the above standards. In any event, defendant
now represents that it does not oppose amendment and deletion
of plaintiff's ‘292 patent claim. The court finds
that both amendment and dismissal are appropriate, and grants
this portion of plaintiff's motion.
opposes plaintiff's final request-that the court dismiss
defendant's counterclaim for declaratory judgment of
unenforceability of the ‘292 patent. On this issue, the
court agrees with plaintiff. Plaintiff has submitted a
covenant not to sue for patent infringement. Once a party
dismisses infringement allegations, “a covenant not to
sue for patent infringement divests the trial court of
subject matter jurisdiction over claims that the patent is
invalid, because the covenant eliminates any case or
controversy between the parties.” Dow Jones &
Co., Inc. v. Ablaise Ltd., 606 F.3d 1338, 1346 (Fed.
Cir. 2010). The content of the covenant governs whether the
court loses jurisdiction over a counterclaim in this
situation. Revolution Eyewear, Inc. v. Aspex Eyewear,
Inc., 556 F.3d 1294, 1297 (Fed. Cir. 2009). A case or
controversy no longer exists if a covenant is comprehensive,
covering “current products whether they were produced
and sold before or after the covenant.” Id. at
1300. The accused infringer may show that a case or
controversy continues to exist by showing “that it
engages in or has sufficiently concrete plans to engage in
activities not covered by the covenant.” Already,
LLC v. Nike, Inc., 568 U.S. 85, 94 (2013). But a mere
“fear of litigation over future products” is
insufficient to demonstrate a continuing case or controversy.
Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d
852, 855 (Fed. Cir. 1999).
covenant submitted by plaintiff is comprehensive. It covers
all potential infringement cases relating to the ‘292
patent. It relates to defendant's products currently
marketed, including but not limited to the currently-accused
products. A newer version of the covenant also includes
pre-covenant products. While the covenant does not cover
future products, defendant has not shown that it has concrete
plans to engage in activities not covered by the covenant.
And although the covenant does not address “colorable
imitations, ” this consideration derives from trademark
law-not patent law. See Already, LLC, 568 U.S. at 92
(referring to covenant not to sue on trademark designs).
argues that the court retains jurisdiction over its
counterclaim because it has jurisdiction to consider a claim
for attorney fees under 35 U.S.C. § 285. Defendant is
partially correct; the court does retain jurisdiction for
consideration of a motion for § 285 attorney fees. And
in considering such a request, the court may consider whether
plaintiff engaged in inequitable conduct. But these are
distinct inquiries. Monsanto Co. v. Bayer Bioscience
N.V., 514 F.3d 1229, 1242 (Fed. Cir. 2008) (finding
dismissal and a covenant not to sue “divest[s] the
court of jurisdiction over a declaratory judgment action
regarding these patents, ” but concluding that the
court retained independent jurisdiction over a § 285
request for attorney fees); HR Tech., Inc. v. Imura
Int'l U.S.A., Inc., No. 08-2220-JWL, 2011 WL
2174919, at *3 (D. Kan. June 3, 2011)
(“Monsanto does not suggest, however, that the
fee claim confers or creates jurisdiction over the
declaratory judgment claims. To the contrary, in
Monsanto the court ruled that the district court
retained jurisdiction over the fee claim even if the covenant
divested that court of jurisdiction over the declaratory
judgment claims.”); Gordon-Darby Sys., Inc. v.
Applus Techs., Inc., No. 10 C 1863, 2010 WL 5419068, at
*2 (N.D. Ill.Dec. 23, 2010) (analyzing Monsanto and
finding “no basis for retaining jurisdiction over a
declaratory judgment claim for unenforceability after a
covenant not to sue has been filed and agreed upon by the
parties, ” but allowing a motion for § 285
makes one additional argument: that the ‘292 patent is
too interrelated with the ‘452 patent, and if the court
dismisses defendant's ‘292 counterclaim, it could
potentially impact rulings on the ‘452 patent. This is
defendant's “infectious unenforceability”
argument. Again, the court is unpersuaded by defendant's
argument. It is true that “inequitable conduct with
respect to one or more patents in a family can infect related
applications . . . .” Nilssen v. Osram Sylvania,
Inc., 504 F.3d 1223, 1230 (Fed. Cir. 2007). And as
defendant points out, there are many similarities between the
‘292 patent and the ‘452 patent. But by
dismissing the counterclaim without prejudice, the court is
making no finding on inequitable conduct or unenforceability
with respect to the ‘292 patent. There is no danger of
impacting any ruling on the ‘452 patent.
Interrelatedness is not a valid basis for maintaining
jurisdiction over the counterclaim in this instance.
IS THEREFORE ORDERED that plaintiff's motion for
leave to amend, motion to dismiss the ‘292 patent with
prejudice, and motion to dismiss the ...