United States District Court, N.D. California
ORDER RE MOTION FOR LEAVE TO FILE AMENDED
COUNTERCLAIM AND MOTION TO STAY, SEVER, OR BIFURCATE
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE
dismissal of its antitrust counterclaim, one defendant in
this patent infringement action moves for leave to file an
amended counterclaim. Plaintiff opposes and, in the event
leave to amend is granted, revives its motion to stay, sever,
or bifurcate the amended counterclaim. Defendant's motion
for leave to amend is Granted in part and Denied in part.
Plaintiff's motion to stay, sever, or bifurcate is
Granted in part and Denied in part.
Maquet Cardiovascular LLC and defendant Saphena Medical, Inc.
(founded by former Maquet employee and defendant Dr. Albert
Chin), both sell medical devices designed for endoscopic
vessel harvesting (EVH) procedures. Maquet brought this
action against Saphena and Dr. Chin for patent infringement,
breach of contract, false advertising in violation of the
Lanham Act, and correction of inventorship. Saphena and Dr.
Chin both answered.
alone asserted counterclaims against Maquet for (1)
below-cost sales in violation of Section 17043, (2) tortious
interference with prospective business relationships, (3)
unfair competition in violation of Section 17200, (4) loss
leaders in violation of Section 17044, (5) false advertising
in violation of the Lanham Act, (6) attempted monopolization
in violation of Section 2 of the Sherman Act, and (7) unfair
competition in violation of Massachusetts law.
order dated May 26 (Dkt. No. 82) granted Maquet's motion
to dismiss Saphena's counterclaim under Federal Rule of
Civil Procedure 12(b)(6) and held in abeyance Maquet's
concurrent motion to stay, sever, or bifurcate the
counterclaim (see Dkt. No. 63). Pursuant to the May
26 order, Saphena now moves for leave to file an amended
counterclaim (Dkt. No. 86). Its proposed amendment would drop
two claims for relief under the Lanham Act and Massachusetts
law, add two claims for declaratory judgment of patent
non-infringement, and add one claim for declaratory judgment
of patent invalidity. Maquet opposes Saphena's motion
and, in case leave to amend is granted, revives its own
motion to stay, sever, or bifurcate the counterclaim (Dkt.
No. 100). This order follows full briefing and oral argument.
Saphena's Motion for Leave to File an Amended
15(a)(2) advises, “The court should freely give leave
when justice so requires.” In ruling on motions for
leave to amend, courts consider (1) bad faith, (2) undue
delay, (3) prejudice to the opposing party, (4) futility of
amendment, and (5) whether the movant has previously amended
their pleading. Nunes v. Ashcroft, 375 F.3d 805, 808
(9th Cir. 2003). Prejudice to the opposing party is the most
important factor. Eminence Capital, LLC v. Aspeon,
Inc., 316 F.3d 1048, 1052 (9th Cir. 2003). Absent
prejudice or a strong showing of another factor, there is a
presumption under Rule 15(a) in favor of granting leave to
amend. Ibid. Nevertheless, futility alone can
justify denying leave to amend. Nunes, 375 F.3d at
808; see also Ebner v. Fresh, Inc., 838 F.3d 958,
968 (9th Cir. 2016).
contends leave to amend should be denied here because (1)
Saphena's proposed amendment would be futile as to most
of its claims, and (2) Saphena proposed its amendment in bad
faith. This order addresses each contention in turn.
Whether Saphena's Proposed Amendment Would Be
argument about futility is directed only to Saphena's
returning counterclaims for violations of California law,
tortious interference, and violation of the Sherman Act. For
purposes of assessing futility on this motion, the legal
standard is the same as it would be on a motion to dismiss,
i.e., the counterclaim must plead “enough
facts to state a claim to relief that is plausible on its
face.” See Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007). A claim has facial plausibility when
the party asserting it pleads factual content that allows the
court to draw the reasonable inference that the other side is
liable for the misconduct alleged. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). This analysis generally
considers only allegations in the pleadings, attached
exhibits, and matters properly subject to judicial notice.
Factual allegations in the counterclaim are accepted as true
and construed in the light most favorable to Saphena. See
Manzarek v. St. Paul Fire & Marine Ins. Co., 519
F.3d 1025, 1030-31 (9th Cir. 2008).
17043 makes it “unlawful for any person engaged in
business within this State to sell any article or product at
less than the cost thereof to such vendor, or to give away
any article or product, for the purpose of injuring
competitors or destroying competition.” Saphena's
proposed amended counterclaim alleges that Maquet, as part of
its campaign to “protect” its own customers and
“attack” Saphena, has sold or given away products
at a loss to itself - including through discounts and
giveaways outside of bundling arrangements. Saphena further
alleges that Maquet specifically targets these discounts and
giveaways, which involve products directly competing with
Saphena's product, to customers that are considering a
purchase from Saphena (see Dkt. No. 86-2
¶¶ 71-78, 105-10).
than discuss the legal sufficiency of these factual
allegations as pled, Maquet attacks as “wild
mischaracteriz[ation]” Saphena's reliance on
certain documents - for example, a sales data ...