United States District Court, S.D. California
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANT'S MOTION FOR LEAVE TO AMEND [DOC. NO.
MARILYN L. HUFF, DISTRICT JUDGE
17, 2019, Defendant Blue Box Opco LLC doing business as
Infantino filed a motion for leave to amend its answer and
counterclaim. (Doc. No. 50.) On May 20, 2019, the Court took
the motion under submission. (Doc. No. 51.) On June 5, 2019,
Plaintiff Boba Inc. filed a response in opposition to
Infantino's motion. (Doc. No. 59.) On June 12, 2019,
Infantino filed a reply. (Doc. No. 60.) For the reasons
below, the Court grants in part and denies in part
Infantino's motion for leave to amend.
following facts are taken from the allegations set forth in
the parties' pleadings. Boba and Infantino are both
manufacturers and distributors of baby carriers. (Doc. No. 8,
Compl. ¶¶ 1, 4.)
March 25, 2015, in response to assertions of patent
infringement, Infantino, the Defendant in this action, filed
a declaratory judgment action against non-party Caperon
Designs, Inc. d/b/a BECO Baby Carrier, Inc.
(“BECO”) in the Eastern District of Missouri,
seeking to invalidate U.S. Patent No. 7, 766,
(Doc. No. 24-3.) Shortly thereafter, Infantino and BECO
resolved their dispute and entered into a Confidential
Settlement Agreement, Patent License and Covenant Not to Sue
(“Licensing Agreement”). (Doc. No. 8 ¶ 6,
Ex. B.) On August 20, 2015, Infantino voluntarily dismissed
its claims in the Missouri action without prejudice. (Doc.
March 30, 2016, Boba acquired BECO. (Doc. No. 8 ¶ 3.)
Boba alleges that as part of that acquisition, it obtained
all right, title and interest in the '199 patent,
including the rights contained in the Licensing Agreement.
(Id. ¶ 3, 20.)
February 12, 2019, Boba filed a complaint against Infantino,
alleging a claim for breach of contract. (Doc. No. 8, Compl.)
Specifically, Boba alleges that under the terms of the
Licensing Agreement, Boba is owed royalties from Infantino
for the sales of Infantino's Flip 4-In-1TM
carrier. (Id. ¶¶ 12, 24-30.) Boba alleges
that Infantino has breached the Licensing Agreement by
refusing to pay those royalties. (Id. ¶ 31.)
March 14, 2019, Infantino filed an answer to Boba's
complaint and a counterclaim for a declaratory judgment that
the '199 patent is invalid. (Doc. No. 17.) On April 12,
2019, the Court issued a scheduling order in the action.
(Doc. No. 30.) On May 15, 2019, the Court denied Boba's
motion to dismiss Infantino's invalidity counterclaim and
to strike Infantino's invalidity affirmative defense.
(Doc. No. 49.) By the present motion, Infantino moves for
leave to amend its answer and counterclaims to allege four
new counterclaims for: (1) a declaratory judgment that the
Flip 4-in-1TM baby carrier is not a licensed
product under the settlement agreement; (2) breach of
contract; (3) fraud; and (4) unfair competition. (Doc. No.
50-1 at 1; see Doc. No. 50-2, Ex. A.)
Rule of Civil Procedure 15(a) allows a party leave to amend
its pleading once as a matter of right prior to service of a
responsive pleading. Thereafter, “a party may amend
that party's pleading only by leave of the court or by
written consent of the adverse party and leave shall be
freely given when justice so requires.” Fed.R.Civ.P.
15(a). The Ninth Circuit has instructed that this policy is
“‘to be applied with extreme
liberality.'” Owens v. Kaiser Foundation Health
Plan, Inc., 244 F.3d 708, 712 (9th Cir. 2001).
“Five factors are taken into account to assess the
propriety of a motion for leave to amend: bad faith, undue
delay, prejudice to the opposing party, futility of
amendment, and whether the plaintiff has previously amended
the complaint.” Johnson v. Buckley, 356 F.3d
1067, 1077 (9th Cir. 2004) (citing Nunes v.
Ashcroft, 348 F.3d 815, 818 (9th Cir. 2003)). The
decision whether to grant leave to amend “is entrusted
to the sound discretion of the trial court.”
Pisciotta v. Teledyne Indus., 91 F.3d 1326, 1331
(9th Cir. 1996).
present motion, Infantino moves for leave to amend its answer
and counterclaims to allege four new counterclaims for: (1) a
declaratory judgment that the Flip 4-in-1TM baby
carrier is not a licensed product under the settlement
agreement; (2) breach of contract; (3) fraud; and (4) unfair
competition. (Doc. No. 50-1 at 1; see Doc. No. 50-2,
Ex. A.) In response, Boba argues that the Court should deny
Infantino's request for leave to ...