United States District Court, S.D. California
ORDER GRANTING MOTION FOR LEAVE TO FILE AN AMENDED
COMPLAINT [DKT. NO. 120]
Gonzalo P. Curiel, United States District Judge.
Unisone Strategic IP, Inc. (“Plaintiff” or
“Unisone”) has moved for leave to file a second
amended complaint against Defendant Life Technologies
Corporation (“Life Tech”). ECF No. 120. On August
2, 2019, Life Tech filed a response in opposition to the
motion. ECF No. 121. Subsequently, Unisone filed its reply in
support of the motion for leave on August 9, 2019. ECF No.
122. Upon review of the moving papers, the Court finds that
good cause exists to permit the filing of a Second Amended
25, 2013, Plaintiff filed its initial Complaint asserting
infringement of U.S. Pat. No. 6, 996, 538 (“the
‘538 patent”) against Defendant. ECF No. 1.
Defendant soon filed a motion to dismiss the Complaint, ECF
No. 10, which the Court granted on October 22, 2013. ECF No.
19. On November 4, 2013, TraceLink, Inc.
(“TraceLink”), a defendant in a co-pending action
before this Court, filed a request for ex parte
reexamination of the ‘538 patent. See
3:13-CV-01743-GPC-LL. Shortly afterwards, Plaintiff filed a
first amended complaint alleging infringement of the same
patent. ECF No. 21. The Court stayed this action on April 2,
2014, pending the reexamination of the patent. ECF No. 35.
reexamination certificate was subsequently issued on November
24, 2014, amending the ‘538 patent and allowing the
claims over the asserted prior art. U.S. Ex Parte
Reexamination Cert. No. U.S. 6, 996, 538 C1. Afterwards, on
December 5, 2014, Life Tech filed a petition requesting
covered business method (CBM) patent review of the ‘538
patent before the United States Patent and Trademark Office
Patent Trial and Appeal Board (“USPTO PTAB”).
CBM2015-00037. As such, on April 8, 2015, the Court stayed
the instant action until the outcome of the CBM review. ECF
December 30, 2015, Life Tech filed a second petition
requesting CBM patent review of the ‘538 patent before
the USPTO PTAB on December 30, 2015. CBM2016-00025. In total,
Life Tech sought CBM review of claims 1, 14, 19, 22-28, 32,
34-36, 52, 62, 67, 70-76, 81, 83-85, and 96. CBM2015-00037,
Paper No. 1; CBM2016-0025, Paper No. 2. None of these
challenged claims survived CBM review and were thus declared
invalid by the USPTO.
2-13, 15-18, 20, 21, 29-31, 33, 37-51, 52-61, 64-66, 68, 69,
77-80, 82, 86-95 were not challenged. Plaintiff now seeks to
bring only these claims against the Defendant in its second
15(a) of the Federal Rules of Civil Procedure states that,
after the initial period for amendments as of right,
pleadings may only be amended by leave of court, which
“[t]he court shall freely give when justice so
requires.” Fed.R.Civ.P. 15(a)(2). Courts commonly use
four factors to determine the propriety of a motion for leave
to amend: bad faith, undue delay, prejudice to the opposing
party, and futility of amendment. Ditto v. McCurdy,
510 F.3d 1070, 1078-79 (9th Cir. 2007); Loehr v. Ventura
Cnty. Cmty. Coll. Dist., 743 F.2d 1310, 1319 (9th Cir.
1984); Howey v. United States, 481 F.2d 1187, 1190
(9th Cir. 1973). “When weighing these factors . . . all
inferences should be made in favor of granting the motion to
amend.” Hofstetter v. Chase Home Fin., LLC,
751 F.Supp.2d 1116, 1122 (N.D. Cal 2010) (citing Griggs
v. Pace Am. Grp., Inc., 170 F.3d 877, 880 (9th Cir.
1999)). In accordance with the Federal Rules' liberal
pleading standards, courts typically apply the policy of free
amendment with much liberality. DCD Programs, Ltd. V.
Leighton, 833 F.2d 183, 186 (9th Cir. 1987), citing
United States v. Webb, 655 F.2d 977, 979 (9th Cir.
argues that this Court should grant its motion for leave to
file an amended complaint because such motions are granted
liberally - and because the Complaint has been amended to
assert plausible infringement claims. Defendants counter that
Plaintiff's motion should be denied on the basis of
futility. Specifically, Defendants contend that Unisone
cannot present a viable argument that its remaining claims on
the ‘538 patent are valid. Moreover, Defendants proffer
that Unisone's claims are collaterally estopped following
the ex parte reexamination of the patent. As such,
Life Tech submits that Unisone cannot present a non-frivolous
infringement position that would survive a motion to dismiss
and should not be allowed to file a second amended complaint.
The Court will address these arguments in turn.
Futility Under Rule 15
Courts can freely grant leave to amend under Rule 15, the
Court may also deny leave for futility on a discretionary
basis when a proposed amendment lacks a cognizable legal
basis. See Shermoen v. United States, 982 F.2d 1312,
1319 (9th Cir. 1992). Amendments can be considered futile
when “no set of facts can be proved under the amendment
to the pleadings that would constitute a valid and sufficient
claim or defense.” Missouri ex rel. Koster v.
Harris, 849 F.3d 646, 656 (9th Cir. 2017) (internal
quotation omitted). Examples of futile amendments include
those that are “duplicative of existing claims”
or “patently frivolous.” Murray v.
Schriro, 745 F.3d 984, 1015 (9th Cir. 2014) (alteration
of leave to amend for futility is rare since Courts typically
defer consideration on the merits until after an amended
pleading has been filed. See, e.g., Green Valley Corp. v.
Caldo Oil Co., No. 09-CV-04028-LHK, 2011 WL 1465883, at
*6 (N.D. Cal. Apr. 18, 2011) (pointing that there is a
“general preference against denying a motion for leave
to amend based on futility); Allen v. Bayshore Mall,
12-cv-02368-JST, 2013 WL 6441504, at *5 (N.D. Cal. Dec. 9,
2013) (“The merits or facts of a controversy are not
properly decided in a motion for leave to amend and should
instead be attacked by a motion to dismiss for failure to
state a claim or for summary judgment.”). Courts have
liberally construed the standard for leave to amend on the
basis that ...