Name of Assigned Judge Amy J. St. Eve Sitting Judge if Other or Magistrate Judge than Assigned Judge
Defendant's motion for leave to amend its answer  is denied.
O[ For further details see text below.] Notices mailed by Judicial staff.
Defendant, Lear Corporation, has filed a motion ("Motion") seeking leave to amend its Answer to add additional grounds for its inequitable-conduct counterclaim against Plaintiffs, The Chamberlain Group, Inc. ("Chamberlain") and Johnson Controls Interiors LLC. For the following reasons, the Court denies the Motion.
Defendant "may amend its pleading only with the opposing party's written consent or the court's leave." Fed. R. Civ. P. 15(a)(2); see also Sides v. City of Champaign, 496 F.3d 820, 825 (7th Cir. 2007) (noting that courts should generally "use their discretion under Rule 15(a) to liberally grant permission to amend pleadings"). "Although leave to amend should be freely given, Fed. R. Civ. P. 15(a), that does not mean it must always be given." Hukic v. Aurora Loan Servs., 588 F.3d 420, 432 (7th Cir. 2009); see also Crest Hill Land Dev., LLC v. City of Joliet, 396 F.3d 801, 804 (7th Cir. 2005) (noting that despite the liberal nature of Rule 15(a), "leave to amend is not automatically granted"); Thompson v. Ill. Dep't of Prof'l Regulation, 300 F.3d 750, 759 (7th Cir. 2002). Indeed, district courts "'have broad discretion to deny leave to amend where there is undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies, undue prejudice to the [non-moving party], or where the amendment would be futile.'" Hukic, 588 F.3d at 432 (quoting Arreola v. Godinez, 546 F.3d 788, 796 (7th Cir. 2008)). "Delay on its own is usually not reason enough for a court to deny a motion to amend." Soltys v. Costello, 520 F.3d 737, 743 (7th Cir. 2008). The longer the delay, however, "'the greater the presumption against granting leave to amend.'" Id. (quoting King v. Cooke, 26 F.3d 720, 723 (7th Cir. 1994)). Ultimately, "'[t]he decision to grant or deny a motion to file an amended pleading is a matter purely within the sound discretion of the district court.'" Id. (quoting Brunt v. Serv. Employees Int'l Union, 284 F.3d 715, 720 (7th Cir. 2002)); see also Larkin v. Galloway, 266 F.3d 718, 721 (7th Cir. 2001).
Plaintiff Chamberlain filed a Complaint on June 13, 2005, alleging that Lear was infringing U.S. Patent Nos. 6,154,544 ("'544 Patent") and 6,810,123 ("'123 Patent"). (R. 1, Compl.) Lear answered the Complaint on August 1, 2005, asserting, among other things, an invalidity affirmative defense and counterclaim. (R. 28, Answer at 7, 10-11.) On October 5, 2005, Plaintiffs filed an Amended Complaint, again alleging that Lear was infringing the '544 and '123 Patents. (R. 43, Am. Compl.) Defendant answered the Amended Complaint on October 24, 2005, again asserting an affirmative defense and counterclaim for invalidity. (R. 52, Answer to Am. Compl. at 5, 7-8.) On August 19, 2008, Plaintiffs filed their Second Amended Complaint, again alleging that Lear was infringing the '544 and '123 Patents and adding an allegation that Lear was infringing U.S. Patent No. 7,412,056 ("'056 Patent"). (R. 270, 2d Am. Compl.)
Defendant answered the Second Amended Counterclaim on September 8, 2008, raising affirmative defenses that the '544, '123, and '056 Patents were all unenforceable due to inequitable conduct. (R. 283, Affirmative Defenses 3-5.) Defendant also asserted a counterclaim alleging that the '544, '123, and '056 Patents were unenforceable because the inventors (Bradford Farris and James Fitzgibbon), the assignee (The Chamberlain Group, Inc.), the patent prosecution firm (Fitch, Even, Tabin & Flannery), and patent attorney Kenneth H. Samples . . . prosecuting the application resulting in the issuance of the '544, '123, and '056 patents intentionally did not disclose material prior art . . . which they knew was material to the examiners' determination of the patentability of the claims of the '544, '123, and '056 patents, for the purpose of deceiving the Patent Office into issuing the patents.
(R. 283, Answer to 2d Am. Compl. at ¶ 26.) This alleged inequitable conduct was based in part on "the non-disclosure of the Miyake reference in the proceedings of the '544, '123 and '056 patents." (Id. at ¶ 38.)
Defendant deposed Mr. Fitzgibbon on May 25, 2010, Mr. Farris on May 27, 2010, and Mr. Samples on June 15, 2010. (R. 567, Mem. in Supp. of Mot. at 5.) During Mr. Fitzgibbon's deposition, he testified among other things that (1) contrary to a 2003 declaration, he did not know or conceive of encrypting a fixed code in response to the rolling and fixed code until after another reference's ("Issa reference") date; and (2) Chamberlain had been involved in three lawsuits -- two with Skylink Technologies, Inc., one with MicroChip Technology Inc., all involving the patents-in-suit -- none of which Chamberlain brought to the examiners' attention. (Id. at 7-9.) During his deposition, Mr. Farris testified in relevant part that, contrary to a 2003 declaration, he did not know or conceive of encrypting a fixed code in response to the rolling and fixed code until after the Issa date. (Id. at 7.) Mr. Samples' deposition testimony included that he knew of a Miyake and Nakahara references during the prosecution of all three patents-in-suit, but he did not disclose them because he believed it was cumulative. (Id. at 5-6.)
During a motion hearing which all parties attended on June 14, 2010, the Court again extended the discovery deadline from June 18, 2010, to June 30, 2010, at the parties' joint request. (R. 510, 6/14/10 Minute Order.) The parties also attended status hearings before the assigned magistrate judge on June 22, 2010, and July 1, 2010. (R. 536, 6/22/10 Minute Order; R. 549, 7/1/10 Minute Order.) Defendant filed its Motion on July 9, 2010, after the close of ...