Name of Assigned Judge D. Leinenweber Sitting Judge if Other or Magistrate Judge Harry than Assigned Judge
For the reasons explained herein, Defendant/Counter-Claimant Multisorb Technologies Inc.'s Motion to Amend its Counterclaim  is granted, and Pactiv's Motion for Partial Judgment on the Pleadings and To Dismiss  is denied. The oral ruling date of Nov. 30, 2011, is stricken.
O[ For further details see text below.] Notices mailed by Judicial staff.
Before the Court is Defendant/Counter-Claimant Multisorb Technologies Inc.'s ("Multisorb") Motion to Amend its Counterclaim . For the reasons explained herein, the motion is granted. As such, Pactiv's Motion for Partial Judgment on the Pleadings and To Dismiss , which had been held in abeyance pending ruling on this motion, is denied.
Pactiv Corp. ("Pactiv") is suing Multisorb for infringing its patents on a packaging system that extends the shelf life of meat by reducing its exposure to oxygen. Although this Court has stayed claims relating to the Pactiv patents, Pactiv's breach of contract claim and certain counterclaims by Multisorb remain pending. Among them is Multisorb's Eleventh Counterclaim, in which it alleges that Pactiv's oxygen absorber product is marked with the '250 patent, but that patent does not cover the absorber.
Congress amended the false marking statute, 35 U.S.C. § 292, on Sept. 16, 2011, as part of the Leahy-Smith America Invents Act. The amendment eliminated qui tam actions, but allows those who have suffered a competitive injury as a result of false marking to sue for damages. Leahy-Smith America Invents Act, Pub. L. No. 112--29 § 16(b)(1),(2)(b), 125 Stat. 284, 329 (2011).
As it stands, Multisorb's false marking counterclaim does not allege competitive injury. Multisorb wishes to amend its counterclaim to make this allegation, while Pactiv contends that Multisorb should have been aware of the impending change in the law and amended this counterclaim sooner. Pactiv maintains that it will be prejudiced if an amendment is allowed at this stage of the case because the deadline to amend claims passed more than eight months ago, on Jan. 11, 2011, and because it already has taken the depositions of Multisorb's president and former president.
When the Court's deadline to amend pleadings has passed, a party moving to amend must show good cause. Fed. R. Civ. P. 16(b)(4). This good cause standard refers to the diligence of the party seeking leave to amend. Trustmark Ins. Co. v. Gen. & Cologne Life Re of Am., 424 F.3d 542, 553 (7th Cir. 2005). If the moving party can show good cause to amend, the Court then applies Fed R. Civ. P. 15's liberal standard for allowing amendments. Shadeland Station Apartments I, LLC v. Realsource Brokerage Servs., No. 09 CV 629, 2011 WL 1769012, *1 (S.D. Ind. May 5, 2011). Specifically, Fed. R. Civ. P. 15(a)(2) provides that leave to amend should be freely given "when justice so requires."
The Seventh Circuit has held that "as a general matter, Rule 15 ordinarily requires that leave to amend be granted at least once when there is a potentially curable problem with the complaint or other pleading." Bausch v. Stryker Corp., 630 F.3d 546, 562 (7th Cir. 2010). However, the Court may deny leave to amend when: (1) it would be futile; (2) there has been undue delay or bad faith by the moving party; (3) the ...