1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 IMPRIMISRX, LLC, Case No. 21-cv-01305-BAS-DDL 11 Plaintiff, ORDER GRANTING PLAINTIFF’S 12 v. MOTION FOR LEAVE TO FILE 13 SECOND AMENDED COMPLAINT (ECF No. 67) 14 OSRX, INC.; OCULAR SCIENCE, INC.,
15 Defendants. 16
18 Before the Court is Plaintiff’s motion for leave to file a second amended complaint. 19 (Mot., ECF No. 67.) Defendants oppose (Opp’n, ECF No. 70), and Plaintiff replies (Reply, 20 ECF No. 72). Having considered the parties’ filings, the Court GRANTS Plaintiff’s motion 21 for leave to file a second amended complaint and finds good cause to amend the scheduling 22 order. 23 I. BACKGROUND 24 On July 20, 2021, Plaintiff commenced this action and filed a Complaint alleging 25 false advertising, trademark infringement, false designation of origin, common law unfair 26 competition, copyright infringement, and violations of California’s Unfair Competition 27 Law. (ECF No. 1.) Defendants answered on October 22, 2021 and counterclaimed against 28 Plaintiff. (ECF No. 5.) On March 3, 2022, Magistrate Judge Barbara Lynn Major issued a 1 scheduling order. (ECF No. 21.) The scheduling order set a May 1, 2022 deadline for 2 motions to amend the pleadings, and an October 3, 2022 deadline for the parties to 3 complete fact discovery. (Id.) On April 29, 2022, the parties submitted a joint motion for 4 leave to file a first amended complaint (ECF No. 27), and Plaintiff filed the first amended 5 complaint on the same day (ECF No. 28). 6 On May 17, 2022, after the deadline for amending the pleadings had passed, 7 Defendants produced over 20,000 pages of documents. (Reply at 6.) In those documents, 8 Plaintiff allegedly discovered Defendant’s infringing use of the Pred-Moxi® and Dex- 9 Moxi® marks. (Id.) Plaintiff represents that in early August 2022, it decided to pursue new 10 claims related to these marks. (Mot. at 4.) On August 10, 2022, Plaintiff emailed 11 Defendants requesting a joint motion to allow Plaintiff to file a second amended complaint. 12 (Id.) Defendant declined, and Plaintiff filed the present motion approximately a month 13 later. (Id.) 14 While the present motion was pending, the parties filed a joint motion to amend the 15 scheduling order. (ECF No. 80.) The current fact discovery deadline is December 2, 2022. 16 (ECF No. 81.) 17 II. LEGAL STANDARD 18 Rule 16(b) and Rule 15(a) govern consideration of the present motion for leave to 19 amend. When a motion for leave to amend is filed after entry of a Rule 16 scheduling order, 20 the motion “is governed first by Rule 16(b), and only secondarily by Rule 15(a).” Jackson 21 v. Laureate, Inc., 186 F.R.D. 605, 607 (E.D. Cal. 1999) (citing Johnson v. Mammoth 22 Recreations, Inc., 975 F.2d 604, 607–08 (9th Cir. 1992)). Pursuant to Rule 16, “[a] 23 schedule may be modified only for good cause and with the judge’s consent.” Fed. R. Civ. 24 P. 16(b)(4). 25 If Rule 16(b) is satisfied, then the court considers the propriety of amendment 26 pursuant to Rule 15(a). “[A] party may amend its pleading only with the opposing party’s 27 written consent or the court’s leave. The court should freely give leave when justice so 28 requires.” Fed. R. Civ. P. 15(a)(2). “Rule 15(a) is very liberal[.]” AmerisourceBergen 1 Corp. v. Dialysist West, Inc., 465 F.3d 946, 951 (9th Cir. 2006). “This liberality . . . is not 2 dependent on whether the amendment will add causes of action or parties.” DCD 3 Programs, Ltd. v. Leighton, 833 F.2d 183, 186 (9th Cir. 1987). 4 III. ANALYSIS 5 A. Rule 16(b) 6 Good cause under Rule 16(b)(4) means that a pretrial deadline “cannot reasonably 7 be met despite the diligence of the party seeking the extension.” Zivkovic v. S. Cal. Edison 8 Co., 302 F.3d 1080, 1087 (9th Cir. 2002) (internal quotations and citations omitted). A 9 party may show good cause when the amendment is based on new and pertinent 10 information that came to light after the deadline to amend. See Lyon v. U.S. Immigr. & 11 Customs Enf’t, 308 F.R.D. 203, 216 (N.D. Cal 2015); Burns ex rel. Office of Pub. Guardian 12 v. Hale & Dorr, LLP, 242 F.R.D. 170, 174 (D. Mass. 2007) (finding good cause exists 13 when facts came to light as a result of discovery). Ultimately, “[t]he decision to modify a 14 scheduling order is within the broad discretion of the district court.” Turner v. Anand, No. 15 14-CV-01147-BAS PCL, 2015 WL 4474671, at *4 (S.D. Cal. July 21, 2015). 16 Diligence is a “case-specific” inquiry that turns primarily on the length of time 17 between the ground necessitating amendment and the movant’s request to amend. See San 18 Diego Ass’n of Realtors, Inc. v. Sandicor, Inc., No. 16cv96-MMA (KSC), 2017 WL 19 6344816, at *5 (S.D. Cal. Dec. 12, 2017). “A party fails to show good cause when the 20 proposed amendment rests on information that the party knew, or should have known, in 21 advance of the deadline.” Scott v. Chipotle Mexican Grill, Inc., 300 F.R.D. 193, 194 22 (S.D.N.Y. 2014) (internal quotations and citations omitted). 23 Here, Defendant produced more than 20,000 pages of documents on May 17, 2022, 24 after the deadline to amend the pleadings. (ECF No. 72-1 ¶ 2.) Plaintiff reviewed the 25 documents and identified the additional causes of action by early August 2022. (ECF No. 26 67-4 ¶ 4.) Given the volume of discovery documents, it is reasonable that Plaintiff would 27 need two and a half months to review the production. Plaintiff then moved immediately to 28 meet and confer with Defendants upon deciding to pursue the additional infringement 1 claims. (Id.) Approximately one month later, Plaintiff filed this motion for leave to amend. 2 (Id. ¶ 7.) The Court finds that Plaintiff exhibited diligence as new facts came to its attention 3 during discovery. 4 Further, Defendants do not contest and therefore concede that Plaintiff could bring 5 a separate lawsuit alleging trademark infringement of the Pred-Moxi® and Dex-Moxi® 6 marks. (Opp’n.) A separate legal action would extend this dispute unnecessarily and 7 consume judicial resources. As such, the Court finds good cause to amend the scheduling 8 order. 9 B. Rule 15(a) 10 Rule 15 governs pleading amendments. Fed. R. Civ. P. 15(a)(2). The Rule states, 11 “The court should freely give leave [to amend] when justice so requires.” Id. But the court 12 need not grant leave where the amendment: (1) prejudices the opposing party, (2) is sought 13 in bad faith, (3) produces an undue delay in litigation, (4) is futile, or (5) follows other 14 amendments. See W. Shoshone Nat’l Council v. Molini, 951 F.2d 200, 204 (9th Cir. 1991). 15 Defendants assert only prejudice to the opposing party. (Opp’n.) But the Court finds no 16 substantial prejudice. 17 “[T]o justify denial of leave to amend, the prejudice must be substantial.” Piper 18 Jaffray & Co. v. Mktg. Grp., USA, Inc., No. 06-CV-2478-H (POR), 2007 WL 9776639, at 19 *3 (S.D. Cal. July 12, 2007); accord Rutter Group Practice Guide: Federal Civil 20 Procedure Before Trial, California & Ninth Circuit Edition ¶ 8:1518 (9th ed. 2022); see 21 also Bell v. Allstate Life Ins. Co., 160 F.3d 452, 454 (8th Cir.
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1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 IMPRIMISRX, LLC, Case No. 21-cv-01305-BAS-DDL 11 Plaintiff, ORDER GRANTING PLAINTIFF’S 12 v. MOTION FOR LEAVE TO FILE 13 SECOND AMENDED COMPLAINT (ECF No. 67) 14 OSRX, INC.; OCULAR SCIENCE, INC.,
15 Defendants. 16
18 Before the Court is Plaintiff’s motion for leave to file a second amended complaint. 19 (Mot., ECF No. 67.) Defendants oppose (Opp’n, ECF No. 70), and Plaintiff replies (Reply, 20 ECF No. 72). Having considered the parties’ filings, the Court GRANTS Plaintiff’s motion 21 for leave to file a second amended complaint and finds good cause to amend the scheduling 22 order. 23 I. BACKGROUND 24 On July 20, 2021, Plaintiff commenced this action and filed a Complaint alleging 25 false advertising, trademark infringement, false designation of origin, common law unfair 26 competition, copyright infringement, and violations of California’s Unfair Competition 27 Law. (ECF No. 1.) Defendants answered on October 22, 2021 and counterclaimed against 28 Plaintiff. (ECF No. 5.) On March 3, 2022, Magistrate Judge Barbara Lynn Major issued a 1 scheduling order. (ECF No. 21.) The scheduling order set a May 1, 2022 deadline for 2 motions to amend the pleadings, and an October 3, 2022 deadline for the parties to 3 complete fact discovery. (Id.) On April 29, 2022, the parties submitted a joint motion for 4 leave to file a first amended complaint (ECF No. 27), and Plaintiff filed the first amended 5 complaint on the same day (ECF No. 28). 6 On May 17, 2022, after the deadline for amending the pleadings had passed, 7 Defendants produced over 20,000 pages of documents. (Reply at 6.) In those documents, 8 Plaintiff allegedly discovered Defendant’s infringing use of the Pred-Moxi® and Dex- 9 Moxi® marks. (Id.) Plaintiff represents that in early August 2022, it decided to pursue new 10 claims related to these marks. (Mot. at 4.) On August 10, 2022, Plaintiff emailed 11 Defendants requesting a joint motion to allow Plaintiff to file a second amended complaint. 12 (Id.) Defendant declined, and Plaintiff filed the present motion approximately a month 13 later. (Id.) 14 While the present motion was pending, the parties filed a joint motion to amend the 15 scheduling order. (ECF No. 80.) The current fact discovery deadline is December 2, 2022. 16 (ECF No. 81.) 17 II. LEGAL STANDARD 18 Rule 16(b) and Rule 15(a) govern consideration of the present motion for leave to 19 amend. When a motion for leave to amend is filed after entry of a Rule 16 scheduling order, 20 the motion “is governed first by Rule 16(b), and only secondarily by Rule 15(a).” Jackson 21 v. Laureate, Inc., 186 F.R.D. 605, 607 (E.D. Cal. 1999) (citing Johnson v. Mammoth 22 Recreations, Inc., 975 F.2d 604, 607–08 (9th Cir. 1992)). Pursuant to Rule 16, “[a] 23 schedule may be modified only for good cause and with the judge’s consent.” Fed. R. Civ. 24 P. 16(b)(4). 25 If Rule 16(b) is satisfied, then the court considers the propriety of amendment 26 pursuant to Rule 15(a). “[A] party may amend its pleading only with the opposing party’s 27 written consent or the court’s leave. The court should freely give leave when justice so 28 requires.” Fed. R. Civ. P. 15(a)(2). “Rule 15(a) is very liberal[.]” AmerisourceBergen 1 Corp. v. Dialysist West, Inc., 465 F.3d 946, 951 (9th Cir. 2006). “This liberality . . . is not 2 dependent on whether the amendment will add causes of action or parties.” DCD 3 Programs, Ltd. v. Leighton, 833 F.2d 183, 186 (9th Cir. 1987). 4 III. ANALYSIS 5 A. Rule 16(b) 6 Good cause under Rule 16(b)(4) means that a pretrial deadline “cannot reasonably 7 be met despite the diligence of the party seeking the extension.” Zivkovic v. S. Cal. Edison 8 Co., 302 F.3d 1080, 1087 (9th Cir. 2002) (internal quotations and citations omitted). A 9 party may show good cause when the amendment is based on new and pertinent 10 information that came to light after the deadline to amend. See Lyon v. U.S. Immigr. & 11 Customs Enf’t, 308 F.R.D. 203, 216 (N.D. Cal 2015); Burns ex rel. Office of Pub. Guardian 12 v. Hale & Dorr, LLP, 242 F.R.D. 170, 174 (D. Mass. 2007) (finding good cause exists 13 when facts came to light as a result of discovery). Ultimately, “[t]he decision to modify a 14 scheduling order is within the broad discretion of the district court.” Turner v. Anand, No. 15 14-CV-01147-BAS PCL, 2015 WL 4474671, at *4 (S.D. Cal. July 21, 2015). 16 Diligence is a “case-specific” inquiry that turns primarily on the length of time 17 between the ground necessitating amendment and the movant’s request to amend. See San 18 Diego Ass’n of Realtors, Inc. v. Sandicor, Inc., No. 16cv96-MMA (KSC), 2017 WL 19 6344816, at *5 (S.D. Cal. Dec. 12, 2017). “A party fails to show good cause when the 20 proposed amendment rests on information that the party knew, or should have known, in 21 advance of the deadline.” Scott v. Chipotle Mexican Grill, Inc., 300 F.R.D. 193, 194 22 (S.D.N.Y. 2014) (internal quotations and citations omitted). 23 Here, Defendant produced more than 20,000 pages of documents on May 17, 2022, 24 after the deadline to amend the pleadings. (ECF No. 72-1 ¶ 2.) Plaintiff reviewed the 25 documents and identified the additional causes of action by early August 2022. (ECF No. 26 67-4 ¶ 4.) Given the volume of discovery documents, it is reasonable that Plaintiff would 27 need two and a half months to review the production. Plaintiff then moved immediately to 28 meet and confer with Defendants upon deciding to pursue the additional infringement 1 claims. (Id.) Approximately one month later, Plaintiff filed this motion for leave to amend. 2 (Id. ¶ 7.) The Court finds that Plaintiff exhibited diligence as new facts came to its attention 3 during discovery. 4 Further, Defendants do not contest and therefore concede that Plaintiff could bring 5 a separate lawsuit alleging trademark infringement of the Pred-Moxi® and Dex-Moxi® 6 marks. (Opp’n.) A separate legal action would extend this dispute unnecessarily and 7 consume judicial resources. As such, the Court finds good cause to amend the scheduling 8 order. 9 B. Rule 15(a) 10 Rule 15 governs pleading amendments. Fed. R. Civ. P. 15(a)(2). The Rule states, 11 “The court should freely give leave [to amend] when justice so requires.” Id. But the court 12 need not grant leave where the amendment: (1) prejudices the opposing party, (2) is sought 13 in bad faith, (3) produces an undue delay in litigation, (4) is futile, or (5) follows other 14 amendments. See W. Shoshone Nat’l Council v. Molini, 951 F.2d 200, 204 (9th Cir. 1991). 15 Defendants assert only prejudice to the opposing party. (Opp’n.) But the Court finds no 16 substantial prejudice. 17 “[T]o justify denial of leave to amend, the prejudice must be substantial.” Piper 18 Jaffray & Co. v. Mktg. Grp., USA, Inc., No. 06-CV-2478-H (POR), 2007 WL 9776639, at 19 *3 (S.D. Cal. July 12, 2007); accord Rutter Group Practice Guide: Federal Civil 20 Procedure Before Trial, California & Ninth Circuit Edition ¶ 8:1518 (9th ed. 2022); see 21 also Bell v. Allstate Life Ins. Co., 160 F.3d 452, 454 (8th Cir. 1998) (“Any prejudice to the 22 nonmovant must be weighed against the prejudice to the moving party by not allowing the 23 amendment.”). Defendants argue that they would be prejudiced by limited time for 24 discovery, particularly for reissuing discovery requests and expert disclosures and 25 investigating potential counterclaims. (Opp’n at 10–11.) Plaintiff counters that Defendants 26 avoided discovery on Pred-Moxi® and Dex-Moxi®, even after Plaintiff filed this motion 27 for a second amended complaint, and therefore, any prejudice is self-inflicted. (Reply at 28 8.) The Court is unconvinced that Defendants had a duty to conduct discovery on claims 1 || that were not in the Complaint at the time, but even so the Court finds there is no substantial 2 || prejudice to Defendants. 3 Although delay and expense can constitute prejudice, “[t]he need for additional 4 || discovery is insufficient by itself to deny a proposed amended pleading.” Jn re Cir. Breaker 5 || Litig., 175 F.R.D. 547, 551 (C.D. Cal. 1997). Further, Defendants will have ample time to 6 ||develop their defense through discovery. Fact discovery has already been extended until 7 || December 2, 2022. (ECF No. 81.) Plaintiff has produced financial records regarding the 8 || Pred-Moxi® and Dex-Moxi® marks, and Defendants have more than a month to conduct 9 || further discovery. In addition, 1f good cause exists to amend the scheduling order to allow 10 || Defendants more time to develop a defense through discovery, then Defendants will have 11 opportunity to raise the issue. Thus, any delay resulting from a second amended 12 complaint will not substantially preyudice Defendants. 13 |TV. CONCLUSION 14 The motion for leave to file a second amended complaint (ECF No. 67) is 15 || GRANTED. Plaintiff must file a second amended complaint on or by October 31, 2022. 16 IT IS SO ORDERED. 17 / yy 18 || DATED: October 27, 2022 (ying (Mohan 6 19 United States District Judge 20 21 22 23 24 25 26 27 28 □□□