Hampshire Paper v. Syndicate Sales CV-97-273-JD 03/19/99 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Hampshire Paper Corp.

v. Civil No. 97-273-JD

Syndicate Sales, Inc.

O R D E R

Hampshire Paper Corporation brings an action alleging that

defendant. Syndicate Sales, Inc., has and continues to infringe

four patents owned by Hampshire relating to ceremonial aisle

runners with releasable adhesive. Syndicate alleges

counterclaims of invalidity and noninfringement of Hampshire's

patents, and moves for summary judgment (document nos. 48, 49,

50) asserting that it has not infringed any of the four patents

at issue and, alternatively, that the patents are invalid

pursuant to

(a) and (b). In response, Hampshire

has withdrawn its claim as to one patent, but objects to summary

judgment on all other grounds.

After the summary judgment motions were filed, Hampshire

moved for leave to amend its complaint to add a claim of

infringement of a fifth patent,

("'384 patent"), related to the other patents in suit (doc. no. 60) .1

Syndicate Sales objects, arguing that in light of the imminent

trial date in the case, leave to amend should be denied.

Syndicate also moves, however, for leave to file a reply to

Hampshire's objection to summary judgment on noninfringement

saying that "[t]he '384 patent provides additional evidence in

support of Syndicate Sales' summary judgment motion which was

unavailable to Syndicate Sales when the memorandum in support of

summary judgment was written."

After the opposing party has answered the plaintiff's

complaint, leave to amend is to be "freely given when justice so

reguires." Fed. R. Civ. P. 15(a). Despite the liberal amendment

policy, the court will not exercise its discretion to permit

amendment if the defendant shows that there was undue delay in

filing or that it would suffer undue prejudice if the amendment

were allowed. Acosta-Mestre v. Hilton Internat'l,

(1st Cir. 1998) (citing Foman v. Davis,

(1962)).2 Undue prejudice is likely if an amendment is proposed

Hampshire has voluntarily relinguished its claim based on one of the four patents originally in this suit,

but has not complied with the reguirements of Federal Rule of Civil Procedure 4 1 (a) for disposition of the claim.

2Because a motion to amend pleadings does not raise issues unigue to patent law, the law of the regional circuit governs. Datascooe Corp. v. SMEC, Inc.,

(Fed. Cir. 1992) .

2 after the close of discovery or after motions for summary

judgment have been filed. See Grant v. News Group Boston, Inc.,

(1st Cir. 1995); Resolution Trust Corp. v. Gold,

(1st Cir. 1994) . When considerable time has

elapsed between the initial complaint and a motion to amend, the

plaintiff bears the burden of showing avalid reason for the

delay. Acosta-Mestre,

.

As Syndicate points out, Hampshire filed its motion to amend

approximately twenty months after filing suit. Discovery is

closed, and the case is scheduled for trial to begin on April 20,

1999. In addition, Hampshire filed its motion to amend after

Syndicate filed its motions for summary judgment. These

circumstances would ordinarily indicate undue delay and prejudice

to Syndicate and might reguire that Hampshire show that its

proposed amendment have "substantial merit and be supported by

substantial and convincing evidence." Classman v. Computervision

Corp.,

(1st Cir. 1996).

Hampshire's new claim proposed for the amended complaint

alleges infringement of the '384 patent that was not issued until

December 15, 1998, long after Hampshire initially filed suit.

Although the '384 patent pertains to the same products that are

at issue in Hampshire's other infringement claims, Hampshire's

claim based on the '384 patent is also a separate claim of

infringement. There is no indication in the record that

3 Hampshire seeks to amend its complaint to defeat summary

judgment.

Syndicate says that the '384 patent provides "additional

evidence" pertinent to the infringement claims based on at least

two of the other patents in this case. Given the apparent

likelihood that the '384 patent will be used as evidence in this

case and the likelihood that a separate suit will be filed to

address the '384 patent alone if amendment were not allowed, the

interests of justice and judicial economy would be best served by

allowing Hampshire's proposed amendment.3 The substantial

prejudice that would result if the case were to proceed on its

present schedule can be averted by continuing the trial now

scheduled to begin in April and by reopening discovery only to

the extent necessary to address the new claim. Accordingly,

Hampshire's motion to amend the complaint is granted.

The pending motions for summary judgment, based on the

claims in the present complaint and Syndicate's counterclaims,

are denied without prejudice to refile dispositive motions

addressing the claims in Hampshire's amended complaint and any

counterclaims Syndicate may assert in response. Syndicate's

related motions to strike the affidavit of Hampshire's expert

3Although it is less clear that the '384 patent would affect the '013 claims, it would not be appropriate to proceed with some rather than all of the claims.

4 witness and to enter judgment are also denied without prejudice.

All of the motions to file additional materials related to the

motions for summary judgment and motion to amend are denied.

If new dispositive motions are filed, the parties are placed

on notice that the court expects them to present their arguments

and authority in their supporting memoranda in the first

instance, and to minimize or eliminate the necessity for a series

of replies as has been their practice thus far. Furthermore,

counsel are cautioned that the court expects them to refrain from

overstatement and invective in their written materials, both of

which do little to advance the merits of the case.4

4Some examples of ineffective pleading style taken from the motions for summary judgment, objections, and related materials are provided as guidance: (1) neither party addressed the applicable burdens of proof pertaining to summary judgment with respect to Syndicate's counterclaims; (2) Hampshire failed to properly resolve its withdrawn claim and Syndicate moved for sanctions and fees; (3) Hampshire filed an expert affidavit which it now acknowledges includes at least eight paragraphs that are either merely guotes from patents or are "conclusory in nature," and also represents that the affidavit, filed after the disclosure deadline, is supplemental disclosure; (4) Syndicate moved to strike the entire affidavit without adeguate regard to the expert's disclosure on particular subject matter; (5) Syndicate submitted file histories for several patents after filing its motion for summary judgment and did not refer to the file histories in its memoranda making them irrelevant for purposes of summary judgment; (6) Syndicate submitted as separate exhibits a single unattested page following each patent, purportedly showing "new matter" added to the patent, see Fed. R. Civ. P. 56(e). The court expects better written advocacy in the future.

5 Conclusion

For the foregoing reasons, Hampshire's motion for leave to

file an amended complaint (document, no. 60) is granted. The

trial scheduled to begin on April 20, 1999, is continued, and a

second pretrial conference for purposes of establishing a new

case plan will be scheduled within a reasonable time after

Syndicate is served with the amended complaint and has filed its

response. The necessity for a second pretrial conference can be

avoided if counsel agree to a new case plan which should be filed

within twenty days of the date of filing of Syndicate's answer.

Syndicate's motions for summary judgment (document nos. 48,

49, 50) are denied without prejudice. All exhibits and

supplementary materials filed in support of and in opposition to

the motions for summary judgment will be returned to counsel.

Syndicate's motion to strike (document no. 61) is denied without

prejudice. Syndicate's motions for leave to file a reply

(document no. 69) and for entry of judgment (document no. 71) are

denied. Hampshire's motion (document no. 72) to file a reply

memorandum and to file a surreply (document no. 68) are denied.

SO ORDERED.

Joseph A. DiClerico, Jr. District Judge

March 19, 1999 cc: George R. Moore, Esguire Paul J. Hayes, Esguire William J. Thompson, Esguire Dwight D. Lueck, Esguire

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