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District Court Denies Motion to File Amended Complaint to Add Direct Infringement Claim

Plaintiff Kaneka Corporation (“Plaintiff”) filed a patent infringement against SKC Kolon PI, Inc. (“SKPI” or “Defendant”) and SKC, Inc. (“SKC America”). After the district court issued a scheduling order setting, among other things, a final day to amend pleadings, the Plaintiff moved for leave to amend its first amended complaint on the final day and the district court granted leave to amend, permitting the Plaintiff to file a second amended complaint. The parties subsequently filed cross motions for summary judgment.

While the summary judgment motions were pending, Plaintiff filed another motion for leave to amend the operative complaint. Although Plaintiff’s first amended complaint stated claims of direct infringement against Defendant SKPI, the second amended complaint omitted those claims. In its motion for leave, Plaintiff contended it inadvertently deleted those claims and moved for leave to amend to reinsert them.

After noting that the deadline to amend pleadings had passed and therefore the Plaintiff had to show good cause to modify the scheduling order, the district court found that the Plaintiff had not done so as Plaintiff’s argument that dropping the direct infringement claims was inadvertent did not “square with the facts.” The district court noted that “Plaintiff did not merely leave out a three word phrase. Instead, Plaintiff completely changed the entire paragraph. Inserting the three supposedly dropped words would create an incoherent allegation. Plaintiffs also dropped “making, using, selling, offering to sell” from the FAC paragraphs, language which comes from 35 U.S.C. ยง 271(a), the section concerning direct infringement.”

The district court explained that “[t]he disputed paragraphs have to do with indirect infringement. Thus, insertion of ‘has directly infringed’ would not solve the problem. Instead, Plaintiff asks to tack on the phrase ‘and SKPI’ to the paragraphs alleging direct infringement by SKC America. As SKPI points out, ‘if, as Kaneka suggests, Kaneka merely ‘inadvertently omitted’ from its SAC the phrase ‘has directly infringed’ then one would expect Kaneka’s proposed amendments to simply inject the phrase ‘has directly infringed.'”

As a result, the district court found the Plaintiff’s explanation of the alleged mistake unpersuasive. “Furthermore, even if it was an inadvertent error, ‘carelessness is not compatible with a finding of diligence and offers no reason for a grant of relief.’ Johnson, 975 F.2d at 609.”

Accordingly, the district court denied the motion for leave to amend.

Kaneka Corp. v. SKC Kolon PI, Inc., et al., Case No. CV 11-3397 JGB (RZx) (C.D. Cal. Oct. 24, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or