NITE GLOW INDUSTRIES INC. et al v. CENTRAL GARDEN & PET COMPANY et al, No. 2:2012cv04047 - Document 49 (D.N.J. 2013)

Court Description: OPINION & ORDER granting 42 Motion to Amend Complaint; that, within ten (10) days of the date of this Order, Plaintiff shall file and serve an Amended Complaint, etc. Signed by Magistrate Judge Cathy L. Waldor on 10/4/13. (jd, )

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NOT FOR PUBLICATION UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY NITE GLOW INDUSTRIES INC., I DID IT, INC., & MARNI MARKELL HURWITZ, Civil Action No.: 2:12-cv-04047 Plaintiff, CENTRAL GARDEN & PET COMPANY & FOUR PAWS PET COMPANY, DIBIA FOUR PAWS PRODUCTS, LTD. : OPINION AND ORDER Defendants. WALDOR. United States Magistrate Judge Currently before this Court is a motion by Plaintiffs Nite Glow Industries Inc., I Did It Inc., and Mami Markell Hurwitz ( Plaintiffs or Nite Glow ) for leave to file a second amended complaint pursuant to FED, R. Civ. P. 15(a)(2) to add causes of action of: (1) patent infringement, (2) misappropriation, (3) breach of contract, and (4) false marketing concer ning Plaintiffs United States Patent Nos. 7,204,206 and 7,549,399 ( 206 Patent and 399 Patent ), against defendants. (Dkt. No. 42-1, Sec. Motion to Amend, 1). Defendants Central Garden & Pet p. Company & Four Paws Pet Company, d/b/a Four Paws Products, Ltd. ( Defe ndants or Central ) oppose the Second Motion to Amend. (Dkt. No. 47 Central Opp., p. 1). The Court resolves this Motion on the papers without oral argument pursua nt to Local Rule 78.1(b). Having considered the parties submissions and for the reasons set forth below, Plaintiffs Motion to Amend is hereby GRANTED. I. DISCUSSION Plaintiff Nite Glow commenced this action on or about June, 29, 2012 allegin g claims for patent infringement against Defendants pursuant to 35 U.S.C. § 282 concerning its United States Patent No. 8,057,445 ( 445 Patent ). (Dkt. No. 1 Initial Comp., ¶ 14). The Second Amended Complaint alleges that Defendants additionally violated Plaintiffs 206 Patent and 388 Patent by offering for sale products marked with patent numbers withou t properly compensating Plaintiffs. (Sec. Motion to Amend, p. 6, 8). On July 26, 2013, Plaintiff filed the instant Motion to Amend. (Sec. Motion to Amend). Included in this Motion was a proposed Second Amended Complaint. (Dkt, No. 42-4 Sec. Amended Complaint ). On August 21, 2013, Central filed its opposition. (Central Opp.). Central opposes the Second Amended Complaint on the basis of futility (Central Opp. p. 1). Specifically, Central argues that the Second Amended Complaint includes four baseless and unsupported counts against the Defendants. j In support of its argument, Centra l includes a License Agreement executed on January 1, 2009 between Plaintiffs and Defend ant Four Paws. (Dkt. No. 47 Central Opp. p. 2, Ex. A License Agreement ). Legal Standard FED. R. Civ. P. 1 5(a)(2) allows a party to amend its pleading by leave of court when justice so requires. FED. R. Civ. P. 1 5(a)(2). Leave to amend pleadin gs is to be freely given. FED, R. Civ. P. 15(a)(2); Foman v. Davis, 371 U.S. 178, 182 (1962). The decision to grant leave to amend rests within the discretion of the court. Foman, 371 U.S. at 182. Pursuant to Foman, leave to amend may be denied on the basis of: (1) undue delay; (2) bad faith or dilatory motive; (3) undue prejudice to the opposing party; and (4) futility of amendment. Ic. Only when these factors suggest that amendment would be unjust should the court deny leave. Arthur v. Maersk, Inc., 434 F.3d 196, 203 (3d Cir. 2006) (internal citatio ns omitted). Here, Central opposes Plaintiffs Second Motion to Amend on the basis of futility. (Central Opp. p. 1). In assessing futility, the district court applies the same standard of legal sufficiency as applies under Rule 12(b)(6). In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1434 (3d Cir. 1997) (citing Glassman v. Computervision Corp., 90 F.3d 617, 623 (1st Cir. 1996) (citation omitted)). Under this standard, the question before the Court is whether the complaint sets forth enough facts to state a claim to relief that is plausib le on its face. Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). ill The Court must accept all factual allegations as true as well as the reasonable inferences that can be drawn from them. Brown v. Philip Morris, Inc., 250 F.3d 789, 796 (3d Cir. 2001). The Court must also constru e the facts in a light most favorable to the non-moving party. Ghobrial v. Pak Manufact., Inc., 2012 WL 893079, *3 (D.N.J. March 13, 2012). A. Analysis Plaintiffs legally own United States Patent Nos. 206 and 388 in additio n to the 445 Patent previously discussed in the initial complaint. (Dkt. No. 42-3 Sec. Amend ed Complaint, Ex. A, Ex. B; Initial Complaint, ¶ 14), The crux of Central s argument is that it lawfully used Plaintiffs Patents in accordance with the terms of the License Agreem ent and thus the patent infringement claim is frivolous. (Central Opp. p. 2, Ex. A. License Agreement). However, on a -3- motion to amend, the Court must accept all allegations in the Amended Complaint as true, draw all reasonable inferences therefrom and view them most favorably toward the Plaintiff. $çç Ghobrial, 2012 WL 893079, at *3), The License Agreement only includes explicit licensing of the 206 Patent and not of the similarly disputed 399 Patent . (Central Opp. p. 2, Ex, A. License Agreement). Furthermore, even if the License agreement does control both patents, there are still breach of contract issues alleged. (Sec. Motion to Amend p. 1). Defendants respectfully ask for more time to calculate related royalties, but previous settlement efforts have been unsuccessful, (Central Opp., p.3; Dkt. 42-2 Sec. Motion to Amendment Declaration of Ernest D. Buff ¶ 5-10). The Court, at this early stage, finds that the addition of causes of action related to 206 Patent and 399 Patent withstand a futility challenge. Central s challenge to the Patent Infringement cause of action citing the License Agreement may be more appropriate for motion practice once discovery is conducted. Accordingly, the Motion to Amend is granted. II. CONCLUSION For the reasons set forth above, Plaintiff s Motion to Amend its complaint is hereby GRANTED. It is hereby ORDERED that, within ten (10) days of the date of this Order, Plaintiff shall file and serve an Amended Complaint as set forth above. The Clerk of the Court is directed to terminate Docket No. 1(Insert Docket Number) SO ORDERED. /CthL 1dor CATHY L. WALDOR UNITED STATES MAGISTRATE JUDGE -4- DATED: October 4, 2013 -5-

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