Motion for Leave to Amend Complaint Granted and Motion to Stay Proceedings Pending Reexamination Granted

Tomco2 Equipment Co. v. Southeastern Agri-Systems, Inc., No. 1:06-cv-2559 (N.D. Ga. Feb. 19, 2008) (Carnes, J.)

Judge Carnes granted the Plaintiff’s Motion for Leave to Amend its Complaint pursuant to Federal Rule of Civil Procedure 15(a) to add three new defendants. The Defendant objected to the Motion because the Plaintiff was aware of the new defendants (principals and a customer of the Defendant’s) prior to filing suit and arguably could have added the parties earlier in the litigation. The Court noted that the request to amend was made within the guidelines set by the parties’ discovery plan and was therefore timely, and that the Defendant did not assert any prejudice as a result of the Plaintiff’s delay. For these reasons, the Court granted the Plaintiff’s Motion for Leave to Amend.

The Court also granted the Defendant’s Motion to Stay the Proceedings pending an inter partes reexamination proceeding in the USPTO. The Defendant requested an inter partes reexam of one of the two patents-in-suit about one year after the instant action was filed. Shortly thereafter, the USPTO granted the Defendant’s request and preliminarily rejected all of the patent claims at issue. The Court decided to stay the proceedings pending the reexamination, because (1) a stay would not prejudice the parties, (2) a stay would simplify the issues for trial, and (3) although it was relatively late in discovery, because both parties were looking to extend discovery for the addition of the new defendants it was sufficiently early in the litigation to make a stay appropriate.