IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

L'OREAL S.A. and L'OREAL USA, INC.,
Plaintiffs,
v.
MSD CONSUMER CARE, INC.,
Defendant.
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ORDER
Civil Action No. 12-99-GMS
At Wilmington, this ~ d y of September 2014, having reviewed the parties'
contentions and the applicable law;
IT IS HEREBY ORDERED that the defendant's Motion for Leave to File Its Amended
Answer, Affirmative Defenses and Counterclaims (D.I. 117) is GRANTED IN PART and
DENIED IN PART.
The court is to "freely give leave" to parties to amend their pleadings ''when justice so
requires." Fed. R. Civ. P. 15(a)(2). In the event of a scheduling order setting a specific deadline
to amend the pleadings, however, amendments sought after the deadline must be "for good cause
and with the judge's consent." Fed. R. Civ. P. 16(c)(b)(4).
The court is persuaded that good cause exists to allow the defendant to amend its
pleadings to include claims of inequitable conduct. Because inequitable conduct must be pled
with particularity, parties will often not possess the necessary information to substantiate such a
claim until discovery is taken. See Fed. R. Civ. P. 9(b) ("In alleging fraud or mistake, a party
must state with particularity the circumstances constituting fraud or mistake. Malice, intent,
knowledge, and other conditions of a person's mind may be alleged generally."). Indeed, the
court has made allowances for amendments of this type in the past. See Raquette Freres v. SPI
Pharma, Inc., No. 06-540-GMS-MPT, 2009 WL 1444835, at *5 (D. Del. May 21, 2009) ("[I]n
light of the pleading with particularity requirement under Rule 9(b ), it was appropriate for
[defendant] to confirm the factual allegations through discovery."); Biavail Labs. Int'l SRL v.
Andrx Pharm., LLC., No. 05-586-GMS, 2007 WL 3231684, at *2 (D. Del. May 4, 2007)
(observing that refusing to allow untimely amendments for inequitable conduct would
"encourage knee jerk, thoughtless, and poorly grounded assertions" at the outset oflitigation).
The court, moreover, is not convinced that the defendant needlessly delayed or that the
plaintiffs will be unduly burdened by the addition ofthese allegations. January 31, 2014, marked
the close of fact discovery; the defendant filed this motion on February 6, 2014. The court finds
that the defendant was diligent in filing its motion for leave to amend to include allegations of
inequitable conduct, and that the plaintiffs have failed to argue that any prejudice would result.
See Raquette, 2009 WL 1444835, at *5 (holding concerns that the non-moving party "would
have to address a new issue and rework its case, thereby incurring additional costs[,] ... are not
sufficient to show prejudice").
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The court grants the defendant leave to amend its pleadings to
include allegations of inequitable conduct.
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The plaintiffs also argue that an amendment to include allegations of inequitable conduct would be
futile. "[I]n assessing futility of a proposed amendment, the same standard of legal sufficiency as under Rule
12(b)(6) is applied." Raquette, 2009 WL 1444835, at *3 (citing Shane v. Fauver, 213 F.3d 113, 115 (3d Cir. 2000)).
Thus, "all factual allegations and all reasonable inferences therefrom are accepted as true," and the court will only
reject the amendment as futile where the moving party fails to state a claim upon which relief may be granted. !d.
(citing In re Merck & Co., Inc., 493 F.3d 393, 400 (3d. Cir. 2007)). The defendant has adequately alleged the
necessary elements of inequitable conduct.
The plaintiffs' additional contention that the inequitable conduct allegations are meritless is untimely and
more appropriate for the summary judgment stage. See id. ("Only where it is clear to the court . . . that a claim
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The court, however, finds no good cause to permit the defendant to amend its pleadings
to include new counterclaims for invalidity and non-infringement for the two patents at issue.
Despite having previously included these claims as affirmative defenses, the defendant provides
no justification for why these counterclaims were not or could not have been included within the
time limits of the original scheduling order. In fact, the defendant's only mention of its desire to
add these counterclaims comes in a footnote, without any attempt to justify its delay. The burden
is on the defendant "to show that the deadlines [could not have] reasonably [been] met despite
[its] diligence." See Pressure Prods. Med Supplies, Inc. v. Greatbatch Ltd, 599 F.3d 1308,
1315 (Fed. Cir. 201 0). The defendant has not met its burden. Thus, the court denies its motion
for leave to include these counterclaims.
IT IS FURTHER ORDERED that the plaintiffs' Motion for Leave to File a Surreply (D.I.
131) is DENIED as moot.
has no possibility of succeeding on the merits, will the court disallow it by denying leave to amend." (emphasis in
original) (quotingAgere Sys. Guardian Corp. v. Proxim, Inc., 190 F. Supp. 2d 726,736 (D. Del. 2002))).
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