IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELA WARE

M2M SOLUTIONS LLC,
Plaintiff,
V.
SIERRA WIRELESS AMERICA, INC. and
SIERRA WIRELESS, INC.,
Defendants.
ORDER
Civil Action No. 12-30-RGA
On January 31, 2014, Sierra Wireless America, Inc. and Sierra Wireless, Inc. filed a
Motion for Leave to Add Invalidity Counterclaims. (D.I. 116). Having reviewed the related
briefing by Sierra Wireless and M2M Solutions (D.I. 117, 121 & 124), it is ORDERED that
Sierra Wireless's Motion (D.I. 116) is DENIED for the reasons that follow:
Federal Rule of Civil Procedure 15, which governs amended and supplemental pleadings,
provides for amendments to pleadings if the court grants leave and notes that courts "should
freely give leave when justice so requires." FED. R. Civ. P. 15(a)(2). The Supreme Court has
held that, absent evidence of "undue delay, bad faith or dilatory motive on the part of the
movant, repeated failure to cure deficiencies by amendments previously allowed, undue
prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment,
etc.," the leave sought should be granted. Farnan v. Davis, 371 U.S. 178, 182 (1962).
In this case, Sierra Wireless must also comply with Rule 16 because the Scheduling
Order's deadline for amending pleadings expired more than twelve months prior to the filing of
the extant motion. (D.I. 27 (setting January 14, 2013 deadline for amending or supplementing
pleadings)). Rule 16(b) permits schedule modifications "only for good cause and with the
judge's consent." FED. R. C1v. P. 16(b)(4). "'Good cause' exists when the Schedule cannot
reasonably be met despite the diligence of the party seeking the extension." ICU Med., Inc. v.
RyMed Techs., Inc., 674 F. Supp. 2d 574, 577 (D. Del. 2009). The lack of "good cause" under
Rule 16 is dispositive, and the Court need not evaluate the Foman factors if the movant cannot
satisfy the Rule 16 requirements. See E. Minerals & Chems. Co. v. Mahan, 225 F.3d 330, 339-
40 (3d Cir. 2000) (affirming district court's conclusion that it was not required to analyze the
movant's Rule 15(a) argument after finding lack of"good cause" under Rule 16(b)).
Sierra Wireless has failed to show that the Court's Scheduling Order could not
"reasonably be met despite [] diligence" on Sierra Wireless's behalf. Therefore, there is no
"good cause" for Sierra Wireless to amend its pleading under Rule 16.
Sierra Wireless filed an Answer to M2M's Complaint on April 9, 2012, in which it
asserted invalidity as an affirmative defense. (D.I. 9). The invalidity counterclaim that Sierra
Wireless now seeks to bring "mirrors its currently pled affirmative defense of invalidity." (D.I.
117, p. 2). In fact, Sierra Wireless represents that the affirmative defense and counterclaim are
equivalent. (D.I. 124, p. 7 ("Sierra Wireless's proposed counterclaims are essentially a copy of
its affirmative defense pled in its original answer.")). Nothing prevented Sierra Wireless from
asserting invalidity counterclaims in its Answer, and Sierra Wireless noted in its brief that
several of the other defendants in the related cases did so.
1
(D.I. 117, p. 3 ). The fact that Sierra
Wireless wishes to add an invalidity counterclaim months later so that M2M cannot appeal the
Court's claim construction opinion while the related cases are proceeding in this Court does not
1
The four related cases are 1: 12-cv-3 l through 1: 12-cv-34.
2
constitute "good cause."
2
Additionally, Sierra Wireless's argument that the issuance of two new
continuation patents to M2M alters the outcome is not persuasive.
3
(Id, p. 10-11 ("Sierra
Wireless has a strong interest in continuing its invalidity case against the currently asserted
patents, as this will clearly impact M2M' s ability to assert future claims on continuation patents.
Prior to its revelation of the soon to be issued patents, an appeal following a stipulation of non-
infringement had a real potential to end its dispute with M2M, as res judicata would have likely
barred additional claims against existing products.") (footnote omitted)). Therefore, Sierra
Wireless has failed to meet Rule 16(b)'s standard for amending the Court's Scheduling Order.
This alone is sufficient grounds to deny Sierra Wireless's motion.
Even if Sierra Wireless satisfied Rule 16(b)'s "good cause" requirement, however, it
still falls short under Rule 15(a). As the Supreme Court noted in Farnan, undue delay is a proper
basis for denying a motion for leave to amend a pleading. See Farnan, 371 U.S. at 182; E.
Minerals & Chems. Co., 225 F.3d at 339-40. Sierra Wireless's proffered reason for the delay
appears to be the issuance of the continuation patents that circumvent the Court's claim
construction. (D.1. 124, p. 7). This is an insufficient basis for Sierra Wireless to seek leave to
amend its pleadings twenty months after filing its Answer with an affirmative defense of
invalidity and more than twelve months after the January 2013 deadline for amending pleadings.
2
After this Court construed several terms in the defendants' favor, M2M sought to obtain stipulations ofnon-
infringement from several of the defendants, including Sierra Wireless, so that it could immediately appeal the
construction at the Federal Circuit while moving forward under the existing claim construction against the other
defendants.
3
The new continuation patents have the same specification as the two patents-in-suit, but lack several of the
disputed terms that this Court has previously construed in the defendants' favor.
3
I
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Entered this l ~ y of May, 2014.
4
f.