United States District Court, E.D. Michigan, Southern Division
Elizabeth A. Stafford Mag. Judge.
OPINION AND ORDER DENYING PLAINTIFF'S MOTION TO
AMEND [61, 63] AND DENYING PLAINTIFF'S RENEWED MOTION TO
E. LEVY United States District
the Court are plaintiff Conceivex, Inc.'s motion to amend
the complaint (Dkts. 61, 63) and renewed motion to
consolidate this case with its copyright infringement suit
against the same corporate entity defendants, Case No.
15-cv-14239. (Dkt. 62.)
reasons set forth below, plaintiff's motion to amend is
denied, and the renewed motion to consolidate is denied.
case arises out of defendants' alleged infringements of
plaintiff's patent and trademark related to its
prescription CONCEPTION KIT. Plaintiff alleges that
defendants sold an over-the-counter version of its conception
kit called The Stork OTC Home Conception Device, and that the
device infringed on plaintiff's `493 patent. Further, the
device allegedly infringed plaintiff's trademark in
various ways, including through the use of CONCEPTION KIT as
a meta tag on defendant's website and as a mark in online
complaint was filed on May 20, 2016, and plaintiff filed its
first amended complaint on June 8, 2016. (Dkts. 1, 10.)
Discovery began after the Court entered a scheduling order on
October 13, 2016, and fact discovery will continue until
sixty days after the Court rules on the patent claim
construction issues. (Dkt. 49.) A claim construction hearing
is scheduled for October 25, 2017.
has now moved to file a second amended complaint (Dkts. 61,
63), and filed a renewed motion to consolidate this case with
a copyright infringement lawsuit against the same corporate
entity defendants, Case No. 15-cv-14239. The initial motion
to consolidate was denied without prejudice on September 29,
2016, with leave to refile in four months. (Dkt. 51 at 29
(Hr'g Tr.).) Plaintiff refiled on March 29, 2016.
copyright infringement lawsuit, filed on December 3, 2015,
plaintiff alleges that defendants infringed the copyright of
plaintiff's “Instructions for Use” document
included with its CONCEPTION KIT by using the same or
substantially similar language in its instruction manual.
Plaintiff filed a first amended complaint in that case on
March 2, 2016. The original scheduling order permitted the
parties to amend the pleadings until May 12, 2016. (Case No.
15-cv-14239, Dkt. 16.) Under the current scheduling order,
the cutoff for fact discovery is October 2, 2017, and expert
discovery closes February 2, 2018. (Dkt. 36.)
Civ. P. 15(a)(2) instructs courts to “freely give leave
[to amend] when justice so requires.” But “[a]
motion to amend a complaint should be denied if the amendment
is brought in bad faith, for dilatory purposes, results in
undue delay or prejudice to the opposing party, or would be
futile.” Colvin v. Caruso, 605 F.3d 282, 294
(6th Cir. 2010) (internal citations omitted). “Delay by
itself is not sufficient reason to deny a motion to
amend.” Coe v. Bell, 161 F.3d 320, 342 (6th
Cir. 1998) (internal quotation omitted). But “[w]hen
combined with  prejudice . . . there [may be] sufficient
grounds . . . to deny the motion.” Id.
“A proposed amendment is futile if the amendment could
not withstand a Rule 12(b)(6) motion to dismiss.”
Riverview Health Inst., LLC v. Med. Mut. of Ohio,
601 F.3d 505, 512 (6th Cir. 2010).
Civ. P. 42(a) governs consolidation of cases, and states that
“[i]f actions before the court involve a common
question of law or fact, the court may . . . consolidate the
actions.” “Whether cases involving the same
factual and legal questions should be consolidated for trial
is a matter within the discretion of the trial court.”
Cantrell v. GAF Corp., 999 F.2d 1007, 1011 (6th Cir.
1993); see also Caspar v. Snyder, 77 F.Supp.3d 616,
645 (E.D. Mich. 2015) (citing Cantrell, 999 F.2d at
1011). “Care must be taken that consolidation does not
result in unavoidable prejudice or unfair advantage, ”
and where conservation of judicial resources would be
“slight, the risk of prejudice to a party must be
viewed with even greater scrutiny.” Cantrell,
999 F.2d at 1011. Factors a court must consider also include
“the burden on parties, witnesses . . ., the length of
time required to conclude multiple suits . . ., and the
relative expense to all concerned of the single trial,
multiple-trial alternatives.” Id. (quoting
Hendrix v. Raybestos-Manhattan, Inc., 776 F.2d 1492,
1495 (11th Cir. 1985)).
seeks to amend the complaint to add Stephen Bollinger, an
executive officer of the corporate entity defendants, as a
defendant. Plaintiff also seeks to consolidate this case with
its copyright case.
Motion to Amend
argue that plaintiff's motion to amend should be denied
because (1) the Court lacks personal jurisdiction over Mr.
Bollinger; (2) this Court would be the improper venue over
claims against Mr. Bollinger; (3) plaintiff has failed to
state a claim so the amendment would be futile; and (4) the
motion is brought with undue delay and in bad faith, and
would cause undue prejudice. (Dkt. 66.)
patent cases, a court has personal jurisdiction over an
out-of-state party if two conditions are met. “First,
jurisdiction must exist under the forum state's long-arm
statute.” Med. Sols., Inc. v. C Change Surgical
LLC, 541 F.3d 1136, 1139 (Fed. Cir. 2008) (citing
Trintec Indus., Inc. v. Pedre Promotional Prods.,
Inc., 395 F.3d 1275, 1279 (Fed. Cir. 2005)).
“Second, the assertion of personal jurisdiction must be
consistent with the limitations of the due process
clause.” Id. Thus, in this case, Michigan law
controls the first inquiry, and federal law, as set forth by
the Supreme Court and Federal Circuit, controls the second.
Comp. Laws § 600.701 provides for general personal
jurisdiction over an individual if “any of the
following relationships” exists: (1) presence in the
state at the time when process is served; (2) domicile in the
state at the time when process is served; or (3)
case, Mr. Bollinger's contacts with Michigan do not
satisfy any of these three conditions. Plaintiff also appears
to argue that the Court has general personal jurisdiction
over Mr. Bollinger because he directs the actions of the
corporate defendants, which “maintain a deliberate,
systematic business relationship within this District,
” the Court has jurisdiction. But that the Court has
jurisdiction over the corporate entity does not give it
jurisdiction over a corporate officer by extension. Instead,
as set forth above, the Court must have jurisdiction pursuant
to Michigan's law on general personal jurisdiction over
individuals. Accordingly, the Court lacks general personal
jurisdiction over Mr. Bollinger.
Comp. Laws § 600.705 provides for limited jurisdiction
over individuals if any of the following relationships exist:
(1) transaction of any business within the state; [or] (2)
doing or causing an act to be done, or consequences ...