United States District Court, W.D. Washington, Seattle
ORDER DENYING PLAINTIFF'S MOTION FOR LEAVE TO
S. LASNIK, UNITED STATES DISTRICT JUDGE
matter comes before the Court on “National Products
Inc.'s Motion for Leave to Amend Complaint.” Dkt. #
75. Having reviewed the memoranda, declarations, and exhibits
submitted by the parties as well as the remainder of the
record, the Court finds as follows:
deadline for amending pleadings in this matter was July 13,
2016. Pursuant to Fed.R.Civ.P. 16(b)(4), case management
deadlines established by the Court “may be modified
only for good cause and with the judge's
consent.” The case management orders in this case
likewise state “[t]hese are firm dates that can be
changed only by order of the Court, not by agreement of
counsel or the parties. The Court will alter these dates only
upon good cause shown . . . .” Dkt. # 16 at 2; Dkt. #
72 at 2; Dkt. # 73 at 1-2. In determining whether a litigant
has shown good cause, the Court:
primarily considers the diligence of the party seeking the
amendment. The district court may modify the pretrial
schedule “if it cannot reasonably be met with the
diligence of the party seeking the extension.”
Fed.R.Civ.P. 16 advisory committee's notes (1983
amendment) . . . .
Johnson v. Mammoth Recreations, Inc., 975 F.2d 604,
609 (9th Cir. 1992). See also In re W. States Wholesale
Nat. Gas Antitrust Litig., 715 F.3d 716, 737 (9th Cir.
a half weeks before the deadline for amending pleadings,
defendant Arkon unequivocally rejected plaintiff's
contention that the redesigned products were accused in this
matter. Dkt. # 30-1 at 9-10. National Products did nothing.
When National Products propounded discovery requests seeking
information specifically about the redesigned products in
August 2016, Arkon objected, and the Court agreed that the
redesigned products - which do not contain
“double-socket mount arms tapered in the middle like an
hourglass” - fall outside the scope of this litigation.
National Products now seeks to amend the complaint to add
claims against the redesigned products.
has not been diligent. At the very least, National Products
should have moved to amend the complaint when it was told on
June 24, 2016, that there was a dispute regarding the scope
of its claims. The only explanation for its failure is that
National Products was apparently confident that the list of
product numbers in the complaint would cover all future
iterations of products offered under that number, even if the
redesigned products did not contain a specified feature of
the trade dress. Plaintiff ignored Arkon's position - and
the case management deadlines - at its peril. Nor does the
record support National Products' contention that it held
a good faith, reasonable belief that its complaint
encompassed the redesigned products. The complaint was
written before the redesigned products existed, it
specifically describes plaintiff's trade dress as an
hourglass shape, and it identifies the infringing products as
those that are “tapered in the middle like an
hourglass.” Arkon redesigned its products so that they
no longer tapered in the middle in an effort to avoid any
potential trademark issue, telling National Products of its
purpose and providing diagrams and product samples for
review. If National Products thought Arkon's efforts had
missed the mark and it intended to pursue infringement claims
against the redesigned products, it inexplicably remained
silent for more than six months. The point at which National
Products decided to pursue infringement claims against the
redesigned products is unclear, but its belief that it could
do so without amending its complaint was not well-founded.
Having failed to make an effort to amend the pleadings in a
timely manner even after this dispute came into the open,
National Products cannot satisfy the Rule 16 good cause
diligence has not been shown, the inquiry should end and the
motion should be denied. In re W. States Wholesale Nat
Gas Antitrust Litig., 715 F.3d at 737 (quoting
Johnson, 975 F.2d at 609). That conclusion does not
change if the Court considers the prejudice that modification
of the scheduling order would cause Arkon at this point.
Discovery is now closed. National Products belatedly issued a
supplemental expert report that includes opinions regarding
the new design. Dkt. # 55-2. Through this motion, National
Products seeks to expand the scope of this litigation and go
to trial based solely on its own evidence, without allowing
Arkon the opportunity to test plaintiff's theories
regarding consumer confusion or to conduct discovery.
Arkon's ability to defend the new claims would be
compromised. Also troubling is the fact that expanding the
nature of plaintiff's claims would necessarily put before
the jury a remedial measure covered by Fed.R.Civ.P. 407.
While it is possible that the redesign will be admissible at
trial to prove secondary meaning, it is not clear whether
secondary meaning is in dispute in this litigation. The
amendment proposed by National Products would force the
admission of prejudicial remedial measure evidence even if
secondary meaning were not disputed.
of the foregoing reasons, plaintiff's motion for leave to
extend the case management deadline and amend the complaint
(Dkt. # 75) is DENIED.
 Rule 16 was amended in 1983 to require
scheduling orders that govern pre-trial as well as trial
procedure. The purpose of the change was to improve the
efficiency of federal litigation: leaving the parties to
their own devices until shortly before trial was apparently
costly and resulted in undue delay.
 National Products makes much of the
fact that Arkon was willing to provide information regarding
the redesigned products up until that time. Arkon's
openness is not surprising given the circumstances. Arkon
redesigned its products in an attempt to resolve this dispute
and to avoid any possibility of continuing infringement.
Providing information regarding the details of the design
process, when the original design went out of production, and
total sales data while the original design was being phased
out was important to settlement efforts and/or is relevant to
plaintiff's claims against the original design.
 In the alternative, the Court finds
that justice does not require leave to amend under Rule 15.
Leadsinger, Inc. v. BMG Music Publ'g, 512 F.3d