District Court Finds Plaintiff Failed to Meet Pre-Filing Meet and Confer Requirements


In SSMiller IP LLC v. Sugar Beets LLC, 2-22-cv-02576 (CDCA Oct. 21, 2022) District Judge George H. Wu of the Central District of California found the parties did not sufficiently meet and confer as required by the Local Rules before Plaintiff filed its motion to dismiss Defendant’s noninfringement and invalidity counterclaims. The Court, in its discretion, still considered the motion to dismiss but ultimately summarily denied plaintiff’s motion.

In the case, Plaintiff sued Defendant on April 18, 2022 accusing Defendant of infringing U.S. Patent Nos. 8,510,699 and 10,165,844 (“the ’699 patent” and “the ’884 patent”). On June 13, 2022, Defendant answered and asserted four counterclaims for: (1) declaratory judgment of non-infringement of the ’699 patent; (2) declaratory judgment of non-infringement of the ’884 patent; (3) declaratory judgment of invalidity of the ’699 patent; and (4) declaratory judgment of invalidity of the ’884 patent. On July 12, 2022, the Court issued a scheduling order pursuant to Federal Rule of Civil Procedure 26(f) which stated that the “[l]ast day to amend without proceeding under Fed. R. Civ. P. 16 [is] September 16, 2022.”

On September 16, 2022, the last day to amend per the Scheduling Order without proceeding under Federal Rule of Civil Procedure 16, Defendant filed its First Amended Counterclaim (“FAC”) adding a third-party defendant and asserting four new and additional counterclaims for: (1) violation of the Lanham Act; (2) violation of California’s Unfair Competition Law; (3) violation of California’s False Advertising Law, and (4) false designation of origin. Plaintiff then moved to dismiss Defendant’s four newly added counterclaims in the FAC under Federal Rule of Civil Procedure 15 on grounds that Defendant failed to obtain Plaintiff’s consent or leave of court to file its FAC.

Central District of California Local Rule 7-3 requires “counsel contemplating the filing of any motion shall first contact opposing counsel to discuss thoroughly, preferably in person, the substance of the contemplated motion and any potential resolution. The conference shall take place at least seven (7) days prior to the filing of the motion. If the parties are unable to reach a resolution which eliminates the necessity for a hearing, counsel for the moving party shall include in the notice of motion a statement to the following effect: ‘this motion is made following the conference of counsel pursuant to L.R. 7-3 which took place on (date).’” If the moving party does not comply with Local Rule 7-3, the Court may refuse to hear the motion.

Here, the Court found that Plaintiff did not comply with Local Rule 7- 3 before filing its motion to dismiss. Specifically, Plaintiff’s counsel left Defense counsel a voicemail on September 22, 2022, that indicated Plaintiff’s intent to file the motion, but never actually spoke with Defense counsel. Plaintiff then filed their motion the very next day, on September 23, 2022. Thus, the Court found that the parties did not and could not have “thoroughly” discussed “the substance of the contemplated motion,” as required by the local rules. However, the Court, in its discretion, still decided to consider that motion and rule on the merits of the dispute despite the failure to comply with the Local Rules. But, the Court stated moving forward, any future failure to engage in the required meet-and confer process may result in appropriate sanctions, including refusal to hear a motion.

As to the substance of the motion to dismiss, the Plaintiff moved to dismiss the four new counterclaims in the FAC pursuant to Federal Rule of Civil Procedure 15 because Defendant had failed to obtain Plaintiff’s consent or leave of court to file its FAC. However, the Court found that because Defendant was free to amend up until September 16, 2022 per the Court’s own Scheduling Order and Defendant filed its FAC on that deadline, the Defendant’s FAC was properly filed under the Scheduling Order. Thus, the Court summarily denied the motion to dismiss.

This case is a strong reminder to pay close attention to all procedural rules governing a case, including specifically all Local Rules of the District and any Scheduling Orders and/or Standing Orders issued by the Judge. Failure to do so can result in denial of a motion, a court refusing to hear a motion, or other sanctions.

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