From UPEK, Inc. v. AuthenTec, Inc., 2010 U.S. Dist. LEXIS 76807 (N.D. Cal. July 6, 2010):

UPEK contends that AuthenTec's entitlement to amend its counterclaims as of right ended twenty-four days after UPEK filed its answer to the counterclaims. UPEK filed an amended complaint on the same day it answered AuthenTec's original counterclaims. AuthenTec argues in essence that the filing of the amended complaint "restarted the clock" with respect to its entitlement to amend its counterclaims as of right. Rule 15(a)(1) provides that "[a] party may amend its pleading once as a matter of course within: (A) 21 days after serving it, or (B) if the pleading is one to which a responsive pleading is required, 21 days after service of a responsive pleading or 21 days after service of a motion under Rule 12(b), (e), or (f), whichever is earlier." Rule 15(a)(3) also provides that "any required response to an amended pleading must be made within the time remaining to respond to the original pleading or within 14 days after service of the amended pleading, whichever is later."

3 Fed. R. Civ. P. 6(d) and 5(b)(2)(E) allows an additional three days within which a party may respond when papers are served via electronic means, as is the case here.

1. 2009 amendment to Rule 15

Rule 15(a)(1) was "amended [in 2009] to make three changes in the time allowed to make one amendment as a matter of course". Adv. Comm. Notes to 2009 Amendments to Fed. R. Civ. P. 15. "First, the right to amend once as a matter of course [under the 2009 amendment] terminates 21 days after service of a motion under Rule 12(b), (e), or (f)." Id. Under the previous version of Rule 15(a)(1), "[s]erving a motion attacking the pleading did not terminate the right to amend, because a motion is not a 'pleading' as defined in [Fed. R. Civ. P. 7]. The right to amend survived beyond decision of the motion unless the decision expressly cut off the right to amend." Id. Thus, under the previous version of Rule 15(a)(1), a plaintiff potentially could amend a complaint as a matter of right months or even years after filing, depending on the evolution of Rule 12 motions in that case. The 2009 amendment to Rule 15 provides a "fixed, predictable, and reasonably short period" for amendments as a matter of right. 3 James Wm. Moore, Moore's Fed. Practice § 15.12[3] (3d ed. 2009).

Second, "the right to amend once as a matter of course is no longer terminated by service of a responsive pleading. The responsive pleading may point out issues that the original pleader had not considered and persuade the pleader that amendment is wise. Just as amendment was permitted by former Rule 15(a) in response to a motion, so the amended rule permits one amendment as a matter of course in response to a responsive pleading." Id. Third, Rule 15 now allows one more day to amend a pleading to which no responsive pleading is allowed and omits the provision that cuts off the right to amend if the action is on the trial calendar.

In addition, the 2009 amendments abrogated Rule 13(f), which "establishes Rule 15 as the sole rule governing amendment of a pleading to add a counterclaim." Adv. Comm. Notes to 2009 Amendments to Fed. R. Civ. P. 15. Under the previous version of the Federal Rules, the amendment of counterclaims had been controlled to some extent by Fed. R. Civ. P. 13(f) and also had been the subject of special attention by the courts. In Nolan v. City of Yonkers, No. 92 CIV. 6067 (KMW), 1990 WL 120685, at *4 (S.D.N.Y. March 19, 1996), the court concluded that the "[d]efendants did not have a right to assert new counterclaims unrelated to the amendment in the answers . . . in the same way that they had a right to assert counterclaims in their original answer." See also Elite Entm't, Inc. v. Khela Bros. Entm't, 227 F.R.D. 444, 446-47 (E.D. Va. 2005) (explaining that a new counterclaim "may be filed without leave only when the amended complaint changes the theory or scope of the case, and then, the breadth of the changes in the amended [counterclaim] must reflect the breadth or the changes in the amended complaint."). However, following the 2009 amendments, Rule 15 alone controls the amendment of counterclaims. Nolan and Elite Entertainment thus appear to be superseded to the extent that they are inconsistent with the current version of Rule 15. ***

A chronology of the operative facts:

January 29 — UPEK files complaint

February 2 — AuthenTec answers and counterclaims

February 23 — UPEK amends complaint, adding Count 12, alleging the unenforceability of one of the patents that is the subject of AuthenTec’s counterclaims (for infringement)

February 23 — UPEK also replies to AuthenTec’s counterclaims

March 12 — AuthenTec answers amended complaint and reasserts same counterclaims filed on February 2

March 29 — UPEK replies to reasserted counterclaims, added a 33rd affirmative defense alleging the unenforceability of another of the patents that is the subject of AuthenTec’s counterclaims

April 22 — AuthenTec refiles its answer unchanged and adds to its counterclaims a new claim for infringement and deletes claims for infringement of two other patents (one of which UPEK claimed to be unenforceable).

Issue: Did the filing of the amended complaint on restart the 24-day clock within which AuthenTec was entitled to amend its counterclaims? Held, no.

3. Practical effect of the amended pleading

It is undisputed that AuthenTec was entitled to amend its counterclaims as of right within twenty-four days of February 23, 2010, when UPEK filed its answer to the original counterclaims. AuthenTec contends that UPEK's amended complaint, filed on the same day, restarted the twenty-four-day clock. The Court concludes otherwise. "When an amended pleading does not add new parties, new claims, or significant new factual allegations, courts are often willing to allow the previously filed response to the original pleading [to] suffice." Justin Kraft & Kraft Piano Servs., LLC v. Arden, No. CV. 07-487-PK, 2009 WL 73869, at *7 (D. Or. Jan. 8, 2009) (quoting 3 Moore's Federal Practice § 15.17 (3d ed. 2008)). See also Stanley Works v. Snydergeneral Corp., 781 F. Supp. 659, 664-665 (E.D. Cal. 1990) (noting that "the option to file an [a]nswer to a [f]irst [a]mended [c]omplaint lies with the defendant"). While UPEK's amended complaint did add a new claim, that claim did not add new subject matter to the action or otherwise affect AuthenTec's original counterclaims. AuthenTec was not obligated to assert any new counterclaims in response to the amended complaint. For the same reasons, UPEK was not entitled to amend as of right its answer to AuthenTec's counterclaims after twenty-four days of its answer to the original counterclaims.

Nonetheless, leave granted to make the amendment.