UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

MEDTECH PRODUCTS, INC.,

 Plaintiff,

v.

RANIR, LLC, et al.,

 Defendants.

07 CV 03302-WP4-LMS

ECF Case

MEDTECH PRODUCTS, INC.,

 Plaintiff,

v.

DENTEK ORAL CARE, INC.,

 Defendant.

 

MEDTECH PRODUCTS, INC.,

 Plaintiff,

v.

POWER PRODUCTS, INC.,

 Defendant.

DENTEK ORAL CARE INC.’S OPPOSITION TO PLAINTIFF’S 

MOTION FOR LEAVE TO FILE AN AMENDED COMPLAINT

Defendant DenTek Oral Care, Inc. (“DenTek”), hereby respectfully opposes Medtech 

Products, Inc.’s (“Medtech” or the “Plaintiff”) Motion for Leave to File an Amended Complaint

for the reasons set forth below.

FACTUAL BACKGROUND

The Complaint in this matter was filed with the Court on April 24, 2007, and alleges 

patent, trademark and copyright infringement, unfair competition, unjust enrichment, and 

violations of NY Gen. Bus. § 349(h). DenTek’s Answer and Counterclaim was filed on May 30,

2007 shortly after Medtech’s action against DenTek was consolidated with the other two actions 

that appear in the caption. A Scheduling Conference was held before Judge Brieant the 

following day during which Ranir’s counsel informed the Court that settlement was imminent in 

its action. At the Court’s suggestion and to avoid the need for the Court to decide Medtech’s 

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request for a preliminary injunction in its action against Power Products, Inc., counsel for 

DenTek, Power Products, and Medtech retired to the jury room and negotiated an accelerated 

case schedule addressing the claims in issue at that time. A copy of that schedule, which was 

approved and entered by the Court, is attached as Exhibit A. 

When the schedule was presented, Medtech did not inform the Court that it would be 

adding a new party, Ms. Kelly Kaplan, and new claims – not only against Ms. Kaplan but also 

DenTek. These additional causes of action against DenTek raise completely new legal theories 

and require investigation of additional facts. Specifically, Medtech’s new counts are for breach 

of contract by Ms Kaplan, tortuous interference with contractual relations by DenTek, and civil 

conspiracy by both DenTek and Ms. Kaplan. The addition of these new counts essentially 

transforms this action from an action for patent infringement and allegedly improper use of the 

NIGHTGUARD mark into a case directed to misappropriation of Medtech’s confidential 

business information. Each of the newly added counts, Counts VII, VIII, and IX allege as much. 

(See Count VII at ¶ 106 – “Ms. Kaplan has breached the agreement by providing DenTek with 

Medtech’s confidential and proprietary information”; Count VIII at ¶ 113 – “Medtech has been 

damaged by Ms. Kaplan’s breach as DenTek has brought its infringing product to the market 

with the assistance of unauthorized access to Medtech’s confidential and proprietary 

information”; Count IX at ¶ 116 – “DenTek and Ms. Kaplan conspired, agreed, and planned to 

use Medtech’s confidential and proprietary information...”) The present schedule does not 

permit for proper discovery in an action alleging improper use of confidential or proprietary 

information.

During the meet and confer between the parties and counsel who were present, Medtech 

told DenTek that it was considering adding Ms. Kaplan and asserting that she had breached 

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contractual obligations to Medtech respecting confidential information, and reserved the right to 

add her. However, Medtech refused to outline the precise nature of the claims it was considering

and, contrary to what is suggested in Plaintiff’s Memorandum of Law in Support of its Motion 

for Leave to File an Amended Complaint at page 5, these putative claims were not factored into 

the case schedule by DenTek. Nor could they have been, when Ms. Kaplan had yet to be named 

as a defendant and yet to be represented by counsel, nor had the nature of the claims against her 

been explained. Plainly, nothing was or could have been agreed concerning an accelerated 

discovery schedule or trial in the absence of the party whom Medtech, at that time, was only 

considering adding. 

ARGUMENT

While motions to amend are liberally granted, the Supreme Court has held that, in the 

discretion of the district court, leave to amend need not be allowed if there is some “apparent or 

declared reason – such as 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.” Foman v. 

Davis, 371 U.S. 178, 182 (1962); Credit Suisse First Boston LLC v. Coeur d'Alene Mines Corp., 

03 Civ. 9547, 2004 U.S. Dist. LEXIS 25260, *7 (S.D.N.Y. Dec. 9, 2004) (“amendment is 

properly denied in certain circumstances, such as when the proposed amendment is made in bad 

faith or would unduly prejudice another party or unjustifiably interfere with the court’s 

scheduling orders, or when the amendment would be futile.”) 

To provide Ms. Kaplan and her counsel time to oppose this attempt to draw her into this 

action which presently features claims unrelated to the allegations now made against her by 

Medtech, and to otherwise prepare for discovery and trial, and to further provide DenTek time to 

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prepare for trial in relation to the newly raised allegations, leave to file the amended complaint

should not be granted unconditionally. 

First, plaintiff should be required to demonstrate that it has some confidential information 

in which it has some claimed proprietary interest and can assert has been misappropriated by a 

defendant. On its face, the proposed Amended Complaint suggests that plaintiff cannot make 

such a claim by making vague allegations on “information and belief.” Second, if plaintiff can 

state a claim that would survive a motion to dismiss, leave should not be granted without 

simultaneously vacating the deadlines for completing discovery and the trial date, with new dates 

to be set with the participation of Ms. Kaplan and her counsel. The Civil Case Discovery Plan 

and Scheduling Order (Docket No. 17) as entered by the Court cannot stand when an individual 

about to be named as a party did not participate, DenTek did not and could not factor new claims 

and a new party in the schedule, and the Court itself did not have an understanding of Plaintiff’s 

intentions to add a new party and claims. 

The Scheduling Order provides a very aggressive series of deadlines (e.g., claim 

construction briefing in about one month, discovery closes in about three months) in order to be 

trial-ready by October 19, 2007. To hold Ms. Kaplan to this deadline and the other approaching 

deadlines, when she and her counsel had no opportunity to participate in the negotiation of the 

Scheduling Order, denies Ms. Kaplan the right to mount an effective defense against Medtech’s 

actions.

Further, Plaintiff’s proposed amended complaint seeks to add two new counts against 

DenTek; Count VIII, tortious interference with contractual relations, and Count IX, civil 

conspiracy. Underlying each of these claims are Medtech’s factual assertions that “DenTek has 

brought [an allegedly] infringing product to the market with the assistance of unauthorized 

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access to Medtech’s confidential and proprietary information” (Proposed Amended Complaint, 

at ¶ 113) and “DenTek and Ms. Kaplan conspired, agreed, and planned to use Medtech’s 

confidential and proprietary information.” Id. at ¶ 116. Allowing Medtech to add these claims 

of vastly different scope than those presently pending in the action in view of the present 

abbreviated schedule unduly prejudices DenTek from adequately discovering the nature of 

Medtech’s new claims and preparing its defense. 

These counts are entirely based upon Plaintiff’s alleged “information and belief,” and 

Plaintiff has made no showing that any such information was unavailable prior to the filing of the 

motion to amend the complaint. There is no suggestion that Medtech can specifically identify 

the purported trade secret or “confidential and proprietary information” underlying the 

accusations in its proposed Amended Complaint. Such failure is fatal to Medtech’s claims. 

Utah Med. Prods., Inc. v. Clinical Innovations Assocs., Inc. 2000 U.S. App. LEXIS 31756, *15 

(Fed. Cir. Dec. 13, 2000) (“The threshold issue in every case is whether, in fact, there is a trade 

secret to be misappropriated.”) If Medtech cannot do so when challenged to do so by a motion 

to dismiss, amendment of its Complaint would be futile. If leave is granted, at a minimum, 

Medtech should be required to identify what “confidential and proprietary information” it 

believes was improperly taken by Ms. Kaplan and/or used by DenTek before being permitted to 

discover any of defendants’ confidential information. In this regard, the law is well-settled.1

 We 

 

1

See, e.g., Engelhard Corp. v. Savin Corp., 505 A.2d 30, 33 (Del. Ch. 1986) (“plaintiff will 

normally be required first to identify with reasonable particularity the matter which it claims 

constitutes a trade secret before it will be allowed ... to compel discovery of its adversary’s trade 

secrets.”); Porous Media Corp. v. Midland Brake, Inc., 187 F.R.D. 598, 599-600 (D. Minn. 

1999) (ordering plaintiff to list the trade secrets allegedly misappropriated with sufficient 

specificity to obtain an injunction, as adequate discovery could not be conducted in the absence 

of specific disclosure); Staffbridge, Inc. v. Gary D. Nelson Assocs., Inc., 2004 Mass. Super. 

LEXIS 215 (Mass. Super. Ct. June 11, 2004) (requiring plaintiff to clearly designate what it 

considers its trade secret before allowing discovery of the allegedly infringing material).

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propose that Medtech provide a detailed description of the confidential information purportedly 

proprietary to it which “upon information and belief” has supposedly been misappropriated, on 

an attorneys’ eyes only basis to DenTek’s counsel and the Court, before leave is granted.

 For these reasons, Plaintiff’s Motion for Leave to File an Amended Complaint should be 

denied. Alternatively, all deadlines in the Scheduling Order should be held in abeyance, and a 

second scheduling conference involving all parties in the action should be held after a reasonable 

period of time to allow counsel for Ms. Kaplan to become familiar with the case. In any revised 

scheduling order, Plaintiff should be required to identify with particularity the “confidential and 

proprietary information” that is the subject of its new claims before proceeding with any 

discovery from defendants. 

Respectfully submitted,

Dated: June 20, 2007 PROSKAUER ROSE LLP

By: s/ Alan Federbush

James H. Shalek 

Alan Federbush 

Gregory J. Sieczkiewicz

1585 Broadway

New York, New York 10036-8299

(212) 969-3000 (phone)

(212) 969-2900 (fax)

Attorneys for Defendant

 DenTek Oral Care, Inc. 

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CERTIFICATE OF SERVICE

I hereby certify that on June 20, 2007, the foregoing DENTEK ORAL CARE INC.’S 

OPPOSITION TO PLAINTIFF’S MOTION FOR LEAVE TO FILE AN AMENDED 

COMPLAINT was served upon the following recipients by use of the Court’s ECF system:

Attorneys for Plaintiff Medtech Products, Inc.:

Karl Geercken

Amy Manning

ALSTON & BIRD LLP

90 Park Avenue

New York, NY 10016

Attorneys for Consolidated Defendant Power Products, Inc.:

Anthony P. La Rocco

Kathy Dutton Helmer

Kirkpatrick & Lockhart Preston Gates Ellis, LLP 

One Newark Center, 10th Floor 

Newark, NJ 07102

Attorneys for Consolidated Defendant Ranir, LLC.:

Rebecca Marie McCloskey

Wilmer Cutler Pickering Hale & Dorr LLP

399 Park Ave 

New York, NY 10022 

and on the following recipients by overnight mail:

W. Edward Ramage

BAKER, DONELSON, BEARMAN

 CALDWELL & BERKOWITZ, P.C.

Commerce Center, Suite 1000

211 Commerce Street

Nashville, TN 37201

Michael S. Connor

ALSTON & BIRD LLP

101 South Tyron Street, Suite 4000

Charlotte, NC 28280

Case 7:07-cv-03304-KMK-LMS Document 15 Filed 06/20/2007 Page 7 of 8
Carl M. Davis, II

BAKER, DONELSON, BEARMAN

 CALDWELL & BERKOWITZ, P.C.

Six Concourse Parkway, Suite 3100

Atlanta, GA 30328

Micheline Kelly Johnson

Clinton P. Sanko

BAKER, DONELSON, BEARMAN

 CALDWELL & BERKOWITZ, P.C.

633 Chestnut Street

Chattanooga, TN 37450

 s/ Alan Federbush

 Alan Federbush

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