HUGH B. SCOTT, Magistrate Judge.
This matter has been referred to the undersigned pursuant to 28 U.S.C. § 636(b)(1)(C) (Docket No. 74, Order of Aug. 25, 2011; see also Docket No. 13, initial Referral Order of July 19, 2010). The instant matter before the Court is reconsideration (Docket No. 153) of defendant Optimum Energy's motion (Docket No. 149) for leave to file an Amended Answer to the First Amended Complaint with Counterclaims. Optimum Energy seeks to amend its earlier Answer (Docket No. 57; see Docket No. 149, Optimum Energy Atty. Decl. ¶ 3) seeking to add a Twenty-Fourth Affirmative Defense and a Sixth Counterclaim based upon the False Marking Statute, 35 U.S.C. § 292 (id., Ex. B, redline/strikeout version proposed Second Amended Ans.). Responses to this reconsideration motion were due by November 15, 2013, any reply by November 18, 2013, and this motion was argued on November 19, 2013 (Docket Nos. 154, 163 (minutes)). Parties could submit further replies by November 26, 2013 (Docket No. 163), and the motion was deemed submitted as of November 26, 2013.
Optimum Energy argued that this defense and claim arises from a "recent" decision (Docket No. 149, Optimum Energy Memo. at 2, 5, 8) of the United States Court of Appeals for the Federal Circuit, Frolow v. Wilson Sporting Goods Co. , 710 F.3d 1303 (Fed. Cir. Mar. 15, 2013). Optimum Energy claimed that this amendment will not prejudice plaintiff and there was neither bad faith nor undue delay in raising this amendment (id. at 6-7). It argued that Frolow post-dates the earlier amendment deadline in the Scheduling Order and this Court had suspended the current Scheduling Order during the pendency of the Markman proceeding "and this amendment is presented just as a new scheduling order has been entered, " (id. at 8). Plaintiff's counsel had not consented to this amendment and codefendant Thomas Hartman had not responded to this proposal (Docket No. 149, Optimum Energy Atty. Decl. ¶ 6; see Docket No. 153, Optimum Energy Memo. at 4). Rather than have full briefing for this motion, this Court denied Optimum Energy's initial motion (Docket No. 150).
Optimum Energy then filed the pending motion to reconsider, arguing that counsel intended to raise the issue of amending pleadings at the October 29, 2013, status conference but could (or did) not (Docket No. 153, Ard Decl.; see also id., Vilardo Decl. ¶¶ 4-5; Docket No. 155 (transcript)).
Although parties are familiar with the proceedings in this case, to discuss Optimum Energy's diligence and other factors, a listing of the chronology is in order to show when Optimum Energy's false marking claim arose relative to the proceedings held in this case; this table of events is attached to this Order. This case started as a contract action filed on May 28, 2010 (see Docket No. 1, Compl.; see also Docket Nos. 10, 11, Answers), but with various amendments to pleadings by all parties (see Docket Nos. 55, 56, 57, 58, 59, 60, 61, 68, 111, 112, 113 (amended pleadings); Nos. 15, 17, 48, 61, 70, 71, 78, 97 (motions for leave to amend or to dismiss amended pleadings); Nos. 34, 39, 54, 65, 96, 109 (Orders as to these motions); No. 84 (Report & Recommendation)), this case has become a somewhat involved patent infringement/validity action with contract and other claims attached. Some detailed discussion of plaintiff's amendment proceedings also is discussed below.
Meanwhile, in September 2011, Congress amended 35 U.S.C. § 292 to add a civil damages cause of action for false marking of patents, id. § 292(b). The new provision states that "a person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury, " id. This amendment applies "to all cases, without exception, that are pending on, or commenced on or after, the date of the enactment of this Act, " or September 16, 2011, Pub. L. No. 112-29, § 16(b)(4), 125 Stat. 329.
Motion for Reconsideration
Optimum Energy now argues that it raised its intention to amend its pleading to assert a false marking claim in the Markman hearing (Docket No. 153, Optimum Energy Memo. at 4, quoting Docket No. 137, Tr. of May 30, 2013, proceeding at 65-66). On October 8, 2013, Optimum Energy's counsel circulated an e-mail stating that it intended to so move and inquired about the parties' consent (Docket No. 153, Ard Decl. ¶ 3, Ex. A). During the October 29, 2013, status conference, Joel Ard, Optimum Energy's counsel, appeared by telephone (id. ¶ 4; see also Docket No. 146, Order of Oct. 9, 2013). Ard says that he intended to mention this motion for leave to amend during the conference but, when he attempted to interject this, apparently was disconnected from the conference and the conference then concluded (Docket No. 153, Ard Decl. ¶¶ 4-5; see also id., Vilardo Decl. ¶¶ 4-5).
Optimum Energy reasserts that no one would be prejudiced by this amendment (id., Optimum Energy Memo. at 3), that the amendment would not require changes to discovery and other deadlines or require additional discovery (id. at 2-3). Optimum Energy contends that it was diligent in raising this issue, first mentioning it during the May 30, 2013, Markman hearing, and intending (but eventually not) discussing it at the next proceeding to do so (the October 29, 2013, conference, id. at 4, 5), concluding that it "acted logically, properly, and promptly in seeking amendment, respecting the delay in the schedule and the possibility that any proposed amendment could have been rendered moot by the Markman decision" (id. at 5).
In opposing reconsideration, plaintiff discusses the nature of the October 29, 2013, conference (Docket No. 160, Perlman Decl. ¶¶ 2-3, ex.; id., Kulik Decl. ¶¶ 3-4; Docket No. 161, Pl. Memo. at 3-4, 5). Plaintiff notes that during the parties' conference prior to the October 29 status conference, no mention was made that leave to amend pleadings would be sought or provision of a deadline for such an action (Docket No. 160, Perlman Decl. ¶ 4). Plaintiff does not comment on Optimum Energy's counsel's October 8 e-mail. As plaintiff notes, Optimum Energy did not write to this Court after the status conference to indicate that this issue was forgotten (id., Perlman Decl. ¶ 5).
Plaintiff argues that a three-month delay is seeking leave to amend failed to demonstrate diligence and good cause (Docket No. 161, Pl. Memo. at 4 & nn. 12, 13), Gullo v. City of N.Y., No. 12-4523-cv, 2013 U.S.App. LEXIS 19983, at *3 (2d Cir. Oct. 1, 2013); Volunteer Fire Ass'n of Tappan, Inc. v. County of Rockland, No. 09-CV-4622, 2010 U.S. Dist. LEXIS 125394, at *11-14 (S.D.N.Y. Nov. 24, 2010). Plaintiff also contends that neither Rule 15 nor Rule 60(b) provide bases for granting Optimum Energy relief (Docket No. 161, Pl. Memo. at 2-3, 5-7). Plaintiff reminds that attorney inadvertence does not constitute good cause, Carnite v. Granada Hosp. Group , 175 F.R.D. 439, 448 (W.D.N.Y. 1997) (Foschio, Mag. J.) (Report & Recommendation), adopted, 175 F.R.D. at 441 (Arcara, J.) (id. at 6 & n.18). Plaintiff rejects reliance on Rule 60(b)(6) and its catch-all provision when a more specific provision is relied upon, as here by Optimum Energy relying on Rule 60(b)(1) (id. at 6 & n.20); United States v. International Bhd. Teamsters , 247 F.3d 370, 392-93 (2d Cir. 2001).
As noted above, Hartman expressed no objection to Optimum Energy's amendment (Docket No. 159).
In its reply, Optimum Energy argues that the relevant period to consider for its diligence in moving for leave to amend was after the Markman claim was decided (Docket No. 162, Ard Decl. ¶¶ 3-5; Docket No. 162, Optimum Energy Reply Memo. at 1-4), or from October 8, 2013. Optimum Energy contends that Plaintiff was allowed leave to amend its pleadings twice after the March 2011 deadline (Docket No. 162, Ard Decl. ¶¶ 13-15). Optimum Energy then notes the brevity of the October 29, 2013, status conference (id. ¶¶ 21-23). It argues that it would have been futile to raise the issue of extending the Scheduling Order to allow for amended pleadings because plaintiff would not consent to leave being granted (id. ¶¶ 24-29; No. 162, Optimum Energy Reply Memo. at 4-5).
During oral argument, Optimum Energy reiterated that it was diligent in moving for leave to amend, seeking to do so once the patent allegations were clearly defined and upon notice to this Court and parties (during the Markman hearing of May 30 and correspondence once the claim construction was final on October 8). Rather than have seriatim motions for leave to amend as the Markman process was completed, Optimum Energy chose to wait, thus the relevant period of diligence should begin when claim construction was finalized. Since there was uncertainty that plaintiff's arguments were addressed in the reply, parties were given a chance to supplement those replies (by November 26, 2013) (Docket No. 163).
In its further reply, Optimum Energy points out that this Court allowed plaintiff to amend outside of the Scheduling Order, stating that such an amendment was timely given the disposition of a motion to dismiss reset the procedural landscape (see Docket No. 164, Optimum Energy Supp'al Memo. at 1, 4). Thus, Optimum Energy waited until the Markman decision was rendered and then promptly moved to amend, sending the proposed amendment to plaintiff three weeks before filing the motion (id. at 2, 3). Optimum Energy argues that diligence under Rule 16 is not the only factor, that this Court may consider other relevant factors (such as prejudice to the opponent) in deciding whether or not to extend the Scheduling Order an allow otherwise untimely amendment (see id. at 6, discussing Kassner v. 2nd Ave. Delicatessen, Inc. , 496 F.3d 229, 244 (2d Cir. 2007)), arguing again that there would be no prejudice to plaintiff in this proposed amendment (id. at 2, 9-10). Optimum Energy distinguishes the cases cited by plaintiff that rely solely upon the movant's diligence as either predating Kassner or applying a prejudice analysis in denying leave to amend or extend the time to do so (id. at 7-9), discussing the decisions by the Magistrate Judge,  District Judge,  and the Second Circuit in Gullo v. City of New York, to explain the Second Circuit's Summary Order in that case (id. at 7 n.3, Ex. A). Optimum Energy also criticizes plaintiff's initial diligence in waiting over a year in amending its pleadings to allege patent invalidity (id. at 5 n.2).
Plaintiff meanwhile responds that its motions to amend were distinct from the proposal by Optimum Energy, stating that the first amendment was unopposed and the second was made one day after this Court's decision granting dismissal on pleading grounds (Docket No. 165, Pl. "Final" Reply Memo. at 1). Plaintiff questions when Optimum Energy learned of Frolow (id. at 1-2). It dismisses Optimum Energy's argument that defendant was avoiding multiple motions for leave to amend as "after-the-fact rationalization" not discussed in the prior motions (id. at 2). Plaintiff also disputes Optimum Energy's attempt to distinguish the Southern District of New York Rule 16 cases plaintiff cites (see Docket No. 161, Pl. Memo. at 4 nn. 12-15) as predating 2007 (when the Second Circuit decided Kassner) since two of the cases were decided after 2007 (Docket No. 165, Pl. "Final" Reply Memo. at 2-3). Plaintiff concludes that the single issue is whether Optimum Energy moved with diligence from the Federal Circuit rendering the Frolow decision in seeking to amend the pleading, answering this in the negative since Optimum Energy had delayed five to seven months (depending upon the relevant starting point) in making this motion (id. at 3-4).
I. Applicable Standards
A. Reconsideration, Rule 60(b)
Optimum Energy cites two provisions of Federal Rule of Civil Procedure 60(b) to support reconsideration. First, this Court may (on motion and "just terms") relieve a party from an Order or proceeding for "mistake, inadvertence, surprise, or excusable neglect, " or for "any other reason the justifies relief, " Fed.R.Civ.P. 60(b)(1), (6). As this Court noted "the decision whether to grant or deny a motion to reconsider lies in this Court's discretion.... Motions for reconsideration are not to be used as a means to reargue matters already disposed of by prior rulings or to put forward additional arguments that could have been raised before the decision, " or "to give the unhappy litigant one additional chance to sway the judge, " 1199 SEIU Pension Fund v. Eastern Niagara Hosp., No. 13CV323, 2013 U.S. Dist. LEXIS 144047, at *2-3 (W.D.N.Y. Oct. 4, 2013) (McCarthy, Mag. J.) (quoting United States v. Kasper, No. 10CR318, 2012 U.S. Dist. LEXIS 90949, at *2-3 (W.D.N.Y. June 29, 2012) (Skretny, Ch. J.) (citations omitted); see McCarthy v. Manson , 714 F.2d 234, 237 (2d Cir. 1983); Salamon v. Our Lady of Victory Hosp. , 867 F.Supp.2d 344, 360 (W.D.N.Y. 2012) (Skretny, Ch. J.) (denying reconsideration).
A motion for relief under Rule 60(b) is "generally granted only upon the showing of exceptional circumstances, " Mendell v. Gollust , 909 F.2d 724, 731 (2d Cir. 1990), aff'd, 501 U.S. 115 (1991); Salamon, supra , 867 F.Supp.2d at 360; Tafari v. Stein, No. 01CV821, 2009 U.S. Dist. LEXIS 39453, at *5 (W.D.N.Y. May 8, 2009) (Scott, Mag. J.) (see also Docket No. 161, Pl. Memo. at 1 n.2). As noted by the United States Court of Appeals for the Second Circuit, "the standard for granting [a motion for reconsideration] is strict, and reconsideration will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked-matters, in other words, that might reasonably be expected to alter the conclusion reached by the court, " Shrader v. CSX Transp. , 70 F.3d 255, 257 (2d Cir. 155).
B. Amendment and Amended Scheduling Order, Rules 16, 15
Although Optimum Energy argues that leave to amend here is governed by Rule 15 and its liberal allowance for such amendments (Docket No. 153, Notice of Motion), and this Court discussed the Rule 15 standard in the Order under consideration (Docket No. 150, Order of Nov. 1, 2013, at 2), key here is the pretrial Scheduling Order and the deadline it set for amendment of pleadings, governed by Rule 16. Parties seeking leave to amend a pleading after the time scheduled for such motions is making an implied second motion, that of leave to amend out of time from the Scheduling Order (or for amendment of the Scheduling Order to allow such an amended pleading).
Under the last version of the Scheduling Order which had a deadline for amending pleadings, such amendments were due by March 18, 2011 (Docket No. 43). That March 18, 2011, deadline passed without being stayed or altered. Subsequent Scheduling Orders (Docket Nos. 122 (first Amended Scheduling Order with Markman schedule and subsequent events), 148 (Second Amended Scheduling Order)) which were stayed while other proceedings were completed, do not have a deadline for amending pleadings, with the current Second Amended Scheduling Order (Docket Nos. 148, 151) having the first event the deadline for completion of discovery.
As noted by other courts, the purpose of Rule 16 is "to offer a measure of certainty in pretrial proceedings, ensuring that at some point both the parties and the pleadings will be fixed, " Parker v. Columbia Pictures Indus. , 240 F.3d 326, 339-40 (2d Cir. 2000) (citations and quotations omitted); Gullo v. City of N.Y., No. 10 Civ. 8516, Docket No. 16, Order at 14 (S.D.N.Y. May 21, 2012) (Freeman, Mag. J.) (see also Docket No. 164, Ex. A), aff'd, 2012 WL ...