Tessera, Inc. v. Motorola, Inc. et al

Filing 280

ORDER GRANTING TESSERAS MOTION FOR LEAVE TO AMEND TO ASSERT CLAIMS AGAINST QUALCOMM CDMA TECHNOLOGIES ASIA PACIFIC PTE. LTD. Signed by Judge Claudia Wilken on 8/7/2013. (ndr, COURT STAFF) (Filed on 8/7/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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TESSERA, INC.,

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No. C 12-692 CW

Plaintiff,

ORDER GRANTING
TESSERA’S MOTION
FOR LEAVE TO AMEND
TO ASSERT CLAIMS
AGAINST QUALCOMM
CDMA TECHNOLOGIES
ASIA PACIFIC PTE.
LTD.

v.

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MOTOROLA, INC.; QUALCOMM, INC.;
FREESCALE SEMICONDUCTOR, INC.;
and ATI TECHNOLOGIES, ULC,

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Defendants.

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/

United States District Court
For the Northern District of California

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Plaintiff Tessera, Inc. moves for leave to amend its
complaint to add claims against Defendant Qualcomm, Inc.’s
subsidiary, Qualcomm CDMA Technologies Asia Pacific Pte. Ltd.
(QCTAP).1

Qualcomm opposes the motion.

under submission on the papers.

The Court took the motion

Having considered the papers

filed by Tessera and Qualcomm, the Court GRANTS the motion.
LEGAL STANDARD

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The case management order in this action provided that the
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deadline to add additional parties or claims was April 9, 2012.
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Docket No. 114.

Under Rule 16(b), “[a] schedule shall not be

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modified except upon a showing of good cause and by leave of the
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Tessera also seeks to make certain other changes in its
proposed amended complaint, namely: (1) to delete the allegations
and claims against defendant Motorola, Inc., which have been
dismissed with prejudice; (2) to delete the request for injunctive
relief because the patents-in-suit have expired during the
pendency of this litigation; and (3) to add allegations of
activity in California and remove corresponding allegations about
Texas because the case was transferred to this district from
Texas. No opposition has been raised to these proposed
amendments. Accordingly, Tessera is granted leave to make these
changes.

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district judge.”

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been filed, a party’s ability to amend the pleadings is “governed

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by Rule 16(b), not Rule 15(a).”

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Inc., 975 F.2d 604, 608 (9th Cir. 1992).

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here, a party seeks to amend a pleading after the date specified

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in a scheduling order, it must first show “good cause” for the

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amendment under Rule 16(b).

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Fed. R. Civ. Pro. 16(b).

Where a schedule has

Johnson v. Mammoth Recreations,
Therefore, where, as

Id.

In order to determine whether good cause exists, courts
primarily consider the diligence of the party seeking the

United States District Court
For the Northern District of California

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modification.

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232 F.3d 1271, 1294 (9th Cir. 2000).

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participate from the outset in creating a workable Rule 16

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scheduling order but they must also diligently attempt to adhere

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to that schedule throughout the subsequent course of the

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litigation.”

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Cal. 1999).

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Id. at 609; see also Coleman v. Quaker Oats Co.,
“[N]ot only must parties

Jackson v. Laureate, Inc., 186 F.R.D. 605, 607 (E.D.

If good cause is shown, the party must next demonstrate that

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the amendment is proper under Rule 15.

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Under that rule, courts consider five factors when assessing the

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merits of a motion for leave to amend: undue delay, bad faith,

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futility of amendment, prejudice to the opposing party and whether

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the plaintiff has previously amended the complaint.

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Nev. Sys. of Higher Educ., 555 F.3d 1051, 1055 n.3 (9th Cir.

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2009).

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Johnson, 975 F.2d at 608.

Ahlmeyer v.

DISCUSSION
Qualcomm does not argue that it would be prejudiced by

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Tessera’s proposed amendment, that Tessera is acting in bad faith,

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that the proposed amendment would be futile or that Tessera has
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repeatedly failed to cure deficiencies in the complaint through

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amendment.

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seeking to amend the complaint.

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Instead, Qualcomm contends that Tessera has delayed in

Tessera maintains that it was diligent in seeking to amend

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the complaint.

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contrary to Qualcomm’s prior representations, “QCTAP was the

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corporate entity directly responsible for accepting orders from

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and sending invoices to several customers in the United States,”

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and that it filed the instant motion on February 27, 2013.

It argues that it learned in February 2013 that,

Mot.

United States District Court
For the Northern District of California

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at 8-9.

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and its connection with LG International (America), Inc., a

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customer in the United States, from documents disclosed in the

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investigation initiated by the ITC in April 2007.

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Qualcomm argues that Tessera had prior notice of QCTAP

Opp. at 4.

Tessera explains that it first learned about QCTAP’s role

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interacting with United States customers, and resulting potential

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liability, shortly before it filed the instant motion.

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that, in December 2012 and February 2013, Qualcomm had produced a

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revised version of a sales spreadsheet that disclosed additional

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information, including columns labeled “operating unit” and “bill

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to” country.

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spreadsheet, “QCTAP OU” appeared in the “operating unit” column

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and “US” appeared in the “bill to” column.

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When Tessera deposed Qualcomm’s Rule 30(b)(6) witness in February

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2013, she confirmed that the notation in the “operating unit”

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column meant that “it’s a QCTAP operating unit, therefore the

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sales order was a QCTAP” and “the customer would have received an

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invoice from QCTAP and paid QCTAP.”

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Tessera contends that she also confirmed that QCTAP invoiced

Mot. at 3-4.

It states

For many of the entries on the

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Huang Decl., Ex. J.

Huang Decl., Ex. N, 45:10-13.

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several customers, including LG International (America), Inc.

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(LGIA), in the United States.

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Mot. at 4.

Qualcomm responds that Tessera “had previous notice of QCTAP”

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for two reasons.

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investigation, it had produced a service agreement between

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Qualcomm and Advanced Semiconductor Engineering, in which QCTAP is

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identified on a single page in an appendix as a “Ship To

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Location.”

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disclose the role that QCTAP played in United States sales.

Opp. at 4.

First, it argues that, in the ITC

However, as Tessera points out, this document does not

United States District Court
For the Northern District of California

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Second, Qualcomm argues that it had produced documents in the ITC

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investigation that “identify QCTAP in the context of merchandise

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returns from customers.”

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did not clearly identify QCTAP’s role.

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QCTAP appeared only in parentheses following an RMA number, and no

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context was provided that reasonably should have put Tessera on

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notice.

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representations that “QCTAP sells the Products it purchases . . .

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to third-party original equipment manufacturers . . . located

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solely outside of the United States.”

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Opp. at 4.

These documents, however,
In the cited exhibit,

This is particularly true in light of Qualcomm’s

Huang Decl., Ex. P, 10.

Accordingly, the Court finds that Tessera has shown that it

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acted diligently in seeking to amend its complaint after it

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learned of QCTAP’s role.

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CONCLUSION
For the reasons set forth above, the Court GRANTS Tessera’s

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motion for leave to amend the complaint.

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amended complaint within two days of the date of this Order and

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shall serve it forthwith.

Tessera shall file its

QCTAP may rest on Qualcomm’s answer.

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No motion to dismiss may be filed raising any argument on which

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the Court has already ruled.

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IT IS SO ORDERED.

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Dated: 8/7/2013

CLAUDIA WILKEN
United States District Judge

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United States District Court
For the Northern District of California

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