ChriMar Systems Inc. et al v. Cisco Systems Inc. et al
Filing
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ORDER GRANTING 292 MOTION For Leave to Amend. Signed by Judge Jeffrey S. White on 2/10/16. (jjoS, COURT STAFF) (Filed on 2/10/2016)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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CHRIMAR SYSTEMS INC, et al.,
Plaintiffs,
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v.
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Case No. 13-cv-01300-JSW
ORDER GRANTING MOTION FOR
LEAVE TO AMEND
Re: Docket. Nos. 292, 293-4
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CISCO SYSTEMS INC, et al.,
Defendants.
United States District Court
Northern District of California
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Now before the Court for consideration is the motion for leave to amend, filed by
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Plaintiffs, ChriMar Systems Inc. d/b/a CMS Technologies and ChriMar Holding Company, LLC
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(collectively “ChriMar”) (Docket Nos. 292, and 293-4).1 The Court has considered the parties’
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papers, relevant legal authority, and the record in this case, and it finds the motions suitable for
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disposition without oral argument. See N.D. Civ. L.R. 7-1(b). The Court VACATES the hearing
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scheduled for March 4, 2016, and it HEREBY GRANTS ChriMar’s motion for leave to amend.2
BACKGROUND
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On October 31, 2011, ChriMar filed this suit in the United States District Court for the
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District of Delaware, in which it alleged that Defendants, Cisco Systems, Inc., Cisco Consumer
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Products LLC, Cysco-Linksys LLC (collectively, “Cisco”) and Hewlett-Packard Co. (“HP”),
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infringed U.S. Patent No. 7,457,250, as re-examined (the “‘250 Patent”). Cisco alleged, inter alia,
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that Cisco’s and HP’s infringing products practiced amendments to the Institute of Electrical and
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Electronics Engineers (“IEEE”) 802.3 standard, known as the 802.3af and/or 802.3at standards.
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The un-redacted verision of ChriMar’s motion is docketed at 293-4.
The Court will resolve the pending motions to seal in a separate order, once it receives the
supplemental responses ordered on February 9, 2016.
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(Compl. ¶ 13.)3
On January 6, 2012, Cisco filed its answer and asserted counterclaims against ChriMar.
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ChriMar filed its answer to the counterclaim on December 4, 2012. (Docket Nos. 23, 30, 44.) On
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December 26, 2012, Cisco filed amended counterclaims, and ChriMar filed its answer on January
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22, 2013. (Docket No. 51, 57, 60.) On December 26, 2012, HP filed its answer and asserted
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counterclaims against ChriMar, and ChriMar filed its answer on January 22, 2013. (Docket Nos.
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52, 56, 61.)
On August 5, 2014, ChriMar moved to dismiss specific counterclaims. (Docket No. 202.)
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On October 29, 2014, the Court granted the motion, with leave to amend. (Docket No. 240.) On
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December 1, 2014, Cisco and HP filed answers and amended counterclaims. (Docket Nos. 242,
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United States District Court
Northern District of California
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Cisco Answer and Second Amended Counterclaim (“Cisco SAC”), 243, HP Answer and First
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Amended Counterclaim “HP FAC”).) ChriMar filed its answers to the amended counterclaims on
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December 18, 2014. (Docket Nos. 244, 245.)
In brief, HP and Cisco asserted counterclaims for: (1) declarations of non-infringement,
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invalidity, and unenforceability of the ‘250 Patent; (2) alleged violations of section 2 of the
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Sherman Act (the “Sherman Act Claims”)4; (3) breach of contract; (4) alleged violations of
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California’s Unfair Competition Law, Business and Professions Code sections 17200, et seq. (the
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“UCL Claim”); and (5) fraud. (Cisco SAC ¶ 1; HP FAC ¶ 1.) Each of these claims are premised
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on the basis that ChriMar had a duty to, but failed to disclose, the ‘250 Patent and/or its
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applications “[d]uring standardization of the ‘Power over Ethernet’ technology by the [IEEE] at
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issue in this action,” as well as its licensing position about that patent.” (See generally Cisco SAC
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¶¶ 10-12, 25, 28-30, 32; HP FAC ¶¶ 9-11, 24, 27-29, 31.)5
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According to allegations in the counterclaims, the IEEE is a standard setting organization
and, in March 1999 and November 2004, there was a call to amend the 802.3 standard, which
resulted in the 802.3af and 802.3at amendments.
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Cisco asserts claims for monopolization. HP asserted claims for monopolization and
attempted monopolization. However, it has stated that intends to dismiss these claims, and
ChriMar has withdrawn its request to amend its answer as to those claims.
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The Court described these allegations in more detail in its Order granting Defendants’
motion for judgment on the pleadings. (Docket No. 240, Order at 1:26-3:5.)
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On June 8, 2015, the Court issued an order in which it, inter alia, set deadlines to complete
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discovery, the deadlines to file dispositive motions, and pre-trial and trial dates. (Docket No.
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262.) Since that Order was issued, the Court has granted the parties’ stipulations to modify certain
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discovery deadlines. (See, e.g., Docket Nos. 302, 319.)
The Court shall address additional facts as necessary in its analysis.
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ANALYSIS
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A.
The Court Grants the Motion.
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ChriMar seeks leave to amend its answers to add a statute of limitations defense to Cisco’s
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breach of contract, Sherman Act, and fraud counterclaims, and to HP’s counterclaim for breach of
contract. Federal Rules of Civil Procedure 15(a) permits a party to amend its pleading once as a
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United States District Court
Northern District of California
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matter of right any time before a responsive pleading has been served. Once a responsive pleading
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has been served, however, the amendment requires written consent of the adverse party or leave of
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the court, and leave “shall be freely given when justice requires.” Fed. R. Civ. P. 15(a). “Rule
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15’s policy of favoring amendments to pleadings should be applied with ‘extreme liberality.’”
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United States v. Webb, 655 F.2d 977, 979 (9th Cir. 1981) (citation omitted).
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The Court considers four factors to determine whether a motion for leave to file an
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amended complaint should be granted: bad faith; undue delay; prejudice to the opposing party;
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and futility of amendment. DCD Programs, Ltd. v. Leighton, 833 F.2d 183, 186 (9th Cir. 1987).
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However, each factor is not given equal weight. Bonin v. Calderon, 59 F.3d 815, 845 (9th Cir.
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1995). The Court addresses each factor in turn.
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1.
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Cisco and HP do not contend that ChriMar has acted in bad faith, and the record does not
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Bad Faith.
support such a finding. This factor weighs in favor of granting leave to amend.
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2.
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Cisco and HP contend that ChriMar has been on notice of the essential facts that support
Undue Delay.
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the statute of limitations defense since they filed their original counterclaims. When assessing
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whether a party unduly delayed in seeking leave to amend, courts focus on “‘whether the moving
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party knew or should have known the facts and theories raised by the amendment in the original
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pleading,’” rather than whether the motion to amend was timely filed. AmerisourceBergen Corp.
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v. Dialysis West, Inc., 465 F.3d 946, 953 (9th Cir. 2006) (quoting Jackson v. Bank of Hawaii, 902
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F.2d 1385, 1388 (9th Cir. 1990)). “[L]ate amendments to assert new theories are not reviewed
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favorably when the facts and the theory have been known to the party seeking amendment since
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the inception of the cause of action.” Acri v. Int’l Ass’n of Machinists & Aerospace Workers, 781
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F.2d 1393, 1398 (9th Cir. 1986) (citations omitted).
ChriMar asserts that the applicable statutes of limitations for the breach of contract, fraud
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and Sherman Act claims are four years, three years, and four years, respectively.6 ChriMar
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contends that it only recently learned, through discovery, of the facts that would support its statute
of limitations defense for the claims at issue.7 ChriMar does not, however, explain why it had
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United States District Court
Northern District of California
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enough information to assert a statute of limitations defense to the UCL Claim, when the essential
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facts underlying each of Cisco and HP’s counterclaims are the same. The UCL Claim, like the
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Sherman Act Claims, has a four year statute of limitations. See Cal. Bus. & Prof. Code § 17208.
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ChriMar also argues that it was only able to learn of the facts that would support a statute
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of limitations defense to HP’s breach of contract claim, when HP served corrected responses to
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ChriMar’s contention interrogatories. Although those responses provide more factual detail than
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HP’s original counterclaim, they still contain the same basic facts, namely that a ChriMar
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representative was present at IEEE meetings in 2000 and 2005 and failed to disclose the ‘250
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Patent or its position on licensing. (See ChriMar Reply, Ex. 6 (HP Response to Interrogatory 16).
With respect to Cisco’s counterclaims, ChriMar focuses on the fact that during a Rule
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Although ChriMar argues that it does not bring its breach of contract and fraud claims
under California law, the only state law it cites with respect to the applicable statutes of limitations
for those claims is the California Code of Civil Procedure.
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In its reply brief, ChriMar also suggested that it could not have known of some of the facts
necessary to assert a statute of limitations defense, until Cisco and HP amended their
counterclaims to comport with the Court’s ruling on their motion for judgment on the pleadings.
However, the basic allegations that ChriMar failed to disclose the ‘250 Patent to the IEEE and its
licensing position on the patent remain the same. Indeed, the allegations relating to Cisco’s breach
of contract claim are identical. (Compare Cisco First Amended Counterclaim ¶¶ 54-58 with Cisco
SAC ¶¶ 62-66.) Thus, the Court is not persuaded that the amendments to the counterclaims
provided ChriMar with facts of which it was previously unaware.
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30(b) deposition, on December 11, 2015, one of Cisco’s corporate designees purported to testify to
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new facts that support the statute of limitations defense. (See Declaration of Brandon Jordan, Ex.
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2 (Deposition of Chad Jones (“Jones Depo.”) at 38:16-40:2.) Based on the limited factual record
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before the Court, Mr. Jones’ testimony does appear to include at least some new facts that might
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alter the calculation of when the statute of limitations began to run. At the same time, the record
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also shows that the majority of the facts supporting Cisco’s counterclaims were known to ChriMar
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well before it filed this motion.
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The Court finds that there has been some delay in filing this motion. Because delay alone
would not be sufficient to deny leave to amend, the Court considers the remaining factors. See
Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990).
United States District Court
Northern District of California
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3.
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Cisco and HP also argue that they would be prejudiced if the Court grants leave to amend.
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Prejudice is the most significant factor for considering whether leave to amend should be granted.
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Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003). Prejudice must be
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substantial in order for the Court to justify denying leave to amend. Morongo, 893 F.2d at 1079.
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Cisco argues that if the Court grants the motion, it would need to obtain additional
Prejudice.
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discovery. With one exception, Cisco does not specify what additional facts would need to be
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developed to respond to the defense. (See Cisco Opp. at 9:22-23, 9:28-10:2.) HP joined in
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Cisco’s motion, but it does not articulate any additional discovery that it would need to obtain to
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counter a statute of limitations defense. Although the deadlines to file dispositive motions are
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looming, the Court finds that this case is distinguishable from Medtronic, Inc. v. AGA Med. Corp.,
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No. 07-cv-0567 MMC, 2009 WL 416538, at *2 (N.D. Cal. Feb. 18, 2009), on which Cisco relies.
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In that case, the court found that a late amendment would cause prejudice, because it would
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require the preparation of “a defense to a counterclaim with a factual basis distinct from that of
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Medtronic’s underlying claims and whose inclusion in the action would substantially expand the
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issues for trial.” Id. That is not the case here.
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In addition, when it filed its answers to each of the amended counterclaims, ChriMar did
assert a laches defense and it also asserted a statute of limitations defense to the UCL claims.
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Thus, both HP and Cisco were placed on notice that the timeliness of their claims would be an
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issue. Cf. Novell, Inc. v. Unicom Sales, Inc., No. 03-cv-02785-MMC, 2004 U.S. Dist. LEXIS
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24538, at *5 (N.D. Cal. Aug. 17, 2004) (concluding that because plaintiff had asserted laches
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defense, defendant was on notice that timeliness of action would be at issue).
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Finally, the Court could remedy any potential prejudice by allowing some additional fact
discovery to be taken out of time, if Cisco can, in good faith, show that discovery would be
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necessary to respond to a statute of limitations defense. While that may require the Court to adjust
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the deadlines relating the dispositive motions deadlines, pretrial and trial, the Court will not grant
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a significant extension of existing deadlines. On balance, the Court concludes that neither Cisco
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nor HP have shown “substantial prejudice.” See also Wyshak v. City Nat’l Bank, 607 F.2d 824,
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United States District Court
Northern District of California
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826 (9th Cir. 1979).
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This factor weighs in favor of granting leave to amend.
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4.
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Finally, Cisco and HP argue that it would be futile to grant ChriMar leave to assert the
Futility.
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statute of limitations as a defense. Cisco filed its original counterclaim on January 6, 2012. Thus,
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Cisco must show that its Sherman Act claims accrued on or after January 6, 2008. Assuming
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arguendo that California law applies, Cisco must show that the breach of contract claim accrued
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on or after January 6, 2008 or January 6, 2010, depending on the nature of the contract asserted,
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and show that its fraud claim accrued on or after January 6, 2009. HP filed its original
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counterclaim on December 26, 2012. Thus, depending on the nature of the contract asserted, it
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must show that its claim accrued on or after December 26, 2008 or December 26, 2010. Cisco and
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HP both argue that their claims did not accrue until October 2011, when ChriMar sued on the ‘250
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Patent. ChriMar argues that the claims accrued much earlier, although it does not posit specific
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dates on which the various claims accrued.
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The Court cannot say, based on the existing factual record and the parties’ briefing of the
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issue, that it would be futile to give ChriMar leave to assert a statute of limitations defense.
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Therefore, the Court finds that this fact weighs in favor of granting ChriMar leave to amend.
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CONCLU
USION
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For the foregoing re
easons, the Court GRAN Chri-M
C
NTS
Mar’s motion for leave to amend its
ans
swers. ChriM shall file its amende answers b no later th February 16, 2016.
Mar
ed
by
han
y
IT IS SO ORDER
S
RED.
Da
ated: Februar 10, 2016
ry
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__________
___________
__________
________
JEF
FFREY S. W
WHITE
Un
nited States D
District Judg
ge
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United States District Court
Northern District of California
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