Free Redacted Document - District Court of Delaware - Delaware

Case 1:04-cv-00418-SLR Document 52 Filed O4/O1/2005 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SEAGATE TECHNOLOGY LLC, )
Plaintiff, g C. A. No. 04-418-SLR
v. g REDACTED
) PUBLIC VERSION
CORNICE, INC., )
Defendant. g
DEFENDANT CORNICE, INC.’S MOTION
FOR LEAVE TO FILE AMENDED ANSWER AND COUNTERCLAIMS
Pursuant to Rule 15 of the Federal Rules of Civil Procedure, defendant Comice, Inc.
("Comice") moves for leave to amend its Answer and Cotmterclaims to assert license-related
defenses and a counterclaim for breach of contract, and to amend its inequitable conduct
allegations. Attached as Exhibit I are two copies of the Amended Answer, Affirmative
Defenses, and Counterclaims, and attached as Exhibit 2 is a redlined version comparing the
original pleading to the amended pleading. Attached as Exhibit 3 is a proposed Order granting
this motion.
STATEMENT OF FACTS
Plaintiff Seagate Technology LLC ("Seagate”) tiled this action on June 22, 2004, alleging
infringement of seven United States patents. This case is pending concurrently with an action
that Seagate filed in the International Trade Commission (“ITC") alleging infringement of the
same seven patents. The parties have been working together to coordinate discovery between the
two actions.

Case 1:04-cv-00418-SLR Document 52 Filed O4/O1/2005 Page 2 of 4
Comice’s proposed amendment contains new affirmative defenses of license and
immunity from suit based on the cross license, as well as a breach of contract counterclaim that
is based on the same facts. Seagate does not oppose the new affirmative defenses based on the
• cross license, but does not consent to the amendment with respect to the breach of contract
counterclaim. The proposed amendment also updates Comice’s inequitable conduct pleading
and adds license-related defenses of patent exhaustion and implied license from the pleadings in
the ITC action.
ARGUMENT
Fed. R. Civ. P. l5(a) provides that leave to amend “shall be freely given when justice so
requires." The Supreme Court stated in Foman v. Davis, 371 U.S. 178, 181-182 (1962), that
O "this mandate is to be heeded":
If the underlying facts or circumstances relied upon by a [party]
may be a proper subject of relief he ought to be afforded an
opportrmity to test his claim on the merits.
Although the decision to grant or deny leave to amend is committed to the sound direction of this
Court, the Supreme Court stated in F 0man that leave to amend should be granted absent "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, [or] futility of amendment? Id. at 182.

Case 1:04-cv-00418-SLR Document 52 Filed O4/O1/2005 Page 3 of 4
There has been no "bad faith, delay or dilatory motive” by Comice in connection with
this motion. The Scheduling Order entered in this case set a date for amendment of pleadings of
March 25, 2005. Thus, this motion is timely.
The proposed amendment is proper because there will be no prejudice to Seagate. In
fact, Seagate does not oppose the amendment with respect to the affirmative defenses of license
and immunity from suit, which are based on the same facts as the breach of contract
counterclaim. Furthermore, the Scheduling Order provides a significant period for additional
fact discovery, through June 30, 2005, and trial is still over a year away. Moreover, Seagate
· should not require extensive discovery on the breach of contract counterclaim, and in any event
Finally, because Comice’s proposed counterclaim for breach of contract states a claim
under California law, any opposition by Seagate based on futility should be rejected.
California Civil Code specifically states that "[a] contract,
made expressly for the benefit of a third person, may be enforced by him at any time before the
· parties thereto rescind it." Cal. Civ. Code 1559 (2004). See Schauer v. Mandarin Gems of Cal.,
Inc., 23 Cal. Rptr.3d 233, 239 (Cal. Ct. App. 2005). T
Rabvh C. Sutra C0. v. Paramount Plastering, Inc., 31 Cal. Rptr. 174, 177 (Cal. 2nd Dist.
Ct. App. 1963).
See City & Suburban Mgmt. Corp. v.
First Bank, 959 F.Supp. 660, 665 (D.Del. 1997).

Case 1:04-cv-00418-SLR Document 52 Filed O4/O1/2005 Page 4 of 4
CONCLUSION
For the foregoing reasons, Comice’s Motion For Leave To File Amended Answer and
Counterclaims should be granted.
MORRIS, NICHOLS, ARSHT & TUNNELL
/s/ Julia Heaney
Jack B. Blumenfeld (#1014)
Julia Heaney (#3052)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899
(302) 658-9200
O Attorneys for Dekndant and
Counterclaim Plainty{fC0rnice, Inc.
OF COUNSEL:
Mathew D. Powers
Jason D. Kipnis W
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
(650) 802-3000
Russell Wheatley
Weil, Gotshal & Manges LLP
700 Louisiana, Suite 1600
Houston, TX 77001
· (713) 546-5000
Alan J. Weinschel A
David C. Radulescu
Arlene Hahn
Weil, Gotshal & Manges LLP
767 Fifth Avenue
New York, NY 10153
(212) 310-8000
March 25, 2005

Case 1:04-cv-00418-SLR

Document 52

Filed 04/01/2005

Page 1 of 4

Case 1:04-cv-00418-SLR

Document 52

Filed 04/01/2005

Page 2 of 4

Case 1:04-cv-00418-SLR

Document 52

Filed 04/01/2005

Page 3 of 4

Case 1:04-cv-00418-SLR

Document 52

Filed 04/01/2005

Page 4 of 4