Opinion
Civil Action No. 02-8219.
May 4, 2004
ORDER
AND NOW, this ____ day of May, 2004, upon consideration of the plaintiff's Motion to Amend the Second Amended Complaint (Docket No. 106), and the response and reply thereto, IT IS HEREBY ORDERED THAT the motion is GRANTED in part and DENIED in part. IT IS FURTHER ORDERED that the Second Amended Complaint may be amended to assert diversity as a basis for federal jurisdiction, incorporate the copyright registration numbers into its claims, assert claims for trade secret misappropriation based on Agere System, Inc.'s ("Agere") alleged disclosures to third parties, state a trade secret misappropriation claim for the disclosure of information under New York law, assert claims for breach of contract that are based on Agere being a proper assignee of the Joint Development Agreement ("JDA"), and state a prayer for injunctive relief. In all other respects, the motion is DENIED.
Federal Rule of Civil Procedure 15(a) provides that "leave [to amend] shall be freely given when justice so requires." Generally, leave to amend should be granted absent a concern of undue delay, bad faith or dilatory motive, continued failure to cure deficiencies, undue prejudice to the opposition, or futility of amendment. Foman v. Davis, 371 U.S. 178, 182 (1962);Jablonski v. Pan American World Airways, Inc., 863 F.2d 289 (3d Cir. 1988).
The defendant does not object to the plaintiff's, Choice-Intersil Microsystems, Inc.'s ("Choice"), motion to amend the second amended complaint to assert diversity as a basis for federal jurisdiction, incorporate the copyright registration numbers in its copyright infringement claims, and assert claims for breach of contract and trade secret misappropriation based on Agere's alleged disclosures to third parties. That part of the plaintiff's motion, therefore, is granted.
Choice may not amend the complaint to replead its copyright claims, to replead a trade secret misappropriation claim based on the use and possession of information by Agere, or to plead a breach of contract claim on the basis that Agere is not Lucent's proper assignee of the JDA. These amendments would be futile in light of the Court's April 12, 2004 Memorandum and Order. See Jablonski, 863 F.2d at 292 (holding that amending the complaint is futile where the amended complaint could not withstand a renewed motion for judgment on the pleadings).
Choice may amend the complaint to state a trade secret misappropriation claim for the disclosure of information under New York law, as this amendment is not futile.
Choice may also amend the complaint to add a breach of contract claim. The contract at issue, the Addendum of the JDA, grants the right to make, have made, use, sell or import 802.11 conformant WMAC chips and derivatives. In its proposed breach of contract counts, Choice alleges that Agere has exceeded the scope of the contract by using, disclosing, copying, reproducing, publicly distributing, and/or modifying Digital Ocean Information, Choice Information, and/or Joint Information beyond the scope of the JDA and its Addendum. The Court does not find that this amendment is futile, as Choice alleges acts which could fall outside of the scope of the contract.
Finally, Choice may amend its complaint to state a prayer for injunctive relief under the JDA and Addendum.