Case 1:12-cv-00311-GMS Document 38 Filed 03/08/13 Page 1 of 3 PageID #: 945

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE COMBA TELECOM, INC., Plaintiff,
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v.
ANDREW, L.L.C. and COMMSCOPE, INC., Defendants.

C.A. No. 12-cv-311 (GMS)

_______________________________)

ORDER

WHEREAS, on March 14, 2012, the plaintiff, Comba Telecom, Inc. ("Comba"), filed a Complaint (D.I. 1) against the defendants, Andrew, L.L.C. and Commscope, Inc. (collectively, "the defendants"), seeking declaratory judgment that eight of the defendants' patents are invalid: U.S. Patent Nos. 6,600,457; 6,567,051; 6,590,546; 6,603,436; 6,346,924; and 7,518,522 (collectively, "the patents-in-suit"); WHEREAS, on April 30, 2012, the defendants filed a Motion to Dismiss for Lack of Subject Matter Jurisdiction (D.I. 10); WHEREAS, Comba filed an Answering Brief in Opposition to the defendants' Motion to Dismiss on June 18, 2012 (D.I. 18) and, on June 26, 2012, the defendants filed their Reply (D.I. 24); WHEREAS, on June 18, 2012, Comba also filed a Motion for Leave to File a First Amended Complaint (D.I. 22), which the defendants opposed on July 23, 2012 (D.I. 25); WHEREAS, Comba filed a Reply in support of its Motion for Leave to File a First Amended Complaint on August 24,2012 (D.I. 32); WHEREAS, Comba, in its Motion for Leave to File a First Amended Complaint, seeks to include additional facts to strength its declaratory judgment jurisdiction claim, such as addressing

Case 1:12-cv-00311-GMS Document 38 Filed 03/08/13 Page 2 of 3 PageID #: 946

the preparatory steps it has taken to introduce products in the United States and the defendants' statements and suits against it in other jurisdictions (D.I. 22); WHEREAS, the defendants assert, in opposition to Comba's motion, that: (1) the amendment is prejudicial; and (2) the amendment is futile and, therefore, should not be granted (D.I. 25; D.I. 32); WHEREAS, pursuant to Federal Rule of Civil Procedure 15(b), leave to amend a pleading should be "freely given when justice so requires" 1 and the decision to allow a party to amend is squarely within the discretion of the trial court; WHEREAS, a court, in assessing whether to grant a motion for leave to amend the pleadings, may deny such leave when there exists "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 the allowance of the amendment, 2 futility of the

WHEREAS, m view of the parties' motions, accompanying briefs and exhibits in opposition and support, and the applicable law, the court finds that the plaintiffs motion is timely, will not prejudice the defendants, and is not futile 5;

FED. R. CIV. P. 15(b). To demonstrate prejudice, the nonmoving party must show that the amendment would: (1) require it to expend significant additional resources to conduct discovery and prepare for trial; (2) significantly delay the resolution of the dispute; or (3) prevent a party from bringing a timely action in another jurisdiction. See Long v. Wilson, 393 F.3d 390, 400 (3d Cir. 2004). 3 Futility of amendment occurs when the complaint, as amended, does not state a claim upon which relief can be granted. See In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1434 (3d Cir. 1997). To this end, the standard for assessing futility of amendment under Rule 15(b) is the same as the standard of legal sufficiency applicable under Rule 12(b). See Travel Syndication Tech. v. Fuzebox, L.L.C., C.A. No. 11-553-SRF, 2012 U.S. Dist. LEXIS 73117, at *8-11 (D. Del. May 25, 2012) (citing Shane v. Fauver, 213 F.3d 113, 115 (3d Cir. 2000)). If the proposed amendment is "frivolous or advances a claim or defense that is legally insufficient on its face, the court may deny leave to amend." See Harrison Beverage Co. v. Dribech Importers, Inc., 133 F.R.D. 463,468 (D.N.J. 1990). 4 See Forman v. Davis, 371 U.S. 178, 182 (1962); see also In re Burlington Coat, 114 F.3d at 1434. 5 The court concludes that granting Comba's Motion for Leave to Amend will not prejudice the defendants. Specifically, the instant litigation is still in its relative infancy, as the Complaint was filed March 14, 2012, a trial date has not been scheduled, and the parties have not begun to conduct discovery. As a result, the defendants will not be
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Case 1:12-cv-00311-GMS Document 38 Filed 03/08/13 Page 3 of 3 PageID #: 947

IT IS HEREBY ORDERED THAT:

1. The plaintiffs Motion for Leave to File a First Amended Complaint (D.I. 22) GRANTED;

IS

2. The defendants' Motion to Dismiss for Lack of Jurisdiction (D.I. 10) is DENIED without prejudice as MOOT6 ; and 3. The plaintiff shall file its First Amended Complaint as a separate docket entry.

March _]_, 2013

precluded from filing additional motions or conducting discovery on the issues raised in Comb a's First Amended Complaint. Moreover, Comba's proposed amendments do not contradict its prior pleadings and will not deprive the defendants of the opportunity to challenge Comba's allegations. Further, the court concludes that Comba's Motion for Leave to File a First Amended Complaint should not be denied as futile. As noted, futility of amendment occurs when the complaint, as amended, does not state a claim upon which relief can be granted, as judged by the Rule 12(b) standard. See Shane, 213 F .3d at 115. Importantly, the merits of the claim need not be resolved. Instead, the court must assess whether, when all factual allegations are viewed in a light most favorable to the plaintiff, there are sufficient allegations to state a claim upon which relief can be granted. In the context of declaratory judgments, a court should determine whether a case or controversy exists by examining the totality of the circumstances presented. See Cat Tech, L.L.C. v. Tubemaster, Inc., 528 F.3d 871, 881 (Fed. Cir. 2008). For instance, a plaintiff may demonstrate satisfaction of this requirement by showing that there has been meaningful preparatory conduct that could lead to potentially infringing activity, such as distributing sales literature or preparing to solicit orders. See, e.g., Arkema Inc. v. Honeywell Int'l, Inc., C.A. No. 2012-1308,2013 WL 425576 (Fed. Cir. Feb. 5, 2013). The court should also identify whether the claim is real and has an element of immediacy. See id at *7. Specifically, the plaintiff should show that it is not solely "considering" engaging in potentially infringing activities, but, instead, that its interests are presently being affected because it intends to engage in potentially infringing activities imminently. See id Here, the court fmds that, taking the factual allegations in the proposed amended complaint as true, Comba's Amended Complaint is not decidedly futile. Specifically, Comba alleges that it has the capacity to produce inventory to sell in the United States and that it has been actively participating in trade shows and soliciting Request for Proposals. In addition, Comba alleges that it has demonstrated the immediate and the "real" nature of the case or controversy by identifying the defendants' suits against it in China and Brazil as well as the defendants' June 16, 20 II press release stating that they will protect their patent rights. In consideration of these allegations and in view of the foregoing, the court will not deny Comba's Motion for Leave to File a First Amended Complaint due to futility. 6 The defendants' Motion to Dismiss for Lack of Jurisdiction Over the Subject Matter (D.I. I 0) addressed the alleged insufficiency ofComba's original Complaint and, therefore, is moot in light ofthe instant Order.

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