United States District Court, C.D. California
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL.
INFINEON TECHNOLOGIES AG ET AL.
Present: The Honorable CHRISTINA A. SNYDER
CIVIL MINUTES - GENERAL
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. AND NITRONEX,
LLC'S MOTION FOR LEAVE TO TAKE EXPEDITED DISCOVERY (Dkt.
224, filed January 30, 2017)
Court finds this motion appropriate for decision without oral
argument. See Fed. R. Civ. P. 78; CD. Cal. Local
Rule 7-15. Accordingly, the hearing date of March 20, 2017 is
vacated, and the matter is hereby taken under submission.
INTRODUCTION AND BACKGROUND
April 26, 2016, plaintiffs MACOM Technology Solutions
Holdings, Inc. ("MACOM"), and Nitronex, LLC filed
the instant action against defendants Infineon Technologies
AG ("AG") and Infineon Technologies Americas Corp.
("Americas"). Dkt. 1. The gravamen of
plaintiffs' complaint is that defendants breached the
intellectual property purchase agreement and the license
agreement entered into in 2010 by Nitronex Corporation (the
predecessor-in-interest to MACOM) and International Rectifier
Corporation (the predecessor-in-interest to
their first amended complaint ("FAC"), plaintiffs
asserted eight claims for relief: (1) breach of contract for
wrongful termination of a 2010 license agreement; (2) breach
of contract for marketing and preparing for sale of products
within plaintiffs' "exclusive field" under the
terms of to the 2010 license agreement; (3) a declaration
that the 2010 license agreement has not been terminated; (4)
breach of the covenant of good faith and fair dealing implied
in the 2010 license and intellectual property
("IP") purchase agreements; (5) a declaration of
non-infringement; (6) breach of the 2010 intellectual IP
purchase agreement; (7) a declaration that defendants may not
transfer to a third party the patents covered by the 2010
agreements without MACOM's consent; and (8) if AG is not
subject to plaintiffs' breach of contract claims,
intentional interference with contractual relations against
AG. Dkt. 65 ("FAC").
October 31, 2016, the Court issued an order in which the
Court: (a) denied AG's motion to dismiss plaintiffs'
FAC to the extent AG argued that the Court lacked personal
jurisdiction; (b) granted without prejudice AG's motion
to dismiss plaintiffs' first, second, third, fourth,
fifth, and seventh claims for relief; (c) granted without
prejudice Americas' motion to dismiss plaintiffs'
fifth claim for relief to the extent the claim relied on
unidentified products; (d) otherwise denied Americas'
motion to dismiss plaintiffs' fifth claim for relief; (e)
denied AG's motion to dismiss plaintiffs' eighth
claim for relief; and (f) denied Americas' motion to
dismiss plaintiffs' second claim for relief. Dkt. 140. In
addition, the Court granted plaintiffs' request for a
preliminary injunction against Americas and directed
plaintiffs to submit a proposed order detailing the
injunctive relief plaintiffs sought. Id. On November
16, 2016, the Court issued a proposed injunction and
requested that the parties serve any objections. Dkt. 158.
After receiving briefing on the Court's proposed order,
the Court issued a preliminary injunction against Americas on
December 7, 2016. Dkt. 177 ("Original Preliminary
Injunction"). On January 3, 2017, Americas appealed to
the Federal Circuit Court of Appeals this Court's order
granting plaintiffs' motion for a preliminary injunction.
November 28, 2016, plaintiffs filed the operative second
amended complaint. Dkt. 170 ("SAC"). On December
30, 2016, Americas and AG filed motions to dismiss certain
claims in the SAC. Dkts. 186, 187. On February 28, 2017, the
Court issued an order (a) denying Americas' motion to
dismiss plaintiffs' second and fifth claims for relief,
along with plaintiffs' contingent claims for the relief
based on rescission; and (b) denying AG's motion to
dismiss plaintiffs' eighth claim for relief. Dkt. 271.
The Court ordered defendants to file an answer within
fourteen days of the date of its order. Id. On March
9, 2017, defendants filed an ex parte application to continue
the deadline to answer by ten days. Dkt. 280. On March 10,
2017, the Court granted defendants' ex parte request for
a continuance. Dkt. 281.
January 5, 2017, Americas filed a motion to stay pending
appeal or to modify a portion of the Court's Original
Preliminary Injunction. Dkt. 200. On March 6, 2017, the Court
denied Americas' request to stay the injunction. Dkt.
277. However, the Court granted Americas' motion to
modify the injunction and issued a Modified Preliminary
Injunction. Id. On January 30, 2017, plaintiffs
filed a motion for leave to take expedited discovery
regarding defendants' potential violations of the
preliminary injunction. Dkt. 224 ("Motion").
Defendants filed their opposition on March 2, 2017, dkt. 268
("Opp'n"), and plaintiffs filed their reply on
March 6, 2017, dkt. 274 ("Reply").
carefully considered the parties' arguments, the Court
finds and concludes as follows."
26(d) of the Federal Rules of Civil Procedure generally
provides that formal discovery will not commence until after
the parties have conferred as required by Rule 26(f)."
Qwest Commc'ns Int'l. Inc. v. WorldOuest
Networks. Inc.. 213 F.R.D. 418, 419 (D. Colo. 2003);
In re Countrywide Fin. Corp. Derivative Litiq.. 542
F.Supp.2d 1160, 1179 (CD. Cal. 2008); Awash v. Bank
Al-Madina. 233 F.R.D. 325, 326 (S.D.N.Y. 2005).
"However, courts may permit expedited discovery before
the Rule 26(f) conference upon a showing of good cause."
In re Countrywide, 542 F.Supp.2d at 1179;
Semitool. Inc. v. Tokyo Electron Am.. Inc.. 208
F.R.D. 273, 276 (N.D. Cal. 2002); see also Qwest
Commc'ns Int'l. Inc.. 213 F.R.D. at 419
("[A] party seeking expedited discovery in advance of
[the] Rule 26(f) conference has the burden of showing good
cause for the requested departure from usual discovery
procedures."); Merrill Lynch. ...