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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SYNOPSYS, INC.,

Plaintiff,

v.

UBIQUITI NETWORKS, INC., et al.,

Defendants.

Case No. 17-cv-00561-WHO 

ORDER ON PENDING MOTIONS

Re: Dkt. Nos. 77, 79, 80

This case stems from the purported interest of defendants Ubiquiti Network, Inc., Ubiquiti

Networks International Limited (UNIL), and Ching-Han Tsai to review and evaluate for licensing 

plaintiff Synopsys, Inc.’s semiconductor electronic design and automation software. In its Second 

Amended Complaint, Synopsys alleges that defendants fraudulently gained access to its

copyrighted software and related support materials and used evaluation license keys and 

counterfeit keys to repeatedly and illegally access and copy those programs and materials over the 

course of three years. When defendants’ alleged conduct was discovered by Synopsys – through 

embedded “piracy tracking” tools (as described by Synopsys) or “spyware” (as described by 

defendants) – Synopsys sued. 

Ubiquiti and UNIL counterclaimed based on Synopsys’s use of the piracy tracking tools. They

argue that Synopsys’s conduct – hiding or failing to disclose the presence and operation of the antipiracy software, using the anti-piracy software to access information on defendants’ systems, and then 

sharing defendants’ confidential information with third-parties – violated the parties’ master nondisclosure agreement (MNDA) as well as federal and state computer abuse and common laws. UNIL 

alleges the following counterclaims: (1) declaratory relief; (2) violation of 18 U.S.C. § 1030, 

Computer Fraud and Abuse Act; (3) violation of Cal. Penal Code § 502, Computer Data Access Fraud 

Act; (4) Trespass to Personal Property and Chattels; (5) Conversion; (6) violation of 18 U.S.C. § 
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1962(c), Civil RICO; (7) violation of 18 U.S.C. § 1962(d), RICO Conspiracy; and (8) Fraud. Ubiquiti

currently has counterclaimed only for declaratory relief and breach of contract, but seeks leave to

amend to match the counterclaims asserted by UNIL (e.g., adding the federal and state computer abuse 

and common law claims).1 

Synopsys moves to dismiss UNIL’s counterclaims, arguing that the counterclaims are either 

barred or inadequately pleaded. Similarly, Synopsys argues Ubiquiti’s motion for leave to amend

should be denied because of undue delay and prejudice in seeking leave, but also because amendment 

would be futile because the claims Ubiquiti seeks to allege (like UNIL’s) are barred or inadequately 

pleaded. Finally, Synopsys moves to strike the state law counterclaims asserted by UNIL under 

California’s anti-SLAPP statute, because those claims are based on Synopsys’ privileged pre-litigation 

conduct in identifying what it believed were defendants’ acts of piracy and seeking pre-litigation 

settlement of those claims. 

As discussed below, defendants’ theory of fraud is implausible and I agree in many respects 

with the arguments in Synopsys’s motion. I GRANT the motion to dismiss UNIL’s counterclaims. I 

DENY Ubiquiti’s motion for leave to amend its counterclaims without prejudice and DENY

Synopsys’s motion to strike without prejudice.

BACKGROUND

The background to Synopsys’s claims against defendants are laid out in full in my August 

2017 Order. For purposes of ruling on the pending motions, I will focus on the allegations in 

Ubiquiti’s existing counterclaims and those made in UNIL’s counterclaims.

As part of the parties’ agreement to allow Ubiquiti to review Synopsys’s software, the 

parties entered into a master non-disclosure agreement (MNDA) to allow for the confidential 

exchange of information between the parties. UNIL Counterclaims ¶¶ 30 - 31, 34-35, 40.2 

Ubiquiti signed the MNDA on October 15, 2013, and Synopsys executed it on November 25, 

 

1

 Because UNIL initially moved to dismiss for lack of jurisdiction, UNIL’s answer and 

counterclaims were not filed until September 19, 2017. Dkt. No. 76. 

2

The factual allegations and claims Ubiquiti seeks leave to add are similar (in most respects) to 

the allegations and claims asserted in UNIL’s counterclaims.
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2013. UNIL Counterclaims ¶ 40; see also Second Amended Complaint (SAC) ¶ 40. 

Defendants allege that Synopsys formed an “Enterprise” with QuatreWave LLC d/b/a 

SmartFlow Compliance Solutions (SmartFlow) and related-entity IT Compliance Association 

(“ITCA”), and the founders and current officers of those companies (Ted Miracco and Chris 

Luijten). The Enterprise placed SmartFlow’s “phone-home” “spyware” in Synopsys’ software 

programs. UNIL Counterclaims ¶¶ 8-16.3 UNIL alleges that SmartFlow and ITCA “work in 

partnership in schemes to generate revenue for software companies by targeting supposed 

unlicensed uses of their customers’ software.” UNIL Counterclaims ¶ 11. As part of that effort:

SmartFlow’s spyware is embedded at least into that company’s 

software and subsequently used to monitor and collect data from 

computers, servers, and unsuspecting individuals who use or have 

access to that software. The data includes individuals’ personally 

identifiable information, such as user names and email addresses, 

the software programs and features accessed by users, and the 

locations, dates, and times of access. SmartFlow then shares the 

data that it collects and the identity of the suspected unlicensed users 

with its software customers. SmartFlow also offers the services of its 

sister company ITCA, who uses various coercive techniques to 

pressure individuals to pay exorbitant fees or other compensation to 

the software company for the alleged unlicensed uses.

UNIL Counterclaim ¶ 11.

UNIL asserts (and Ubiquiti wants to allege) that Synopsys concealed the presence of the 

spyware in the products that was downloaded pursuant to the parties’ agreements onto Ubiquiti

and UNIL’s servers and computers. UNIL contends that Synopsys’s license evaluation and 

MNDA agreements fail to disclose the presence and operation of this spyware in its products. 

UNIL Counterclaims ¶¶ 17, 47.

UNIL states that Synopsys together with ITCA and SmartFlow use the spyware to identify,

often mistakenly, unauthorized users of Synopsys’s software in order to “extract exorbitant license 

fees under the threat of litigation.” UNIL Counterclaims ¶¶ 14, 18-25. UNIL identifies five 

lawsuits Synopsys filed based on unlicensed use of its software and alleges on information and 

belief that the facts regarding unauthorized use in those suits were obtained from phone-home 

 

3

The co-founder and current CEO of SmartFlow (Ted Miracco) and the co-founder of SmartFlow, 

founder of ITCA, and ITCA’s current CEO (Chris Luijten) are repeatedly identified in UNIL’s 

Counterclaims at ¶¶ 8-9,13-14. 
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spyware and that the Enterprise monitored, collected, and transmitted the confidential information 

of the defendants in those cases. Id. ¶¶ 18-25.

UNIL asserts that the Enterprise likewise monitored, collected, and transmitted UNIL and 

Ubiquiti’s confidential information through the spyware in violation of the MNDA, unbeknownst 

to UNIL or Ubiquiti, and without their consent. Id. ¶¶ 29-36, 40, 52-53. That confidential 

information includes “IP addresses, MAC addresses, user names, host names, user accounts, email 

addresses, workstation information, system administrators, IT system logs, and other confidential 

information.” Id. ¶ 47. 

UNIL and Ubiquiti became aware of the spyware and the activities of the Enterprise in 

May 2016, when ITCA emailed Ubiquiti’s CEO as an agent of Synopsys and disclosed its 

possession of the confidential UNIL and Ubiquiti information it had gathered through the 

spyware. ITCA made that disclosure and contact in order to convince Ubiquiti to pay “exorbitant 

fees” for the Synopsys software programs allegedly accessed by UNIL and Ubiquiti employees. 

Id. ¶¶ 51-52. Ubiquiti and UNIL argue that Synopsys delayed notifying them of the matter until 

two and one-half years after Synopsys had notice in order to allow the Enterprise to keep 

collecting confidential information and enlarge the period over which Synopsys could claim 

damages in the form of retroactive license fees. Id. ¶ 55. 

In opposing Ubiquiti’s motion for leave to amend and in support of its separate motion to 

strike UNIL’s state law counterclaims, Synopsys relies on evidence that in order for Tsai to download 

Synopsys’ software in December 2013 (which is when Tsai admits he downloaded Synopsys software 

initially: UNIL Counterclaim ¶ 41; Ubiquiti’s Proposed Counterclaims ¶ 42), Tsai would have had to 

“click through” a notice and agreement that disclosed that “Licensed Products communicate with 

Synopsys services for the purpose of . . . detecting software piracy and verifying that customers are 

using Licensed Products in conformity with the applicable License Key” and that Synopsys will use 

that information to “pursue software pirates and infringers.” Declaration of Norman F. Kelly [Dkt. 

No. 78-1], Ex. 2. Similarly, when an unnamed UNIL employee admittedly downloaded Synopsys 

software in April 2014, UNIL Counterclaim ¶ 44, he or she would have had to click through the same 
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notice. Kelly Decl. ¶ 5.4

LEGAL STANDARD

I. MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM

Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss if a claim 

fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to 

dismiss, the claimant must allege “enough facts to state a claim to relief that is plausible on its 

face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when 

the plaintiff pleads facts that “allow the court to draw the reasonable inference that the defendant 

is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation 

omitted). There must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. 

While courts do not require “heightened fact pleading of specifics,” a claim must be supported by 

facts sufficient to “raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555, 

570.

Under Federal Rule of Civil Procedure 9(b), a party must “state with particularity the 

circumstances constituting fraud or mistake,” including “the who, what, when, where, and how of 

the misconduct charged.” Vess v. Ciba-Geigy Corp. USA, 317 F.3d 1097, 1106 (9th Cir. 2003) 

(internal quotation marks omitted). However, “Rule 9(b) requires only that the circumstances of 

fraud be stated with particularity; other facts may be pleaded generally, or in accordance with Rule 

8.” United States ex rel. Lee v. Corinthian Colls., 655 F.3d 984, 992 (9th Cir. 2011). In deciding a 

motion to dismiss for failure to state a claim, the court accepts all of the factual allegations as true 

 

4 While Synopsys contends that I may rely on this outside-the-pleadings-evidence in support of its 

futility arguments in opposing the motion for leave to amend, the authorities Synopsys relies on 

are not persuasive. Gaspard v. DEA Task Force, 2016 WL 2586182, at *1 (C.D. Cal., April 4, 

2016) (deciding issue without analysis and misstating cited reference); Haney v. Baker, 2012 WL 

2521895, at *3 (E.D. Cal. June 28, 2012) (relying on evidence in support of a motion to dismiss 

for failure to exhaust administrative remedies). I conclude that I may rely on this evidence only in 

support of Synopsys’ special motion to strike UNIL’s state law counterclaims. In that regard, 

defendants contest whether there is proof Ubiquiti “clicked” assent to the terms of use and argue 

even if it did, it has alleged conduct that could not be consented to (e.g., that the piracy software 

surveilled “areas of Ubiquiti’s and/or UNIL’s computers and servers wholly unconnected to the 

areas where Synopsys’ evaluation software operated, and to monitor, collect, and transmit 

confidential, proprietary information with no connection to Synopsys’ evaluation software.”). 

UNIL Counterclaim ¶ 48.
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and draws all reasonable inferences in favor of the plaintiff. Usher v. City of Los Angeles, 828 

F.2d 556, 561 (9th Cir. 1987). But the court is not required to accept as true “allegations that are 

merely conclusory, unwarranted deductions of fact, or unreasonable inferences.” In re Gilead Scis. 

Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008).

II. SPECIAL MOTION TO STRIKE

California Code of Civil Procedure section 425.16 is California’s response to “strategic 

lawsuits against public participation,” or SLAPP lawsuits. It was enacted “to provide a procedure 

for expeditiously resolving nonmeritorious litigation meant to chill the valid exercise of the 

constitutional rights of freedom of speech and petition in connection with a public issue.” Hansen 

v. California Dep’t of Corr. & Rehab., 171 Cal. App. 4th 1537, 1542-43 (2008). It provides that a 

cause of action against a person “arising from any act of that person in furtherance of the person’s 

right of petition or free speech under the United States Constitution or the California Constitution 

in connection with a public issue shall be subject to a special motion to strike, unless the court 

determines that the plaintiff has established that there is a probability that the plaintiff will prevail 

on the claim.” Cal. Civ. Proc. Code § 425.16(b)(1). An “act in furtherance of the person’s right of 

petition or free speech under the United States Constitution or the California Constitution in 

connection with a public issue” includes:

(1) any written or oral statement or writing made before a legislative, executive, or 

judicial proceeding, or any other official proceeding authorized by law, 

(2) any written or oral statement or writing made in connection with an issue under 

consideration or review by a legislative, executive, or judicial body, or any other 

official proceeding authorized by law, 

(3) any written or oral statement or writing made in a place open to the public or a 

public forum in connection with an issue of public interest, or 

(4) any other conduct in furtherance of the exercise of the constitutional right of 

petition or the constitutional right of free speech in connection with a public issue 

or an issue of public interest.

Cal. Civ. Proc. Code § 425.16(e).

“When served with a SLAPP suit, the defendant may immediately move to strike the 
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complaint under Section 425.16.” Id. at 1543. That motion is known as an anti-SLAPP motion. 

To determine whether an anti-SLAPP motion should be granted, the trial court must engage in a 

two-step process. “First, the defendant must make a prima facie showing that the plaintiff’s suit 

arises from an act in furtherance of the defendant’s rights of petition or free speech.” Mindys 

Cosmetics, Inc. v. Dakar, 611 F.3d 590, 595 (9th Cir. 2010) (citation and internal quotation marks 

omitted). “Second, once the defendant has made a prima facie showing, the burden shifts to the 

plaintiff to demonstrate a probability of prevailing on the challenged claims.” Id. 

“At [the] second step of the anti-SLAPP inquiry, the required probability that [a party] will 

prevail need not be high.” Hilton v. Hallmark Cards, 599 F.3d 894, 908 (9th Cir. 2009). A 

plaintiff must show “only a ‘minimum level of legal sufficiency and triability.’” Mindys, 611 F.3d 

at 598 (quoting Linder v. Thrifty Oil Co., 23 Cal. 4th 429, 438 n.5 (2000)). The plaintiff need only 

“state and substantiate a legally sufficient claim.” Id. at 598-99 (citation and internal quotation 

marks omitted). In conducting its analysis, the “court ‘does not weigh the credibility or 

comparative probative strength of competing evidence,’ but ‘should grant the motion if, as a 

matter of law, the defendant’s evidence supporting the motion defeats the plaintiff’s attempt to 

establish evidentiary support for the claim.’” Id. at 599 (quoting Wilson v. Parker, Covert & 

Chidester, 28 Cal. 4th 811, 821 (2002). At this stage, the court considers “the pleadings, and 

supporting and opposing affidavits stating the facts upon which the liability or defense is based.” 

Id. at 598 (quoting Cal. Civ. Proc. Code § 425.16(b)(2)).

“[T]he anti-SLAPP statute cannot be used to strike federal causes of action.” Hilton v. 

Hallmark Cards, 599 F.3d 894, 901 (9th Cir. 2010).

III. MOTION FOR LEAVE

Under Federal Rule of Civil Procedure 15(a), leave to amend “shall be freely given when 

justice so requires.” Fed. R. Civ. P. 15(a). However, it “is not to be granted automatically.” 

Jackson v. bank of Hawaii, 902 F. 2d 1385, 1387 (9th Cir. 1990). Courts generally weigh the 

following factors to determine whether leave should be granted: “(1) bad faith, (2) undue delay, 

(3) prejudice to the opposing party, (4) futility of amendment; and (5) whether plaintiff has 

previously amended his complaint.” In re W. States Wholesale Natural Gas Antitrust Litig., 715 
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F.3d 716, 738 (9th Cir. 2013).

A lack of diligence may warrant denying leave under Rule 15. “Where the party seeking 

amendment knows or should know of the facts upon which the proposed amendment is based but 

fails to include them in the original complaint, the motion to amend may be denied.” Jordan v. 

County of Los Angeles, 669 F.2d 1311, 1324 (9th Cir. 1982), vacated on other grounds, 459 U.S. 

810 (1982).

DISCUSSION

I. UBIQUITI MOTION FOR LEAVE TO AMEND 

Ubiquiti seeks leave to amend its counterclaims to add the computer abuse and related state 

law counterclaims; essentially the identical counterclaims UNIL asserts against Synopsys.5 

Synopsys opposes on grounds of undue delay, prejudice, and futility.

A. Delay

Synopsys argues that Ubiquiti has unduly delayed moving to amend because Ubiquiti 

knew the factual basis underlying the current claims at least as of March 2017 when it filed its 

initial counterclaims, and arguably even earlier in May 2016 when ITCA confronted Ubiquiti with 

its evidence that Ubiquiti was illegally accessing and using Synopsys’ software. Proposed 

Counterclaims ¶ 45. However, while the facts could have been suspected in May 2016, they were 

not known until March 2017. Given that this case is still very much in its infancy, I will not deny 

leave to amend based on undue delay.

B. Prejudice/Futility

The parties have agreed to an aggressive schedule, with close of fact discovery in April

2018. Synopsys contends that adding in these counterclaims now will cause significant delay to 

that schedule, especially given the allegations against the two “conspirators” ITCA and SmartFlow 

(as part of RICO enterprise) may require their joinder and, in any event, significant additional 

discovery. However, this third-party discovery (or motion practice) will arguably be required if 

UNIL’s counterclaims stand after Synopsys’s motion to dismiss, irrespective of whether Ubiquiti 

 

5 UNIL does not assert a breach of contract counterclaim, because UNIL was not a signatory to the 

MNDA signed by Ubiquiti and Synopsys.
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is given leave to amend. Therefore, prejudice could be demonstrated only if UNIL’s 

counterclaims are dismissed and then Ubiquiti was given leave to amend. Whether that is 

warranted depends on whether that leave would be futile, which will be considered below in 

conjunction with Synopsys’s motion to dismiss UNIL’s counterclaims. 

II. MOTION TO DISMISS UNIL COUNTERCLAIMS/FUTILITY OF UBIQUITI’S 

PROPOSED COUNTERCLAIMS

Synopsys moves to dismiss UNIL’s second through eighth counterclaims, arguing the 

claims are either barred as a matter of law or inadequately pleaded.6 Similarly, Synopsys argues 

that allowing Ubiquiti leave to add its proposed counterclaims is futile as those claims fail on 

essentially the same grounds as UNIL’s. 

A. Computer Fraud and Abuse Act – 18 U.S.C. § 1030 et seq.

The “CFAA was enacted in 1984 to enhance the government’s ability to prosecute 

computer crimes. The act was originally designed to target hackers who accessed computers to 

steal information or to disrupt or destroy computer functionality, as well as criminals who 

possessed the capacity to ‘access and control high technology processes vital to our everyday 

lives. . . .’ [] The CFAA prohibits a number of different computer crimes, the majority of which 

involve accessing computers without authorization or in excess of authorization, and then taking 

specified forbidden actions, ranging from obtaining information to damaging a computer or 

computer data.” LVRC Holdings LLC v. Brekka, 581 F.3d 1127, 1130–31 (9th Cir. 2009).

UNIL alleges (and Ubiquiti seeks to allege) three violations under the Computer Fraud and 

Abuse Act: a violation of 28 U.S.C. § 1030(a)(2) – prohibiting “intentionally accesses a computer 

without authorization or exceeds authorized access” and thereby obtaining “information from any 

protected computer if the conduct involved an interstate or foreign communication”; a violation of 

§ 1030(a)(4) – prohibiting “knowingly and with intent to defraud, accesses a protected computer 

without authorization, or exceeds authorized access, and by means of such conduct furthers [a]

intended fraud and obtains anything of value”; and violation of § 1030(a)(5)(A-C) –prohibiting 

 

6

Synopsys does not move to dismiss UNIL’s first counterclaim, seeking declaratory relief that any 

use of plaintiff’s software programs by UNIL did not constitute a violation of 17 U.S.C. § 1201.
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(A) knowingly causing the transmission of a program, information, code, or 

command, and as a result of such conduct, intentionally causes damage without 

authorization, to a protected computer, 

(B) intentionally accesses a protected computer without authorization, and as a 

result of such conduct, recklessly causes damage, or 

(C) intentionally accesses a protected computer without authorization, and as a 

result of such conduct, causes damage and loss.

Under § 1030(g), in order to bring a private right of action under any of these provisions, 

defendants must also allege one of the following forms of damage, under § 1030(c)(4)(A)(i):

(I) loss to 1 or more persons during any 1-year period . . . aggregating at least 

$5,000 in value;

(II) the modification or impairment, or potential modification or impairment, of the 

medical examination, diagnosis, treatment, or care of 1 or more individuals;

(III) physical injury to any person;

(IV) a threat to public health or safety;

Synopsys contends that the CFAA counterclaims fail for a number of reasons, as discussed 

below.

1. Unauthorized Access

All CFAA claims asserted require “unauthorized access.” Synopsys argues that cannot be 

shown here where defendants intentionally visited Synopsys’s website and voluntarily 

downloaded Synopsys’s software. See, e.g., In re Sony PS3 Other OS Litigation, 551 Fed.Appx. 

916, 923 (9th Cir. 2014) (“As lower courts have reasoned, users who had ‘voluntarily installed’ 

software that allegedly caused harm cannot plead unauthorized ‘access’ under the CFAA.”); see 

also In re iPhone Application Litigation, 844 F.Supp.2d 1040, 1066 (N.D. Cal. 2012) (“Voluntary 

installation of software that allegedly harmed the phone was voluntarily downloaded by the user. 

Other courts in this District and elsewhere have reasoned that users would have serious difficulty 

pleading a CFAA violation.”); see also Flextronics International, Ltd. v. Parametric Technology 

Corporation, 2014 WL 2213910, at *5 (N.D. Cal., May 28, 2014, No. 5:13-CV-00034-PSG) 
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(interpreting the California CDAFA and holding “that an unknown file or subroutine of otherwise 

voluntarily installed software cannot be said to have been installed on the computer ‘without 

permission’ in violation of the CDAFA.”).

These unauthorized access cases are not helpful to Synopsys. Defendants’ theory is that 

Synopsys exceeded any authorization it may have had by using the hidden anti-piracy software to 

access their confidential information. See, e.g., Flextronics International, Ltd., 2014 WL 

2213910, at *3 (denying motion to dismiss “exceed authorization” CFAA claim where plaintiff 

alleged defendants concealed embedded technology in their software and used that technology to 

“access, obtain, and transmit information” in plaintiff’s computers that defendants were not 

entitled to access, obtain, or transmit). UNIL has alleged and Ubiquiti can (if otherwise sufficient) 

allege an “exceeds authorization” claim under the CFAA.7

2. Use Versus Access to Data

Synopsys argues that because defendants’ complaints are about the use of the data secured 

by Synopsys – as opposed to the access to that information by its anti-piracy software –

defendants cannot plead a CFAA claim focused on the impermissible “access” to computers. As 

explained by the Ninth Circuit, “the plain language of the CFAA ‘target[s] the unauthorized 

procurement or alteration of information, not its misuse or misappropriation.’” U.S. v. Nosal, 676 

F.3d 854, 863 (9th Cir. 2012). The court so held in the context of narrowly interpreting the statute 

to not criminalize the conduct of users who simply exceed corporate “terms of use” to hold “that 

the phrase ‘exceeds authorized access’ in the CFAA does not extend to violations of use 

restrictions.” Id. 

As noted above, this case fits within the “exceeds authorization” line of cases because the

allegations are not based on violation of generally applicable “terms of use” but based on the 

 

7

Synopsys contends that because Ubiquiti consented to its terms of use when Ubiquiti 

downloaded the software – relying on its outside-the-allegations evidence – Ubiquiti expressly 

consented to and had notice of Synopsys’s anti-piracy efforts and therefore cannot allege a CFAA 

claim. Opposition to Motion for Leave to Amend (Synopsys Oppo.) at 7-9. That may be true, but 

this evidence cannot be relied on in support of the opposition for leave to amend. The same is true 

of Synopsys’s attempt to rely on this evidence in support of its opposition on Ubiquiti’s proposed 

Section 502, trespass, and conversion claims discussed below.
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hidden presence of software that accesses, obtains, and transmits information that a party was not 

entitled to access, obtain, or transmit. See Flextronics International, Ltd., 2014 WL 2213910, at 

*3. Synopsys’s argument does not work.

3. Damage and Loss

Synopsys contends that defendants fail to allege facts to show that defendants suffered a 

“loss” of more than $5,000 in a one year period as a result of Synopsys’ conduct. A mere 

conclusion of damage or loss is insufficient. See, e.g., NovelPoster v. Javitch Canfield Group, 140 

F.Supp.3d 938, 949 (N.D. Cal. 2014).8There are two problems with the defendants’ counterclaim 

allegations. While defendants are correct that courts have considered the “cost of investigating the 

source of a breach and remedying it” as a loss appropriately counted towards the $5,000 mark, 9

there are no facts alleged that defendants incurred $5,000 of loss in responding to Synopsys’ 

alleged illegal conduct.

10

 Further, while defendants have no doubt incurred costs investigating 

how Synopsys learned about defendants’ alleged piracy, those expenses would necessarily have 

been incurred as part of defendants’ investigation of and response to Synopsys’s affirmative 

allegations against them. Defendants must plead facts showing that they incurred costs above and 

beyond those needed to respond to Synopsys’s affirmative claims to state a separate claim for 

damages recoverable under the CFAA.

In addition, there are no allegations that the presence of Synopsys’ anti-piracy software 

 

8

“Loss” is defined as “any reasonable cost to any victim, including the cost of responding to an 

offense, conducting a damage assessment, and restoring the data, program, system, or information 

to its condition prior to the offense, and any revenue lost, cost incurred, or other consequential

damages incurred because of interruption of service.” § 1030(e)(11). “Damage” is defined “any 

impairment to the integrity or availability of data, a program, a system, or information.” § 

1030(e)(8).

9

See, e.g., Enki Corporation v. Freedman, No. 5:13-CV-02201-PSG, 2014 WL 261798, at *2 

(N.D. Cal., Jan. 23, 2014) (“the cost of investigating the source of the breach and remedying it 

would qualify as ‘loss’ within that definition, as they would be required to return the system to its 

secured state”).

10 UNIL alleges only Synopsys’s actions have “imposed unknown costs by depriving Ubiquiti and

UNIL of the economic value of confidential information taken without their consent or

knowledge, and causing undue expenditures of resources to investigate access to proprietary

information” and then that they have been damaged of an unknown total “but aggregating more 

than $5,000.” UNIL Counterclaims ¶¶ 49, 66.
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caused any disruption or other damage to defendants’ computer systems. See, e.g., In re iPhone 

Application Litigation, 844 F.Supp.2d 1040, 1067 (N.D. Cal. 2012) (while “Plaintiffs have alleged 

that the location files consume valuable memory space on their iDevices, Plaintiffs have not 

plausibly alleged that the location file impairs Plaintiffs’ devices or interrupts service, or otherwise 

fits within the statutory requirements of “loss” and “economic damage” as defined by the 

statute”).11

Finally, defendants have not plausibly alleged that accessing the types of information 

secured by Synopsys – IP addresses, MAC addresses, user names, host names, user accounts, 

email addresses, workstation information, system administrators, and IT system logs – caused

economic damage to defendants under the CFAA. In re iPhone Application Litigation, 844 

F.Supp.2d at 1068 (“courts have tended to reject the contention that personal information—such as 

the information collected by the Mobile Industry Defendants—constitutes economic damages 

under the CFAA.”).12 The categories of information identified do not, on their face, appear to 

convey or create any economic value to defendants (or create harm to defendants’ customers and 

hence defendants).

Finally, the claim under § 1030(a)(5) requires a showing of damage to the computer 

systems – e.g., some impairment of the functioning of those systems. Defendants have not 

pleaded such a claim.

UNIL’s failure to adequately allege damage and loss under the CFAA requires the 

dismissal of those counterclaims. Ubiquiti’s failure to allege the same makes their proposed 

 

11 Defendants vaguely plead “damage and loss” from impairment of integrity of defendants’ 

information and “otherwise causing damage to protected computers.” UNIL Counterclaims ¶ 63. 

12 Defendants assert only that “confidential and proprietary information that was collected by the 

Enterprise has economic value to Ubiquiti, UNIL, their competitors, and those who trade in such 

information, and is information that Ubiquiti and UNIL use as an economic asset.” UNIL 

Counterclaim ¶ 64. However, as Synopsys points out, there are no facts supporting that allegation 

and numerous cases in this District have rejected the argument that IP addresses and other 

categories of information defendants contend were unlawfully accessed and transmitted have any 

proprietary value. Defendants’ reliance on U.S. v. Ivanov, 175 F.Supp.2d 367, 371 (D. Conn. 

2001) is misplaced. In that case, by obtaining “root access” a hacker had complete control over 

the victim’s information (credit card numbers and merchant account numbers) and systems. The 

value of credit card and merchant account numbers to a hacker is obvious.
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amendment futile. 

4. Fraud 

For the § 1030(a)(4) claim, defendants must also allege facts supporting a knowing intent 

to defraud defendants with particularity under Rule 9. See, e.g., Oracle America, Inc. v. Service 

Key, LLC, 2012 WL 6019580, at *6 (N.D. Cal. 2012) (“Rule 9(b) plainly applies to section 

1030(a)(4)’s requirement that the defendant’s acts further the intended fraud.”).13 Synopsys 

initially challenges the failure of defendants to plead the who, what, where, when of a knowing 

intent to defraud. Read generously, the essence of defendants’ allegations is that Ubiquiti was 

misled by the failure of Synopsys to disclose in the negotiations with Ubiquiti and the signing of 

the MNDA that Synopsys would embed and access the piracy tools in the software defendants 

intended to download. 

More problematic is that defendants’ fraud theory rests on an implausible chain of 

inferences: Synopsys induced Ubiquiti (not UNIL) to enter into the MNDA with the expectation 

that Ubiquiti’s confidential information would be kept confidential -> Synopsys expected 

defendants would download its software -> defendants would (without any alleged encouragement 

by Synopsys) continue to use that software after the evaluation licenses expired -> Synopsys 

would uncover that continued use through its hidden anti-piracy software -> and Synopsys would 

then be able to “defraud” defendants by demanding exorbitant licensing fees.14 The heart of the 

fraud allegations are not plausible as alleged.

UNIL has a separate and threshhold problem. It was not a party to the MNDA. It is 

unclear whether (and if so, how) UNIL’s fraud claim could be based on the subsequent 

conversations UNIL had with Synopsys regarding UNIL’s evaluation license.

 

13 Because defendants’ § 1030(a)(4) counterclaim expressly pleads fraudulent action by Synopsys, 

even its own authorities recognize the need to meet the 9(b) standard. NetApp, Inc. v. Nimble 

Storage, Inc., 41 F.Supp.3d 816, 834 (N.D. Cal. 2014) (when “read together, the foregoing 

precedents require that CFAA claims under § 1030(a)(4) be pleaded with specificity only when 

fraudulent conduct is specifically alleged as the basis for the wrongdoing.”).

14 The fraud allegations in the stand-alone fraud and RICO counterclaims suffer from the same 

implausibility as discussed in more detail below.
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UNIL’s §§ 1030(a)(2) and (a)(5) counterclaims are DISMISSED with leave to amend to 

plead facts regarding loss and damages, and the § 1030(a)(4) counterclaim based on fraud is 

DISMISSED with leave to amend to attempt to plead a plausible claim. Ubiquiti’s motion for 

leave to amend is DENIED as to the CFAA, without prejudice. Ubiquiti may move for leave to 

amend again, if it can plausibly allege loss and damage under §§ 1030(a)(2) and (a)(5) and fraud 

under § 1030(a)(4).

B. California Penal Code Section 502 - the Comprehensive Computer Data 

Access and Fraud Act (“CCDAFA”)

1. Pleading deficiencies

Defendants allege that Synopsys violated several subsections of California Penal Code § 

502(c), which prohibits one who: § 502(c) (1) –“[k]nowingly accesses and without permission 

alters, damages, deletes, destroys, or otherwise uses any data, computer, computer system, or 

computer network in order to either (A) devise or execute any scheme or artifice to defraud, 

deceive, or extort, or (B) wrongfully control or obtain money, property, or data”; § 502(c)(2) –

“[k]nowingly accesses and without permission takes, copies, or makes use of any data from a 

computer, computer system, or computer network”; § 502(c)(3) –“[k]nowingly and without 

permission uses or causes to be used computer services”; § 502(c)(6) –“[k]nowingly and without 

permission provides or assists in providing a means of accessing a computer, computer system, or 

computer network in violation of this section”; § 502(c)(7) –“[k]nowingly and without permission 

accesses or causes to be accessed any computer, computer system, or computer network”; and § 

502(c)(8) –“[k]nowingly introduces any computer contaminant into any computer, computer 

system, or computer network.”

Synopsys argues that there is substantial overlap between the CFAA and CCDAFA except 

for one respect: “A plain reading of the [CCDAFA] demonstrates that its focus is on unauthorized 

taking or use of information. In contrast, the CFAA criminalizes unauthorized access, not 

subsequent unauthorized use.” U.S. v. Christensen, 801 F.3d 970, 994 (9th Cir. 2015) (emphasis 

in original). More generally, Synopsys contends that the CCDAFA claims fail for the same 

reasons as the CFAA claims. For the reasons discussed above, I agree with Synopsys concerning 
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the fraud-based allegations and damage/loss allegations. See, e.g., Perkins v. LinkedIn 

Corporation, 53 F.Supp.3d 1190, 1219 (N.D. Cal. 2014) (“Plaintiffs must plead some injury 

emanating from LinkedIn’s alleged Section 502 violations to survive the Motion to Dismiss. See

Cal.Penal Code § 502(e)(1) (noting that only an individual ‘who suffers damage or loss by reason 

of a violation’ may bring a private action).”). Its other arguments on this cause of action, 

discussed below, are not well taken.

a. Without Permission

With respect to the claims that require actions to be “without permission,” (i.e., (2), (3), 

(6), and (7)), some courts in this District have concluded that “when software containing 

‘surreptitious code’ is installed voluntarily by a plaintiff, a defendant has not accessed the 

plaintiff’s computer ‘without permission,’ even if the plaintiff was unaware of the ‘surreptitious 

code’ when he or she installed the software.” Flextronics International, Ltd. v. Parametric 

Technology Corporation, 2014 WL 2213910, at *4 (N.D. Cal., May 28, 2014, No. 5:13-CV00034-PSG); In re iPhone Application Litig., 2011 WL 4403963, at *12 (N.D. Cal., Sept. 20, 

2011, No. 11-MD-02250-LHK) (“Plaintiffs’ own allegations, the iOS and third party apps—which 

contain the alleged ‘surreptitious code’—were all installed or updated voluntarily by Plaintiffs.”). 

However, other courts faced with allegations that embedded software was “deeply hidden” so that 

plaintiffs had no notice it “was operating, and they had no way to remove the software or to optout of its functionality” have concluded that voluntary installation does not defeat the CCDAFA 

claim. In re Carrier IQ, Inc., 78 F.Supp.3d 1051, 1101 (N.D. Cal. 2015). 

Defendants argue that this case is more similar to In re Carrier IQ and goes beyond the 

“voluntary installation” cases because not only do they allege that the anti-piracy software was 

deeply hidden, but they assert that the areas of their systems accessed and “surveilled” by the antipiracy software had nothing to do with the use or running of Synopsys’ EDA software. UNIL 

Counterclaim ¶ 106. These allegations adequately allege access was “without permission” under 

the CCDAFA to the areas of defendants’ systems “wholly unconnected to the areas where 

Synopsys’ evaluation software operated.” Id.

 
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b. Knowing Access

As an additional ground to dismiss under CCDAFA, Synopsys argues that defendants need 

to but have not pleaded facts that could show that Synopsys subjectively believed that it lacked 

permission to access defendants’ computers in the way it did given defendants’ voluntary actions 

downloading Synopsys’s software, including the anti-piracy component. With particular respect 

to UNIL, Synopsys argues there are no allegations that UNIL and Synopsys had an agreement 

(like the MNDA with Ubiquiti) to not disclose information that it secured, no allegations of breach 

of terms of use, and no allegation that Synopsys did anything to circumvent technical barriers. 

However, this argument ignores defendants’ claims that the hidden anti-piracy exceeded the 

contemplated and authorized use of defendants’ data by Synopsys’ software. Defendants could 

not have given permission for activities that Synopsys knew (or were alleged to have known) were 

hidden from defendants’ knowledge. 

c. Contaminant 

Defendants also argue that they have separately pleaded a claim under Section 502(c)(8), 

which does not contain a “without permission” requirement, but does require a “contaminant” to 

have been placed in defendants’ computers. As explained in Flextronics International, Ltd. v. 

Parametric Technology Corporation, 2014 WL 2213910, at *5 (N.D. Cal., May 28, 2014), in 

order to state a claim under this subsection “plaintiff need only allege that the actions of the 

contaminant (modify/damage/destroy/record/ transmit) were undertaken by overcoming a 

technical barrier without the permission of the owner; the introduction of the contaminant to the 

system need not surmount the same hurdle.” In Flextronics, the plaintiff was able to state a claim 

where defendant was alleged to have embedded hidden technology in plaintiff’s system (even 

though initial access was with permission) but thereafter used the embedded technology to 

transmit information within the computer system without the intent or permission of the owners of 

the information. Id. at *6. Defendants have made similar allegations here. 

2. Use of Data and CUTSA

In addition to the pleading deficiency arguments, Synopsys contends that to the extent that 

defendants’ CCDAFA claims are based on misappropriation of confidential and proprietary 
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information, the claims are preempted by California’s Uniform Trade Secrets Act (CUTSA). 

Synopsys points to a line of cases holding that where there are allegations of misappropriation of 

information, even if that information does not meet the high standard of a protectable trade secret, 

any claim based on the misappropriation of that information is nonetheless preempted. See, e.g., 

Waymo LLC v. Uber Technologies, Inc., 256 F.Supp.3d 1059, 1063 (N.D. Cal. 2017) (“CUTSA 

also supersedes claims based on alleged misappropriation of non-trade secret information unless 

some other provision of positive law grants a property right in that information.”). 

However, the cases relied on by Synopsys address preemption of common law and unfair 

competition claims and do not explicitly address whether CUTSA would preempt a statutory

claim arising under the California Penal Code. See, e.g., Waymo LLC v. Uber Technologies, Inc., 

256 F.Supp.3d 1059, 1064 (N.D. Cal. 2017) (preempts Cal. Bus. & Prof. Code § 17200 claim 

based on misappropriation of information); Avago Technologies U.S. Inc. v. Nanoprecision 

Products, Inc., 2017 WL 412524, at *8 (N.D. Cal., Jan. 31, 2017) (conversion claim prerempted); 

Heller v. Cepia, L.L.C., 2012 WL 13572, at *7 (N.D. Cal. Jan. 4, 2012) (finding misappropriation, 

conversion, unjust enrichment, and trespass to chattels claims based on misappropriate of 

information superseded by CUTSA); SunPower Corp. v. SolarCity Corp., 2012 WL 6160472, at 

*3 (N.D. Cal. Dec. 11, 2012) (listing common law claims); see also Regents v. Aisen, 2016 WL 

4097072, *8 (S.D. Cal., Apr. 18, 2016) (rejecting preemption of CCDAFA claim).15 Absent 

additional authority or persuasive argument, I will not find the CCDAFA claim preempted even if 

based in part on the misappropriation and subsequent use of defendants’ information. 

3. Noerr-Pennington and Litigation Privilege

Finally, Synopsys argues that defendants cannot assert a CCDAFA claim based on the use

of the information secured by Synopsys because that use, as alleged by defendants, constitutes 

 

15 I recognize that the court in Henry Schein, Inc. v. Cook, 2017 WL 783617, at *5 (N.D. Cal., 

Mar. 1, 2017, No. 16-CV-03166-JST), found in passing that a Section 502 claim was preempted

under CUTSA. However, the court did not analyze how CUTSA could preempt a specific 

provision of the California Penal Code that provides a private right of action for use of 

misappropriated information secured from a computer “hack,” as opposed to common law claims 

based on misappropriation of business information. 
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pre-litigation conduct protected under the Noerr-Pennington doctrine as petitioning activity and 

protected activity under California’s litigation privilege. Cal. Civil Code § 47(b). 

The Noerr-Pennington doctrine “provides that concerted efforts to petition the government 

that would otherwise be illegal may nonetheless be protected by the First Amendment's Petition 

Clause when certain criteria are met.” United Nurses Associations of California v. National Labor 

Relations Board, 871 F.3d 767, 786–87 (9th Cir. 2017). Protected conduct includes conduct 

“incidental” to litigation, such as “sending a pre-litigation settlement demand letter.” Id. at 788; 

see also Sosa v. DIRECTV, Inc., 437 F.3d 923, 940 (9th Cir. 2006) (“presuit letters threatening 

legal action and making legal representations” are protected under the Noerr-Pennington doctrine 

“absent representations so baseless that the threatened litigation would be a sham.”). 

However, it is not the use of defendants’ data by SmartFlow and Synopsys, resulting in 

ITCA sending its demand letter to Ubiquiti, that underlays the CCDAFA claims. The CCDAFA 

claims hinge on the use of the hidden anti-piracy software that allegedly exceeded defendants’ 

understanding of what Synopsys’ software would do and defendants’ authorization, and then 

Synopsys disclosure of that allegedly confidential information to SmartFlow and ITCA. The 

Noerr-Pennington doctrine does not immunize Synopsys from these claims.16

In sum, UNIL’s CCDAFA claims are DISMISSED with leave to amend the damage/loss

and fraud allegations, and Ubiquiti’s motion for leave to amend is DENIED without prejudice.

C. RICO

Synopsys argues that defendants’ Racketeer Influenced and Corrupt Organizations Act

(RICO) counterclaims are deficient because of their failure to adequately plead: (i) an enterprise, 

(ii) a pattern of racketeering activity, (iii) proximate cause, and (iv) for UNIL, a domestic injury.

17

 

Even if those deficiencies could be cured, Synopsys argues that the RICO claims are also barred 

 

16 Synopsys’s argument under California’s litigation privilege – which similarly protects 

communications made in connection with contemplated or ongoing litigation – fails for the same 

reasons. See, e.g., Rohde v. Wolf, 154 Cal.App.4th 28, 36 (2007) (pre-litigation communication is 

privileged only when it relates to litigation that is contemplated in good faith and under serious 

consideration).

17 UNIL has pleaded and Ubiquiti seeks to plead a substantive RICO claim under 18 U.S.C. § 

1962(c) and a RICO conspiracy claim under § 1962(d). 
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because they are inextricably based on pre-litigation petitioning activity protected under the 

Noerr-Pennington doctrine.

1. Pleading deficiencies

The RICO statute, 18 U.S.C. § 1962(c), requires a plaintiff to prove that each defendant 

participated: in (1) the conduct of (2) an enterprise that affects interstate commerce (3) through a 

pattern (4) of racketeering activity which (5) the proximately harmed the victim. See Eclectic 

Properties E., LLC v. Marcus & Millichap Co., 751 F.3d 990, 997 (9th Cir. 2014). To show an 

enterprise, “plaintiffs must plead that the enterprise has (A) a common purpose, (B) a structure or 

organization, and (C) longevity necessary to accomplish the purpose.” Id. The purpose here is the 

implementation of a “compliance program for Synopsys to recover license fees and to convert 

suspected unlicensed users of Synopsys’ EDA software to licensed customers.” UNIL 

Counterclaims ¶ 95.

“Racketeering activity,” as defined in 18 U.S.C. § 1961(1)(B), is the commission of a 

predicate act that is one of an enumerated list of federal crimes; here the only predicate acts 

identified are wire fraud under 18 U.S.C. § 1343. The acts of wire fraud as part of the pattern of 

racketeering activity alleged are:

(a) September 11, 2013 and September 16, 2013 emails from

Synopsys’s manager to Tsai and Ubiquiti’s general counsel

representing Synopsys’ proposed MNDA terms, which were false or 

misleading when made because Synopsys did not intend to protect 

Defendants’ confidential information disclosed from computers in 

California and Taiwan pursuant to the MNDA, but rather intended to 

monitor and collect it via embedded spyware;

(b) November 15, 2013 and November 25, 2013 emails from

Synopsys’s manager to Tsai and Ubiquiti’s in-house counsel with 

Synopsys executed copies of the MNDA, which were false or 

misleading when made because Synopsys did not intend to protect 

Defendants’ confidential information disclosed from computers in 

California and Taiwan pursuant to the

MNDA;

(c) Transmission of Synopsys’s software installation,

documentation, and license files from Synopsys’s electronic file 

transfer website hosted on California servers to Tsai in December

2013, which resulted in SmartFlow’s spyware being installed on 

Ubiquiti’s and UNIL’s servers in California and Taiwan;

(d) Transmission of Synopsys’s software installation, 
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documentation, and license files from Synopsys’s electronic file 

transfer website hosted on California servers to UNIL in April

2014, which resulted in SmartFlow’s spyware being installed on 

Ubiquiti’s and UNIL’s servers in California and Taiwan;

(e) The Enterprise’s continual monitoring, collection, and 

transmittal of Defendants’ confidential information through spyware 

from Ubiquiti’s and UNIL’s servers in California and Taiwan 

between November 2013 and approximately May 2016, representing 

a 2.5-year period during which the Enterprise conspired to avoid 

detection of the spyware, thereby extending the time period over 

which Synopsys could claim damages in the form of retroactive 

license fees; and

(f) May 10, 2016 email from ITCA, containing a letter from its chief 

executive officer Chris Luijten based in Netherlands to Ubiquiti’s 

chief executive officer in the United States, with a settlement 

demand on behalf of Synopsys, followed by subsequent email 

demands to Ubiquiti to recover Synopsys’ fees over a 2.5-year 

period for unlicensed users alleged by ITCA to have accessed 

Synopsys’ EDA software, but who had no reason to ever use or 

access the software for an evaluation or any other purpose. 

UNIL Counterclaims ¶ 100. 

a. Enterprise/Purpose

A RICO enterprise has three elements: (1) a common purpose, (2) an ongoing 

organization, and (3) a continuing unit. United States v. Christensen, 828 F.3d 763, 780 (9th Cir. 

2015). Synopsys argues, first, that defendants have not pleaded these elements because they have 

only pleaded (and can only plead) facts showing legitimate and arms-length business dealings 

between Synopsys, the supplier of its anti-piracy software, and its enforcement agent ITCA, all of 

whom are engaged in permissible anti-piracy endeavors. Because all three’s endeavors are 

consistent with a legitimate business purpose, there can be no inference of a RICO enterprise with 

a common, illegal purpose. Synopsys MTD at 15. The cases relied on by Synopsys for this point 

are well-taken as to the RICO conspiracy claim, but do not preclude a direct RICO claim. 

However, other deficiencies in the enterprise allegations exist. For example, defendants 

have failed to plead that anyone other than Synopsys had knowledge of the only predicate act – the 

wire fraud – because there are no allegations that SmartFlow or ITCA were aware of the MNDA 

and negotiations regarding access to Synopsys’ software. MTD at 15-16. The existence of the 

MNDA is key to the effectuation of the enterprise’s fraud (enticing victims to download 

Synopsys’ software with false assurances the victims’ confidential information will not be used 
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against them). Similarly, Synopsys points out that there is no evidence that SmartFlow or ITCA 

were involved in the litigations filed by Synopsys against alleged unlicensed users of its software, 

yet these “improper” litigations are really the only facts supporting the purpose and longevity 

elements. Defendants’ enterprise allegations are deficient.

b. Predicate Acts/Pattern of Racketeering Activity 

To plead a RICO pattern, at least two predicate acts of racketeering activity need to be 

alleged. 18 U.S.C. § 1961(5). Synopsys argues that only one instance of wire fraud has been 

alleged – the entering into the MNDA by Ubiquiti – which is insufficient to allege a pattern. 

Defendants discuss other “wire acts,” including the actual downloading of the Synopsys software, 

but defendants identify no additional representations or omissions that occurred in connection 

with those downloads. The downloads are merely the effectuation of the initial fraud. As to the 

May 2016 communications from ITCA (by letter and subsequent email), defendants do not assert 

that the ITCA communications were fraudulent in and of themselves (e.g., they intentionally 

misstated or overstated the use of Synopsys’s software by defendants), only that they were part of 

the otherwise fraudulent scheme.

Defendants might also intend to rely on the “information and belief” conduct that 

Synopsys and its Enterprise associates undertook with respect to the other lawsuits identified, in 

support of the pattern of racketeering element. UNIL Counterclaims ¶¶ 19-23. But information 

and belief is insufficient. Facts must be stated to support a charge that Synopsys or its Enterprise 

associates committed acts of wire fraud with respect to those lawsuits.

18

 

As currently stated, the one predicate act of wire fraud identified – the initial discussion 

about and provision of the MNDA that was “false and misleading” – is insufficient to establish the 

requisite number of predicate acts or the pattern of racketeering activity. 

c. Proximate Cause

Another significant flaw with UNIL’s RICO claim is the lack of proximate cause between 

 

18 Synopsys questions whether, consistent with Rule 11, defendants will be able to allege fraud in 

connection with the other lawsuits, as publicly filed pleadings in those cases do not disclose the 

existence of MNDAs in those cases. Oppo. at 16 & n.6. 
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the fraud alleged and the harm suffered. Under RICO, there must be a “direct relation” between 

the injury asserted and the conduct alleged, and that link cannot be “too remote,” “purely 

contingent,” or “indirect.” Hemi Group, LLC v. City of New York, N.Y., 559 U.S. 1, 9 (2010) 

(internal quotations omitted). 

As pleaded, the fraudulent scheme hinges on the MNDA – signed by Ubiquiti but not 

UNIL – that allegedly gave Ubiquiti confidence that its confidential information would not be 

disclosed and that was allegedly violated when Synopsys included the anti-piracy tools in its 

software. Because UNIL did not sign the MNDA, because UNIL voluntarily downloaded 

Synopsys’s software, because UNIL then (allegedly) continued to use that software after the 

evaluation license period, and because the ITCA communications were sent to Ubiquiti (not 

UNIL), any harm to UNIL is too remote and indirect from the fraudulent conduct alleged. 

d. Injury to Business or Property/Domestic Injury 

In order to state a RICO claim, a plaintiff must “allege and prove a domestic injury to 

business or property” because RICO “does not allow recovery for foreign injuries.” RJR Nabisco, 

Inc. v. European Community, 136 S.Ct. 2090, 2111 (2016). UNIL’s RICO counterclaims fail for 

this independent reason; it fails to plead injury to its business or property in the United States, as 

opposed to a “foreign injury.” Mindful of UNIL’s repeated protestations in this case that it has no 

presence in California and did no business in California, facts supporting a domestic injury have

not been alleged.19

More generally, Synopsys argues that both defendants have failed to allege facts showing 

they were “injured” in their business or property by the alleged RICO conduct. Defendants 

counter that because the “extent” of the information secured by the anti-piracy tools in Synopsys’s

software is currently unknown, the extent of defendants’ injuries are unknown. UNIL 

Counterclaims ¶¶ 105-106. Defendants, however, are required to allege more than they were 

“damaged” by the RICO conduct. Facts must be alleged to show how and why those assertions 

 

19 UNIL’s only authority, Tatung Company, Ltd. v. Shu Tze Hsu, 217 F.Supp.3d 1138, 1155 (C.D. 

Cal. 2016), is not apposite on the facts here. There, while the plaintiff was a foreign corporation, 

it was doing business in the United States through a wholly owned corporation and maintained a 

“hub” in the United States.
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are plausible given the information currently available to defendants.

2. Noerr-Pennington

In addition to the pleading deficiencies identified above, Synopsys contends that UNIL’s 

current and Ubiquiti’s contemplated RICO counterclaims are barred as a matter of law because the 

alleged “target” of the claim is Synopsys’s Noerr-Pennington protected pre-litigation licensing 

and settlement negotiations. As noted above, Noerr-Pennington does not bar the CCDAFA 

claims. But the result is different for RICO, given the nature of RICO scheme as pleaded by 

defendants (a fraudulent scheme to extort license fees). See UNIL Counterclaim ¶ 14 (“the 

purpose of exploiting personal and proprietary information from Synopsys’s software users to 

generate revenue for Synopsys, SmartFlow, and ITCA based on the ‘recovery’ of Synopsys’s

license fees”); ¶ 95 (“the common purpose of implementing a compliance program for Synopsys 

to recover license fees and to convert suspected unlicensed users of Synopsys’ EDA software to 

licensed customers”); ¶ 104 (“exploited for the purpose of making exorbitant license fee demands 

to those users. In cases where Synopsys escalated to filing lawsuits against users who had their 

personally identifiable information or confidential information unlawfully obtained by the 

Enterprise, each case settled shortly thereafter.”).

In support of their allegations, defendants rely not only on the ITCA demand letter and 

Synopsys’s subsequent lawsuit based on defendants’ use of its software post the evaluation license 

period but also on other litigation Synopsys has filed seeking damages from unlicensed users. 

UNIL Counterclaims ¶¶ 19-25. What defendants have not done is claim that any of these license 

demands and the subsequent litigations were shams. Sosa v. DIRECTV, Inc., 437 F.3d 923, 934 

(9th Cir. 2006) (Noerr-Pennington protects litigation and related pre-litigation conduct, unless the 

contemplated or actual litigation was a sham, meaning it was “both objective[ly] baselessness and 

[based on] an improper motive”). 

Given how they have chosen to frame their RICO claims, the pre-petitioning and 

petitioning activities of Synopsys are at the heart of the fraudulent scheme alleged. As such, 

defendants must plead facts showing that the pre-suit license demands and subsequent litigations 

they rely on as evidence of the RICO Enterprise’s purpose were objectively baseless and based on 
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improper motives. All that has been alleged to date is that the Enterprise associates (Synopsys, 

SmartFlow, ITCA, Luijten, and Miracco) have sought to enforce Synopsys’s software rights, and 

that in some instances the information relied on by the Enterprise associates to enforce those rights 

might not have been “accurate.” UNIL Counterclaim ¶ 12. That is insufficient.

UNIL’s RICO claims are DISMISSED with leave to amend and Ubiquiti’s motion for 

leave to amend is DENIED. If defendants can allege facts to plausibly suggest that Synopsys’s

(and its Enterprise associates’) demand letters and litigation to “extort” license fees were 

objectively and subjectively baseless (and then if defendants can cure the additional pleading 

deficiencies identified above), then defendants may be able to clear the Noerr-Pennington hurdle 

and state a RICO claim. Separately, UNIL will also have to allege additional facts in support of 

proximate cause and domestic injury with respect to the harms caused to it by the RICO 

enterprise.

D. Trespass to Chattels

Under California law, trespass to chattels “lies where an intentional interference with the 

possession of personal property has proximately caused injury.” Intel Corp. v. Hamidi, 30 Cal. 4th 

1342, 1350–51 (2003). In cases of interference with possession of personal property not 

amounting to conversion, “the owner has a cause of action for trespass or case [sic], and may 

recover only the actual damages suffered by reason of the impairment of the property or the loss of 

its use.” Id. at 1351 (internal quotations and citations omitted). Further, “while a harmless use or 

touching of personal property may be a technical trespass (see Rest.2d Torts, § 217), an 

interference (not amounting to dispossession) is not actionable, under modern California and 

broader American law, without a showing of harm.” Id.; see also In re iPhone Application 

Litigation, 844 F.Supp.2d 1040, 1069 (N.D. Cal. 2012) (dismissing allegations of harm that “do 

not plausibly establish a significant reduction in service constituting an interference with the 

intended functioning of the system, which is necessary to establish a cause of action for 

trespass.”).

To the extent defendants base their trespass claims on the accessing of their systems by the 

anti-piracy software, they must but have not alleged facts showing that access impaired the 
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intended functioning of defendants’ systems. And to the extent that defendants base their trespass 

claim on the anti-piracy software’s securing of and use of defendants’ data, that common law 

claim would be preempted by CUTSA. See, e.g., Heller v. Cepia, L.L.C., 2012 WL 13572, at *7 

(N.D. Cal., Jan. 4, 2012) (common law claims, including trespass, “premised on the wrongful 

taking and use of confidential business and proprietary information, regardless of whether such 

information constitutes trade secrets, are superseded by the CUTSA”).

Therefore, UNIL’s trespass counterclaim is dismissed with leave to state facts showing the 

trespass caused some harm to its computer systems. Ubiquiti’s motion to amend is denied without 

prejudice. 

E. Conversion

As to conversion, “if the only property identified in the complaint is confidential or 

proprietary information, and the only basis for any property right is trade secrets law, then a 

conversion claim predicated on the theft of that property is preempted” by CUTSA. Avago 

Technologies U.S. Inc. v. Nanoprecision Products, Inc., 2017 WL 412524, at *7 (N.D. Cal. Jan. 

31, 2017). Defendants’ claim is preempted and DISMISSED as to UNIL; leave to amend 

DENIED as to Ubiquiti. 

F. Fraud

Synopsys makes a number of well-taken attacks on UNIL’s fraud claims, primarily that 

UNIL was not a party to the MNDA and has not identified any fraudulent misstatements directed 

to it, as opposed to Ubiquiti. Those omissions are significant in the context of this case, where 

UNIL has repeatedly emphasized that it is a separate legal entity from Ubiquiti and that Tsai (the 

primary negotiator with Synopsys) did not work for UNIL. Given that context, it is questionable 

whether UNIL could plead reliance on the MNDA or on representations made by Synopsys, or 

damages suffered from a breach of the MNDA.20 

As to both defendants, Synopsys relies on the actual text of the MNDA – which is 

 

20 While UNIL argues in its opposition that it was an expected third-party-beneficiary of the 

MDNA in light of actions taken by Ubiquiti and Synopsys, those allegations are not currently 

included in UNIL’s Counterclaims.
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incorporated by reference given the repeated reference to it in UNIL’s existing and Ubiquiti’s 

proposed counterclaims. Synopsys argues that the information allegedly fraudulently procured 

from defendants – IP addresses, MAC addresses, user names, host names, user accounts, email

addresses, workstation information, system administrators, IT system logs – is not included within

the MNDA’s definition of “confidential information” nor covered by the “purpose” of the MNDA. 

MTD 23-24; Oppo. at 13-15. 

However, I need not analyze the language of the MNDA. The fatal problem with 

defendants’ theory of fraud has been identified above; the current allegations are implausible 

because they rely on too many intervening steps that were beyond the control of Synopsys. 

Synopsys did not force either defendant to use its software beyond the period of the evaluation 

licenses. But that conduct – defendants voluntary use of Synopsys’s software that defendants do 

not deny – lies at the heart of the fraudulent scheme alleged. As to plausibility, defendants offer 

no real response. At most they argue that because Synopsys let defendants impermissibly use its 

software for two years after the expiration of the evaluation licenses before it decided to have 

ITCA go after defendants, their theory is somehow plausible. MTD at 25. It is not.

UNIL’s fraud claim is DISMISSED with leave to amend. Ubiquiti’s motion for leave to 

include a fraud counterclaim is DENIED without prejudice.

For the foregoing reasons, Synopsys’s motion to dismiss UNIL’s counterclaims is 

GRANTED. UNIL’s second through eighth counterclaims are DISMISSED with leave to amend. 

Ubiquiti’s motion for leave to amend its existing counterclaims to assert ones consistent with 

UNIL’s is DENIED without prejudice due to futility. 

III. SPECIAL MOTION TO STRIKE

Synopsys also moves to strike UNIL’s state law counterclaims. It argues that it satisfies 

the first prong of the anti-SLAPP statute because the elements of UNIL’s state law counterclaims 

demonstrate that those claims are aimed at chilling Synopsys’s right to enforce its copyrights 

through pre-litigation demand letters and litigation. On the second prong, Synopsys argues that 

UNIL’s state law claims are barred by the litigation privilege and that UNIL cannot otherwise

prevail on those claims because Synopsys’s terms of use in place during the relevant timeframe 
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disclosed that Synopsys’s software would communicate with Synopsys’ servers to detect software 

piracy and verify only licensed use of its software. See Declaration Norman F. Kelly [Dkt. No. 

801-1] ¶¶ 3, 5 & Exs 1&2.

However, as noted above, because all of the challenged state law counterclaims have been 

dismissed (albeit, with leave to amend), I need not reach the separate anti-SLAPP motion to strike. 

Synopsys’s motion to strike is DENIED without prejudice. If UNIL amends, its amendments 

must clarify whether any of the counterclaims are based on the use of the data by Synopsys and 

ITCA (e.g., implicating Synopsys’s protected pre-litigation activities) or are based on conduct that 

pre-dates any use of the data.

CONCLUSION

Synopsys’s motion to dismiss UNIL’s counterclaims is GRANTED with leave to amend. 

Ubiquiti’s motion for leave to amend its counterclaims is DENIED for futility without prejudice. 

Synopsys’s motion to strike is DENIED without prejudice. Defendants’ further motions to amend, 

if any should be filed within twenty days of the date below.

IT IS SO ORDERED.

Dated: March 13, 2018

William H. Orrick

United States District Judge