Citation Codes Equivalent Citations citation codes Docket Number Civil Action No. 05-12615-JLT. Attorney(S) Christopher Centurelli, Daniel E. Rosenfeld, David A. Simons, Jeffrey L. Snow, Phi Lan M. Tinsley, Sarah C. Kellogg, Kirkpatrick Lockhart Nicholson Graham LLP, Boston, MA, for Plaintiff. Chad R. Berkowitz, Paul W. Garrity, Robert S. Friedman, Kelley Drye Warren LLP, New York, NY, Stephen C. Reilly, Sally Fitch LLP, Boston, MA, for Defendant. Judges Joseph Louis Tauro See more information ... Smart Summary Please sign up to generate summary. PORTFOLIOSCOPE, INC., Plaintiff, v. I-FLEX SOLUTIONS LIMITED, Defendant. MEMORANDUM AND ORDER TAURO, District Judge. After considering the Parties' submissions and the Second Amended Complaint wherein Plaintiff advances eight counts complaining that in 1998, Defendant's predecessor ("CITIL") wrongfully stole and incorporated Plaintiff's predecessor's ("CAD's") software ("GPVS") into its own product ("FLEXCUBE"), this court hereby orders that: 1. Defendant's Motion to Dismiss First Amended Complaint [#9] is DENIED AS MOOT. 2. Plaintiff's Motion to Amend First Amended Complaint [#14] is ALLOWED. 3. Defendant's Motion to Dismiss Second Amended Complaint [#16] is ALLOWED IN PART AND DENIED IN PART as follows: A. Plaintiff's claims for copyright infringement are barred only for events falling outside the three-year limitations period. Because Count VIII of the Second Amended Complaint alleges continuing infringement, this count stands. B. As to the question of the statute of limitations defense to its other counts, Plaintiff seeks the protection of the "Discovery Rule" and alleges that it was not able to discover Defendant's alleged misappropriation until April 2003. The limitations defense therefore depends on the reasonableness of Plaintiff's efforts at discovering the alleged injury. Taking Plaintiff's allegations as true, its claims cannot be dismissed on this ground. Nonetheless, in the Joint Statement filed before the Rule 16(b) Scheduling Conference, parties shall explore the efficiency and advisability of conducting phased discovery on this issue. C. Massachusetts law establishes that a trade secret must be in continuous use. Although Plaintiff has adequately identified that the GPVS is a trade secret, it does not allege that this trade secret is in continuous use. Despite Plaintiff's willingness to adduce new facts in its Opposition, it noticeably fails to argue that the relevant trade secrets are still in use. Instead, Plaintiff argues that such a requirement should not apply. In light of this failure in the pleadings, and because Plaintiff has already had three opportunities to plead its claims, Count I is dismissed with prejudice. D. By alleging that Defendant profits from publicly selling its FLEXCUBE product which is unlawfully derived from Plaintiff's GPVS product, Plaintiff indirectly states a claim that Defendant is "passing off" Plaintiff's work as its own. Because "passing off" is an extra element not required in a claim for copyright infringement, Plaintiff's claims for violations of Chapter 93A and unjust enrichment are not preempted at this time. As a result, Counts II and IV stand. E. The Plaintiff's allegations support an inference that third party CrossMar and CITIL entered into a non-disclosure agreement which was intended to benefit CAD. That Plaintiff has not yet discovered the actual contract does not preclude Plaintiff from proceeding on such a theory at this stage. Count III stands. F. Plaintiff complains of conversion and replevin with respect to the "FLEXCUBE software product." Likely recognizing that these claims require an allegation of wrongful possession of tangible property, Plaintiff states in its Opposition memorandum that Defendant "was in wrongful possession of tangible copies of software and code through its possession of disks, tapes, and drives." Although it is axiomatic that a Plaintiff may not amend its pleadings in the opposition memorandum, the Complaint itself does give notice of this claim by alleging that Defendant was in wrongful possession of Plaintiff's property. Because Plaintiff could prove facts at trial which would establish that Defendant stole Plaintiff's physical property, Counts VI and VII stand. G. Fed.R.Civ.P. R. 9(b) requires Plaintiff to plead its fraud charge by particularly identifying "the who, what, where, and when of the allegedly false or fraudulent representation." Though Plaintiff's Complaint is somewhat bare, it does specifically define a claim that Ashit Shah and Sajal Mukherjee knowingly misrepresented their plans to use confidential information when dealing with CAD. This misrepresentation allegedly occurred at the specific point where Shah and Mukherjee, on behalf of CITIL, agreed to become a Third Party Vendor with CrossMar. Count V stands. IT IS SO ORDERED.