Neodron LTD v. Amazon.Com, Inc.

Western District of Texas, txwd-6:2019-cv-00317

Unopposed MOTION to Stay Case DEFENDANT AMAZON by Amazon.com, Inc.

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UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION NEODRON LTD., Case No. 6:19-cv-00317 Plaintiff, DEFENDANT AMAZON.COM, INC.'S v. UNOPPOSED MOTION TO STAY PENDING ITC DETERMINATION AMAZON.COM, INC., Defendant. DEFENDANT AMAZON.COM, INC.'S UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION Defendant Amazon.com, Inc. ("Amazon") moves this Court pursuant to 28 U.S.C. § 1659 for a stay of all proceedings in the above-captioned case until the determination of the United States International Trade Commission ("ITC") in a parallel proceeding becomes final. Plaintiff Neodron, Ltd. ("Neodron" or "Plaintiff") does not oppose this motion. On May 21, 2019, Neodron filed the complaint in this action ("the District Court action") against Amazon alleging infringement of U.S. Patent Nos. 8,432,173 ("'173 patent") and 9,372,580 (the "'580 patent"). (Dkt. No. 1.) On May 22, 2019, Neodron filed an ITC complaint against Amazon. Neodron's ITC complaint alleges that Amazon infringes the same '173 and '580 patents. On May 23, 2019, Neodron filed an amended complaint with the ITC in which it modified the name of one respondent, but did not modify any of the allegations as to Amazon. On June 19, 2019, Neodron's requested ITC investigation was instituted as Investigation No. 337-TA-1162. Pursuant to 28 U.S.C. § 1659, district court claims that involve the same issues as a parallel ITC proceeding are subject to a mandatory stay. Specifically, 28 U.S.C. § 1659(a) provides: (a) Stay. In a civil action involving parties that are also parties to a proceeding before the United States International Trade Commission under section 337 of the Tariff Act of 1930, at the request of a party to the civil MOTION TO STAY ACTION PENDING ITC DETERMINATION 1 CASE NO. 6:19-cv-00317-ADA action that is also a respondent in the proceeding before the Commission, the district court shall stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that involves the same issues involved in the proceeding before the Commission, but only if such request is made within – (1) 30 days after the party is named as a respondent in the proceeding before the Commission, or (2) 30 days after the district court action is filed, whichever is later. 28 U.S.C. § 1659(a). A stay issued under this statute remains in effect during any appeals and "until the Commission proceedings are no longer subject to judicial review." In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007). The claims asserted in this action involve the same issues as the claims in the ITC action, and the parties and products at issue are also the same. This motion is timely because this request is being made within 30 days of the publication in the Federal Register of the ITC's Notice of Institution of Investigation, which names Amazon as a respondent in the ITC action. 84 Fed. Reg. 29545 (June 24, 2019). A stay is, therefore, mandatory under §1659(a). For the foregoing reasons, Amazon respectfully request that the Court enter the attached proposed order staying all proceedings in this action until the determination of the 337-TA-1162 Investigation becomes final, including any appeals and until the Commission proceedings are no longer subject to judicial review. Dated: June 25, 2019 Respectfully submitted, /s/ Stefani E. Shanberg Stefani E. Shanberg Texas State Bar No. 24009955 MORRISON & FOERSTER LLP 425 Market Street San Francisco, CA 94105 Tel: (415) 268-7000 sshanberg@mofo.com Attorneys for Defendant AMAZON.COM, INC. MOTION TO STAY ACTION PENDING ITC DETERMINATION 2 CASE NO. 6:19-cv-00317-ADA CERTIFICATE OF CONFERENCE I hereby certify that, pursuant to Local Court Rule CV-7(i), I contacted counsel for Plaintiff Neodron, Ltd. concerning the relief sought in this motion on June 23, 2019. On June 25, 2019, counsel for Plaintiff Neodron, Ltd. informed me that it does not oppose this motion. Dated: June 25, 2019 By: /s/ Stefani E. Shanberg Stefani E. Shanberg CERTIFICATE OF CONFERENCE CASE NO. 6:19-CV-00317-ADA CERTIFICATE OF SERVICE I hereby certify that on this day I caused the foregoing to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to all CM/ECF registered participants. Dated: June 25, 2019 By: /s/ Stefani E. Shanberg Stefani E. Shanberg CERTIFICATE OF CONFERENCE CASE NO. 6:19-CV-00317-ADA UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION NEODRON LTD., Case No. 6:19-cv-00317 Plaintiff, v. AMAZON.COM, INC., Defendant. [PROPOSED] ORDER GRANTING DEFENDANT AMAZON.COM, INC.'S UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION The Court having, considered the Defendant Amazon.com, Inc.'s Unopposed Motion To Stay Action Pending ITC Determination: IT IS HEREBY ORDERED that Defendant's Motion to Stay Action Pending ITC Determination is GRANTED. IT IS FURTHER ORDERED that this action is STAYED pending further order of the Court. IT IS FURTHER ORDERED that Plaintiffs may move the Court to lift the stay upon the change in the proceedings before the U.S. International Trade Commission. Dated: _______________, 2019 ________________________________________ THE HONORABLE ALAN D. ALBRIGHT UNITED STATES DISTRICT COURT JUDGE [PROPOSED] ORDER GRANTING MOTION TO STAY ACTION PENDING ITC DETERMINATION CASE NO. 6:19-CV-00317-ADA