Neodron LTD v. Hewlett Packard Enterprise Company

Western District of Texas, txwd-6:2019-cv-00319

Unopposed MOTION to Stay Case Pending ITC Determination (by HP Inc.) by Hewlett Packard Enterprise Company.

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IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION NEODRON LTD., CIVIL ACTION NO. 6:19-cv-00319-ADA Plaintiff, v. HP INC., Defendant. UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION Defendant HP Inc. ("HPI") respectfully moves this Court pursuant to 28 U.S.C. § 1659 and its inherent powers to control its docket 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. On May 21, 2019, Neodron Ltd. ("Neodron") filed a complaint against Hewlett Packard Enterprise Company ("HPE") in this action ("the Texas action"), alleging infringement of United States Patent Nos. 8,432,173 ("the '173 patent"); 8,791,910 ("the '910 patent"); 9,024,790 ("the '790 patent"); and 9,372,580 ("the '580 patent") (collectively, "the patents-in-suit"). The next day, on May 22, 2019, Neodron filed a complaint against HPE and other proposed Respondents, with the ITC ("the ITC action") asserting the same patents-in-suit. On May 23, 2019, Neodron amended its ITC complaint to name HPI in place of HPE. On June 14, 2019, Neodron amended its complaint in this Court to name HPI in place of HPE (Dkt. No. 11). The ITC instituted an investigation on June 19, 2019, as Investigation No. 337-TA-1162. UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 1 WEST\287002013.2 Pursuant to 28 U.S.C. § 1659, district court patent 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 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). Here, because the same patents asserted in this action are also asserted against HPI in the ITC action, and because the parties and the accused products are also the same, a stay of this case is mandatory upon timely request by HPI. The mandatory stay of Section 1659 applies where a request is made: (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. As such, HPI's request is timely under § 1659(a) because this request is being made within 30 days of the publication in the Federal Register, the ITC's Notice of Institution of Investigation, which names HPI as a respondent in the ITC action. See 84 Fed. Reg. 121 (June 24, 2019). For the foregoing reasons, HPI respectfully requests that the Court enter the attached proposed order and stay all proceedings in the Texas action until the determination of the ITC UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 2 WEST\287002013.2 action becomes final, including any appeals and until the Commission proceedings are no longer subject to judicial review. Respectfully submitted, Dated: July 12, 2019 By: /s/ John M. Guaragna John M. Guaragna DLA PIPER LLP (US) 401 Congress Avenue, Suite 2500 Austin, TX 78701-3799 john.guaragna@dlapiper.com Telephone: (512) 457-7000 Facsimile: (512) 457-7001 Attorneys for Defendant HP Inc. CERTIFICATE OF CONFERENCE Pursuant to Local Rule CV-7-1(i), the undersigned hereby certifies that on July 12, 2019 he conferred by email with counsel for Plaintiff, Mr. Kent Shum, who stated that Plaintiff is unopposed to the relief requested herein. /s/ John M. Guaragna John M. Guaragna CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on all counsel of record via the Court's ECF system. /s/ John M. Guaragna John M. Guaragna UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 3 WEST\287002013.2