Neodron LTD v. Lenovo Group LTD, and Lenovo (United States) Inc.

Western District of Texas, txwd-6:2019-cv-00320

Unopposed MOTION to Stay Case Pending Outcome of U.S. International Trade Commission Investigation by Lenovo (United States) Inc.

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IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION) C.A. No.: 6:19-cv-320 Neodron Ltd,)) Plaintiff,) DEMAND FOR JURY TRIAL) v.)) Lenovo Group Ltd. and) Lenovo (United States) Inc.,)) Defendants.))) DEFENDANT'S UNOPPOSED MOTION TO STAY CASE PENDING OUTCOME OF U.S. INTERNATIONAL TRADE COMMISSION INVESTIGATION Defendant Lenovo (United States) Inc. 1 ("Lenovo"), respectfully moves to stay the above-captioned litigation pending resolution of a U.S. International Trade Commission ("ITC") investigation on the same issues between the parties. Pursuant to 28 U.S.C. § 1659, a stay of a civil action before this court is mandatory upon the request of a defendant who is also a respondent in a parallel ITC proceeding when both proceedings involve the same issues. That is the case here. Plaintiff Neodron Ltd. has indicated it does not oppose the motion for stay. STATEMENT OF FACTS On May 21, 2019, Plaintiff Neodron Ltd. ("Neodron") filed the underlying suit in the United States District Court for the Western District of Texas. Neodron's complaint alleged infringement by Lenovo of U.S. Patent Nos. 8,432,173 ("the '173 Patent"); 8,791,910 ("the 1 Lenovo Group Ltd. has not been served in this action and has, therefore, not entered an appearance. Nonetheless, for purposes of this motion Lenovo Group Ltd. joins in the request for a stay under 28 U.S.C. § 1659, without waiving any of its rights regarding proper service, venue, and/or jurisdiction. '910 Patent"); 9,024,790 ("the '790 Patent"); and 9,372,580 ("the '580 Patent") (collectively "the Asserted Patents"). On May 22, 2019, one day after the filing of this action, Neodron filed a parallel complaint with the ITC. On May 23, Neodron filed an amended complaint with the ITC, "In the matter of Certain Touch-Controlled Mobile Devices, Computers, and Components Thereof," which names as respondents several entities, including Lenovo, and alleges infringement of the Asserted Patents. On June 24, 2019, the ITC instituted Investigation No. 337-TA-1162 based on Neodron's complaint. ARGUMENT Federal law provides that when a common issue exists between an ITC proceeding and a district court action, any claims involving that issue must be stayed. 28 U.S.C. § 1659(a). In the context of a previously-existing district court action, the party involved in that action has 30 days from being named as a respondent in an ITC proceeding to request a stay: (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 issue 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) (emphasis added). This statutory provision "requires that the stay of district court proceedings continue until the Commission proceedings are no longer subject to judicial review." In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007). Congress enacted Section 1659(a) to prevent a respondent from being forced to defend "infringement proceedings. . . brought against imported goods in two forums at the same time." H.R. Rep. No. 103-826(I), at 141 (1994), reprinted in 1994 U.S.C.C.A.N. 3773, 3913. Accordingly, the statute does not limit the stay to claims identical to those pending before the ITC. Instead, it provides for stays "with respect to any claim that involves the same issues as those pending before the Commission." H.R. Rep. 103-826(I), at 141; see also Princo, 478 F.3d at 1355–56 (noting that "[t]he purpose of § 1659 is to prevent separate proceedings on the same issues occurring at the same time" and that "[t]he statute is not limited to a stay of any district court determination of issues pending before the Commission; it extends to any district court 'proceedings' on a 'claim' involving issues pending before the Commission."). The same issues include "questions of patent validity, infringement, and any defenses that might be raised in both proceedings." H.R. Rep. 103-826(I), at 141. In this case, because all of these conditions are met, a mandatory stay of the above-captioned action should be granted. The ITC investigation involves the same parties, patents, and issues at issue in this case, as required by Section 1659. Further, the ITC investigation was instituted on June 24, 2019, and this motion has been filed within 30 days thereof; therefore, the motion is timely. Accordingly, pursuant to 28 U.S.C. § 1659(a), Lenovo is entitled to a mandatory stay of this civil proceeding. See In re Princo Corp., 478 F.3d 1345, 1353–54 (Fed. Cir. 2007). In requesting this stay pursuant to 28 U.S.C. § 1659(a), Lenovo expressly reserves any and all of their objections, defenses, and counterclaims, including, but not limited to, any defenses based on lack of jurisdiction and improper venue. CONCLUSION For the foregoing reasons, Lenovo respectfully requests that this Court enter an Order staying the above-captioned action pending the resolution of the proceedings in the corresponding ITC Investigation No 1162. Dated: June 25, 2019 Respectfully submitted, /Lionel M. Lavenue/ Lionel M. Lavenue (VA SBN 49,005) lionel.lavenue@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: (571) 203-2700 Facsimile: (202) 408-4400 Attorney for Defendant Lenovo (United States) Inc. CERTIFICATE OF SERVICE I, Lionel M. Lavenue hereby certify that on June 25, 2019 the foregoing document was served on counsel of record via the Court's ECF system. Reza Mirzaie (rmirzaie@raklaw.com) Paul A. Kroeger (pkroeger@raklaw.com) Philip X. Wang (pwang@raklaw.com) /Lionel M. Lavenue/____ Lionel M. Lavenue (VA SBN 49,005) lionel.lavenue@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: (571) 203-2700 Facsimile: (202) 408-4400 Attorney for Defendant Lenovo (United States) Inc.