Neodron LTD v. Microsoft Corporation

Western District of Texas, txwd-6:2019-cv-00321

Unopposed MOTION to Stay Case Pending ITC Determination by Microsoft Corporation.

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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-00321-ADA Plaintiff, v. MICROSOFT CORPORATION, Defendant. UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION Defendant Microsoft Corporation ("Microsoft") 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 its complaint against Microsoft in this action ("the Texas action"), alleging infringement of United States Patent Nos. 8,432,173 ("'173 patent"); 8,791,910 ("'910 patent"); 9,024,790 ("'790 patent"); and 9,372,580 ("'580 patent") (collectively, "the patents-in-suit"). The next day, Neodron filed a complaint against Microsoft, and other proposed Respondents, with the ITC ("the ITC action") asserting the patents-in-suit. 1 The ITC instituted the investigation on June 19, 2019, as Investigation No. 337-TA-1162. 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: 1 Neodron amended its ITC complaint on May 23, 2019 to purportedly correct the name of a different proposed respondent. UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 1 (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 Microsoft 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 Microsoft. 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, Microsoft's request is timely under § 1659(a) because this request is being made within 30 days of the publication in the Federal Register, ITC's Notice of Institution of Investigation, which names Microsoft as a respondent in the ITC action. 84 Fed. Reg. 29545 (June 24, 2019). For the foregoing reasons, Microsoft respectfully requests that the Court enter the attached proposed order and stay all proceedings in the Texas action until the determination of the ITC action becomes final, including any appeals and until the Commission proceedings are no longer subject to judicial review. UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 2 Respectfully submitted, Dated: June 25, 2019 By: /s/ Barry K. Shelton Barry K. Shelton Texas State Bar No. 24055029 SHELTON COBURN LLP 311 RR 620, Suite 205 Austin, TX 78734-4775 bshelton@sheltoncoburn.com (512) 263-2165 (Telephone) (512) 263-2166 (Facsimile) ATTORNEYS FOR DEFENDANT MICROSOFT CORPORATION CERTIFICATE OF CONFERENCE Pursuant to Local Rule CV-7-1(i), the undersigned hereby certifies that on June 25, 2019 he conferred by email with counsel for Plaintiff, Mr. Paul Kroeger, who stated that Plaintiff is unopposed to the relief requested herein. /s/ Barry K. Shelton Barry K. Shelton 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/ Barry K. Shelton Barry K. Shelton UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION 3