United States District Court, D. Delaware
ADVANCED MICRO DEVICES, INC., and ATI TECHNOLOGIES ULC, Plaintiffs,
MEDIATEK INC., and MEDIATEK USA INC., Defendants.
F. CONNOLLY UNITED STATES DISTRICT JUDGE.
January 10, 2019, Plaintiffs Advanced Micro Devices, Inc. and
ATI Technologies ULC (collectively, "AMD") filed
this lawsuit accusing Defendants MediaTek Inc. and MediaTek
USA Inc. ("MediaTek") of infringing two patents:
United States Patent Numbers 7, 633, 506 (the "#506
patent") and 7, 796, 133 (the "#133 patent").
AMD and MediaTek were also parties to Investigation No.
337-TA-1044, instituted by the International Trade Commission
(the "Commission") on March 22, 2017 under section
337 of the Tariff Act of 1930, codified at 19 U.S.C. §
1337. See D.I. 11-1 at 1-2. On August 22, 2018, the
Commission issued a notice in which it announced that the
investigation "is terminated" and that the
Commission had "determined to affirm" an
Administrative Law Judge's final Initial Determination
that MediaTek infringes the #506 patent and does not infringe
the #133 patent. See Id. at 1, 3. MediaTek appealed
to the Federal Circuit the Commission's determination
that MediaTek infringes the #506 patent. That appeal is
pending. Before me now is MediaTek's motion filed on
February 8, 2019 to stay this case "until the final
resolution" of Investigation No. 337-TA-1044. D.I. 7 at
argues that a stay of AMD's claims relating to the #506
patent is mandated by 28 U.S.C. § 1659, and that
"[g]iven the substantial overlap" between the two
patents I should exercise my discretion to stay as well the
claims relating to the #133 patent. D.I. 8 at 1-2. It argues
in the alternative that if I determine that § 1659 does
not mandate a stay, I should exercise my discretion
incidental to the power inherent in every court to stay the
case. D.I. 8 at 5 n.4; D.I. 12 at 5-6.
language of § 1659 negates AMD's argument that a
stay is mandated in this case. Section 1659(a) provides in
relevant part that
[i]n 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
28 U.S.C. § 1659(a). Thus, by the statute's express
terms, a stay is not mandated unless the parties are
currently parties to a proceeding pending before the
Commission. The statute requires the district court to grant
a stay only "at the request of a party to the civil
action that is also a respondent in the proceeding
before the Commission" and only if the parties
"are also parties to a proceeding before the
Commission." Id. (emphasis added).
only "proceeding" that takes place before the ITC
under section 337 is an investigation. See 19 U.S.C.
§ 1337(b) and (c) (authorizing ITC to initiate
"investigation" of alleged violations of section
337 and using the terms "investigation" and
"proceeding" interchangeably). The ITC terminated
Investigation No. 337-TA-1044 on August 22, 2018-five months
before MediaTek filed its motion to stay this case. Thus,
there was no pending Commission proceeding when MediaTek
filed its motion for a stay and, therefore, the plain
language of § 1659 does not mandate a stay of this
action. See United States v. Ron Pair Enters., Inc.,
489 U.S. 235, 241 (1989) ("The task of resolving the
dispute over the meaning of [a statute] begins where all such
inquiries must begin: with the language of the statute
itself. In this case it is also where the inquiry should end,
for where, as here, the statute's language is plain, the
sole function of the courts is to enforce it according to its
terms." (internal quotation marks and citations
remains the question of whether I should exercise my
discretion to grant Mediatek's stay request. "[T]he
power to stay proceedings is incidental to the power inherent
in every court to control the disposition of the cases on its
docket with economy of time and effort for itself, for
counsel, and for litigants." Landis v. N. Am.
Co., 299 U.S. 238, 254 (1936). The factors courts
typically consider in deciding whether to exercise this
discretionary power are: (i) whether a stay will simplify the
issues in question and trial of the case; (ii) whether
discovery is complete and a trial date has been set; and
(iii) whether a stay would unduly prejudice or present a
clear tactical disadvantage to the non-moving party.
See, e.g., St. Clair Intellectual Prop.
Consultants, Inc. v. Sony Corp., 2003 WL 25283239, at *1
(D. Del. Jan. 30, 2003).
stay will likely simplify the issues in question and trial of
the case. The Commission's proceeding and determination
addressed both of the patents asserted in this case and some
of the same products accused of infringement. The patents
share common inventors and claim terms and have overlapping
figures and written descriptions. The Federal Circuit will
likely issue within the next few months a ruling that
addresses directly issues concerning the #506 patent and
perhaps indirectly issues that concern the #133 patent. AMD
agrees that "the same discovery in this case will be
applicable to both AMD's counts of infringement for the
'506 and' 133 Patents." D.I. 11 at 12. AMD also
agrees that its "claims relating to the '506 and
'133 Patents implicate the same witnesses, accused
products, third-party technology, and evidence."
Id. (quoting D.I. 8 at 7). Further, AMD does not
dispute that staying this action in its entirety pending
final resolution of the Commission's determination would
enable the Court, the parties, and third parties who provide
the graphics processing technology central to AMD's
infringement claims to avoid the burdens of duplicative
litigation. Thus, a stay would promote judicial economy and
minimize burdening third parties.
second factor courts typically consider also favors a stay.
Discovery has not begun, a trial date has not been set, and
there is no scheduling order in place.
a stay would not cause AMD undue prejudice. AMD contends that
a stay would prejudice it in two ways. It argues first that a
stay "would be inequitable" because MediaTek filed
its own infringement action against AMD after filing its
motion to stay in this action. See D.I. 11 at 15.
But Mediatek's lawsuit involves different patents and
different accused products and neither party has argued that
it would be unduly prejudiced by having to litigate two cases
at once. MediaTek's filing of a separate lawsuit accusing
AMD of infringing MediaTek's patents is thus not relevant
to the undue prejudice inquiry.
also argues that, based on the average time the Federal
Circuit takes to adjudicate appeals, a stay will prejudice
AMD by delaying the case "for at least a
year." D.I. 11 at 15 (emphasis in original). It
does not, however, explain how a delay of a year (or any
time) would cause it to suffer any irreparable harm, and thus
fails to demonstrate that it would be unduly prejudiced by a
stay. See VirtualAgility Inc. v. Salesforce.com,
Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) ("Of
course, whether the patentee will be unduly
prejudiced by a stay ... like the irreparable harm-type
inquiry, focuses on the patentee's need for an
expeditious resolution of its claim. A stay will not diminish
the monetary damages to which [the patentee] will be entitled
if it succeeds in its infringement suit-it only delays
realization of those damages and delays any potential
injunctive remedy." (emphasis in original)). Moreover,
its argument that a delay in this action will cause it
prejudice is undermined by the fact that AMD did not file
this lawsuit until two years after it filed its complaint
that led the Commission to initiate Investigation No.
for the reasons set forth above, IT IS HEREBY
ORDERED this 29th day of August, 2019 that
"[MediaTek's] Motion to Stay Pending Final
Resolution of Related ITC Proceedings"
(D.I. 7) is GRANTED and
that this action is STAYED until the United
States International Trade Commission's Determination ...