Richtek Technology Corporation et al v. uPI Semiconductor Corporation et al

Filing 391

ORDER MAINTAINING STAY. Signed by Judge Alsup on October 9, 2014. (whalc1, COURT STAFF) (Filed on 10/9/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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RICHTEK TECHNOLOGY CORPORATION,

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For the Northern District of California

United States District Court

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No. C 09-05659 WHA

Plaintiff,
v.
uPI SEMICONDUCTOR CORPORATION,
POWERCHIP TECHNOLOGY CORP.,
MAXCHIP ELECTRONICS CORP., SILICON
XTAL CORPORATION, AMANDA DAI, and
JACKY LEE,

ORDER MAINTAINING STAY

Defendants.
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For the reasons stated herein, this order MAINTAINS THE CURRENT STAY.
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This action was commenced in December 2009. Shortly thereafter, it was reassigned to

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the undersigned judge and the parties stipulated to stay the action until the ITC’s determination

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in Certain DC-DC Controllers and Products Containing the Same, Inv. No. 337-TA-698,

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became final (Dkt. No. 22). The ITC’s investigation concerned the same three patents, same

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category of accused products, and some of the same defendants. Stipulated consent orders were

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entered and the investigation was terminated in September 2010. An unopposed motion to lift

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the stay was granted (Dkt. No. 89). A schedule was set, several voluminous motions to dismiss

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were ruled on, and some jurisdictional discovery was taken (Dkt. Nos. 109, 212, 235, 236, 241).

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The action was eventually reduced to claims of patent and copyright infringement against four
corporate defendants and two individuals.

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In February 2011, this action was stayed pending reexaminations of the asserted patents

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before the PTO, save and except for a limited jurisdictional issue which was then resolved (Dkt.

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Nos. 267, 320, 334).

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While the stay was in effect, in August 2011, the ITC instituted an enforcement

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proceeding regarding the consent orders previously entered. In essence, defendant uPI

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Semiconductor Corporation allegedly violated the consent order. The relevant accused products

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fell into two categories: (1) “formerly accused products” from the prior ITC investigation and

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(2) “post-consent order products” allegedly developed and produced after entry of the consent

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order. By January 2013, the reexaminations had concluded. Plaintiff Richtek Semiconductor
Corporation represented that the third asserted patent herein would be withdrawn from this

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For the Northern District of California

United States District Court

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action (Dkt. No. 338).

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The stay, however, was maintained “until the determination of the Commission in ITC
Investigation No. 337-TA-698 becomes final” (Dkt. No. 373).
In September 2014, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded

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the ITC’s decision. UPI Semiconductor Corp. v. International Trade Commission, No.

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2013-1157, 2014 WL 4746408, at *10 (Fed. Cir. Sept. 25, 2014). In pertinent part, they stated:

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On the record provided, substantial evidence does not support the
Commission’s conclusion that uPI’s post-Consent Order products
were independently developed. The determination that uPI did not
violate the Consent Order with respect to post-Consent Order
products is reversed. We remand for further proceedings with
respect to violation of the Consent Order.

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The parties then filed a status report. Plaintiff argued that the “stay should be lifted as soon as
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the Federal Circuit issues its mandate” because all that remains in the ITC investigation is “the
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remedy for sales of Post-Consent Order products.” Defendants argued that the current stay
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should remain in place until the ITC’s rulings are no longer subject to appellate review and
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during the pendency of the remand to the ITC.
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Section 1659 of Title 28 of the United States Code states in pertinent part that “the
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district court shall stay, until the determination of the Commission becomes final, proceedings in
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the civil action with respect to any claim that involves the same issues involved in the
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proceeding before the Commission,” if the request is timely made. Section 1659 “requires that
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the stay of district court proceedings continue until the Commission proceedings are no longer

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subject to judicial review.” In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).

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At this point, the Federal Circuit has not issued a mandate and the ITC’s rulings remain

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subject to judicial review via a petition for rehearing or a writ of certiorari. Accordingly, this

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order MAINTAINS THE STAY. The parties shall file a joint status report by the earlier of:

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(1) FIVE CALENDAR DAYS after the Commission proceedings are no longer subject to judicial

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review; or (2) FEBRUARY 3, 2015 AT NOON.

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IT IS SO ORDERED.

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For the Northern District of California

United States District Court

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Dated: October 9, 2014.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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