Lotes Co, LTD v. Hon Hai Precision Industry Co, Ltd et al

Filing 333

STAY OF CLAIMS ARISING OUT OF THE PATENT LICENSE AGREEMENT [re 329 Opposition/Response to Motion filed by Lotes Co, LTD, 330 Supplemental Brief, filed by Foxconn Electronics, Inc., Hon Hai Precision Industry Co, Ltd.]. Signed by Judge William Alsup on 8/15/2017. (whasec, COURT STAFF) (Filed on 8/15/2017)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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LOTES CO., LTD.,

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For the Northern District of California

United States District Court

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Plaintiff,

No. C 11-01036 WHA

v.
HON HAI PRECISION INDUSTRY CO.,
LTD., and FOXCONN ELECTRONICS, INC.,

STAY OF CLAIMS ARISING
OUT OF THE PATENT
LICENSE AGREEMENT

Defendants.
/

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The Court is in receipt of the parties’ briefing on the proposed case management plan

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discussed at the hearing on Thursday, August 3 (Dkt. Nos. 329, 330). The parties prefer to

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litigate issues arising out of the Patent License Agreement in this forum; however, as the

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undersigned judge discussed in detail at the hearing, the Taiwan court’s judgment on the scope

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of the PLA and royalties owed under it are final, have already been enforced, and must be

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respected (see Dkt. No. 324 at 13–17).

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The practical solution, therefore, is to put all issues regarding the PLA on hold in this

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action and for the parties to litigate these issues in Taiwan, where the patent owners originally

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chose to bring their claims relating to the PLA and where both sides litigated issues arising out

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of the PLA. Taiwanese judges can best settle the parties’ disagreement over whether the final

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Taiwan judgment’s PLA determination constitutes a final judgment for res judicata purposes

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even though it is outside of the main text of the decision (Dkt. Nos. 278 at 7–8, 280 at 14–15).

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Moreover, while the first-instance judge in that action is apparently no longer with the court,

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the second-instance judges who authored the final Taiwan judgment can shed light on the

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PLA issues if a first-instance judgment were appealed in the new proceedings in Taiwan

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(Dkt. No. 330 at 3–4).

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This order therefore STAYS the parties’ PLA claims in all respects, pending proceedings

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in Taiwan. Meanwhile, this action shall proceed to trial in November on the claims relating to

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newly asserted patents.

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IT IS SO ORDERED.

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Dated: August 15, 2017.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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