Tessera, Inc. v. Advanced Micro Devices, Inc. et al

Filing 955

ORDER by Judge Claudia Wilken DENYING (29) in case 4:10-cv-04954-CW; (939) 4:05-cv-04063-CW MOTION TO STAY. (ndr, COURT STAFF) (Filed on 1/24/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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TESSERA, INC.,

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United States District Court
For the Northern District of California

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Plaintiff,
v.
ADVANCED MICRO DEVICES, INC., a
Delaware corporation; SPANSION,
LLC, a Delaware limited liability
corporation; SPANSION, INC., a
Delaware corporation; SPANSION
TECHNOLOGY, INC., a Delaware
corporation; ADVANCED
SEMICONDUCTOR ENGINEERING, INC.,
a Republic of China corporation;
ASE (U.S.), INC., a California
corporation; CHIPMOS
TECHNOLOGIES, INC., a Republic of
China corporation; CHIPMOS
U.S.A., INC., a California
corporation; SILICONWARE
PRECISION INDUSTRIES CO., LTD., a
Republic of China corporation;
SILICONWARE USA, INC., a
California corporation;
STMICROELECTRONICS N.V., a
Netherlands corporation;
STMICROELECTRONICS, INC., a
Delaware corporation; STATS
CHIPPAC, INC., a Delaware
corporation; STATS CHIPPAC (BVI),
INC., a British Virgin Islands
company; STATS CHIPPAC, LTD., a
Singapore company,
Defendants.
________________________________/

No. C 05-4063 CW
ORDER DENYING
MOTION TO STAY
(Docket Nos. 939
in 05-4063 and 29
in 10-4954)

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SPANSION, INC.,

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et al.,

No. C 10-4954 CW

Plaintiffs,

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v.

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TESSERA, INC.,

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Claimant.
________________________________/

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AND ALL RELATED COUNTERCLAIMS
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Defendants STMicroelectronics, Inc. and STMicroelectronics,

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United States District Court
For the Northern District of California

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N.V. (ST Defendants), Spansion Inc. and Spansion Technology LLC,

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Reorganized Debtors/Plaintiffs Spansion Inc., Spansion Technology

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LLC, Cerium Laboratories LLC and Spansion International, Inc.

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(Spansion Defendants) move to stay proceedings in these cases

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pursuant to 28 U.S.C. § 1659 and the Court’s May 24, 2007 Order
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granting a stay until the United States International Trade

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Commission (ITC) determination, including all appeals, becomes

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final.

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papers submitted by the parties and their arguments at the case

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management conference, the Court DENIES Defendants’ motion to

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stay.

Tessera, Inc. opposes the stay.

Having considered the

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BACKGROUND
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The ITC issued its final determination in Investigation No.
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337-TA-605 on May 20, 2009.

It also issued several limited

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exclusion orders (LEOs) aimed at respondents, including Spansion

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and ST, and cease-and-desist orders (CDOs) directed at

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respondents, including Spansion, on that day.
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These orders

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prohibiting the respondents from importing infringing products

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into the United States, but created an exception that they could

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do so during the sixty-day Presidential review period upon posting

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of a bond that was subject to forfeiture if the decision was

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upheld.

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The Federal Circuit affirmed the ITC’s final determination on

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December 21, 2010.

Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d

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1331 (Fed. Cir. 2011).

The Supreme Court denied the respondents’

United States District Court
For the Northern District of California

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petitions for a writ of certiorari on November 28, 2011.

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Qualcomm Inc. v. ITC, 2011 U.S. LEXIS 8568; Spansion, Inc. v. ITC,

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2011 U.S. LEXIS 8529.

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See

On January 4, 2012, Tessera filed a petition with the ITC
seeking forfeiture of bonds posted during the sixty-day

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Presidential review period and a determination of the adequacy of
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bonds posted.
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DISCUSSION

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Moving Defendants argue that the bond forfeiture proceeding

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triggers the mandatory stay provision set forth in 28 U.S.C.

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§ 1659.

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ongoing proceeding under section 337 of the Tariff Act of 1930

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This statute provides, in part, that when there is an

before the ITC, “the district court shall stay, until the

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determination of the Commission becomes final, proceedings in the
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civil action with respect to any claim that involves the same

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issues involved in the proceeding before the Commission.”

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U.S.C. § 1659(a).
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While section 337 uses the word “proceeding” in relation to

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the ITC’s determinations regarding whether that section has been

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violated, section 337 does not use the term “proceeding” to refer

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to an action taken for bond forfeiture, even though it does

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provide the authority for bond forfeitures to take place.

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Instead, a bond forfeiture action is referred to as a “proceeding”

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only within ITC regulations, which define these actions as
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“related proceedings.”

See 19 C.F.R. § 210.3 (defining “related

United States District Court
For the Northern District of California

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proceedings” to include “preinstitution proceedings, sanction

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proceedings (for the possible issuance of sanctions that would not

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have a bearing on the adjudication of the merits of a complaint or

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a motion under this part), bond forfeiture proceedings,

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proceedings to enforce, modify, or revoke a remedial or consent

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order, or advisory opinion proceedings”).
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Further, 28 U.S.C. § 1659(a) provides for a stay only until
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the “determination of the Commission becomes final.”

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ITC’s determination relevant to bond forfeiture as set forth in

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the provisions of section 337 has become final.

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provides that, before the ITC determination is final and

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appealable, the President may review an ITC determination for a

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period of sixty days after it is issued.

Here, the

Section 337

19 U.S.C. § 1337(j).

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The section further states that, “until such determination becomes
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final,” a respondent is “entitled to” import and sell an excluded

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product “under bond prescribed by the Secretary in an amount

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determined by the Commission to be sufficient to protect the
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complainant from any injury.

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the bond may be forfeited to the complainant.”

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§ 1337(j)(3).

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conditions under which bonds may be forfeited under this

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paragraph.”

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If the determination becomes final,
19 U.S.C.

The ITC is directed to “prescribe the terms and

Id.

For the purposes of bond forfeiture, if the

President does approve of the ITC’s decision, the determination

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becomes “final” either at the end of the sixty day period or when
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the President notifies the ITC of his approval.

Id. at

United States District Court
For the Northern District of California

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§ 1337(j)(4).

Because these conditions have already occurred, and

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the respondents’ appeal of the ITC determination is final, the ITC

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determination is final and a mandatory stay pursuant to 28 U.S.C.

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§ 1659 is inapplicable.

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discretionary stay.

The Court declines to impose a

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CONCLUSION

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For the reasons set forth above, the Court DENIES Defendants’
motion to stay (Docket Nos. 939 in 05-4063 and 29 in 10-4954).
IT IS SO ORDERED.

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Dated: 1/24/2012

CLAUDIA WILKEN
United States District Judge

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