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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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 TESSERA, INC., 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 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) 1 SPANSION, INC., 2 et al., No. C 10-4954 CW Plaintiffs, 3 v. 4 TESSERA, INC., 5 Claimant. ________________________________/ 6 7 AND ALL RELATED COUNTERCLAIMS / 8 Defendants STMicroelectronics, Inc. and STMicroelectronics, 10 United States District Court For the Northern District of California 9 N.V. (ST Defendants), Spansion Inc. and Spansion Technology LLC, 11 Reorganized Debtors/Plaintiffs Spansion Inc., Spansion Technology 12 LLC, Cerium Laboratories LLC and Spansion International, Inc. 13 (Spansion Defendants) move to stay proceedings in these cases 14 pursuant to 28 U.S.C. § 1659 and the Court’s May 24, 2007 Order 15 16 granting a stay until the United States International Trade 17 Commission (ITC) determination, including all appeals, becomes 18 final. 19 papers submitted by the parties and their arguments at the case 20 management conference, the Court DENIES Defendants’ motion to 21 stay. Tessera, Inc. opposes the stay. Having considered the 22 BACKGROUND 23 The ITC issued its final determination in Investigation No. 24 25 337-TA-605 on May 20, 2009. It also issued several limited 26 exclusion orders (LEOs) aimed at respondents, including Spansion 27 and ST, and cease-and-desist orders (CDOs) directed at 28 respondents, including Spansion, on that day. 2 These orders 1 prohibiting the respondents from importing infringing products 2 into the United States, but created an exception that they could 3 do so during the sixty-day Presidential review period upon posting 4 of a bond that was subject to forfeiture if the decision was 5 upheld. 6 The Federal Circuit affirmed the ITC’s final determination on 7 December 21, 2010. Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 8 9 1331 (Fed. Cir. 2011). The Supreme Court denied the respondents’ United States District Court For the Northern District of California 10 petitions for a writ of certiorari on November 28, 2011. 11 Qualcomm Inc. v. ITC, 2011 U.S. LEXIS 8568; Spansion, Inc. v. ITC, 12 2011 U.S. LEXIS 8529. 13 14 See On January 4, 2012, Tessera filed a petition with the ITC seeking forfeiture of bonds posted during the sixty-day 15 Presidential review period and a determination of the adequacy of 16 bonds posted. 17 DISCUSSION 18 19 Moving Defendants argue that the bond forfeiture proceeding 20 triggers the mandatory stay provision set forth in 28 U.S.C. 21 § 1659. 22 ongoing proceeding under section 337 of the Tariff Act of 1930 23 This statute provides, in part, that when there is an before the ITC, “the district court shall stay, until the 24 determination of the Commission becomes final, proceedings in the 25 26 civil action with respect to any claim that involves the same 27 issues involved in the proceeding before the Commission.” 28 U.S.C. § 1659(a). 3 28 1 While section 337 uses the word “proceeding” in relation to 2 the ITC’s determinations regarding whether that section has been 3 violated, section 337 does not use the term “proceeding” to refer 4 to an action taken for bond forfeiture, even though it does 5 provide the authority for bond forfeitures to take place. 6 Instead, a bond forfeiture action is referred to as a “proceeding” 7 only within ITC regulations, which define these actions as 8 9 “related proceedings.” See 19 C.F.R. § 210.3 (defining “related United States District Court For the Northern District of California 10 proceedings” to include “preinstitution proceedings, sanction 11 proceedings (for the possible issuance of sanctions that would not 12 have a bearing on the adjudication of the merits of a complaint or 13 a motion under this part), bond forfeiture proceedings, 14 proceedings to enforce, modify, or revoke a remedial or consent 15 order, or advisory opinion proceedings”). 16 Further, 28 U.S.C. § 1659(a) provides for a stay only until 17 18 the “determination of the Commission becomes final.” 19 ITC’s determination relevant to bond forfeiture as set forth in 20 the provisions of section 337 has become final. 21 provides that, before the ITC determination is final and 22 appealable, the President may review an ITC determination for a 23 period of sixty days after it is issued. Here, the Section 337 19 U.S.C. § 1337(j). 24 The section further states that, “until such determination becomes 25 26 final,” a respondent is “entitled to” import and sell an excluded 27 product “under bond prescribed by the Secretary in an amount 28 determined by the Commission to be sufficient to protect the 4 1 complainant from any injury. 2 the bond may be forfeited to the complainant.” 3 § 1337(j)(3). 4 conditions under which bonds may be forfeited under this 5 paragraph.” 6 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 7 becomes “final” either at the end of the sixty day period or when 8 9 the President notifies the ITC of his approval. Id. at United States District Court For the Northern District of California 10 § 1337(j)(4). Because these conditions have already occurred, and 11 the respondents’ appeal of the ITC determination is final, the ITC 12 determination is final and a mandatory stay pursuant to 28 U.S.C. 13 § 1659 is inapplicable. 14 discretionary stay. The Court declines to impose a 15 CONCLUSION 16 17 18 19 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. 20 21 Dated: 1/24/2012 CLAUDIA WILKEN United States District Judge 22 23 24 25 26 27 28 5

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