Technology Properties Limited, LLC -v- Kyocera Corp.

Filing 17

ORDER by Judge Yvonne Gonzalez Rogers granting 6 Motion to Stay. The Court VACATES the hearing set for 12/4/2012. (fs, COURT STAFF) (Filed on 11/26/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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TECHNOLOGY PROPERTIES LIMITED LLC, et
al.
Plaintiffs,

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Northern District of California

United States District Court

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Case No.: 12-CV-3860 YGR
ORDER VACATING HEARING AND GRANTING
STAY OF ENTIRE ACTION

vs.
KYOCERA CORPORATION, et al.,
Defendants.
On July 24, 2012, Plaintiffs Technology Properties Limited LLC, Patriot Scientific

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Corporation and Phoenix Digital Solutions LLC (collectively, “Plaintiffs”) sued Defendant Kyocera
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Communications, Inc. (“Kyocera”) in this Court alleging infringement of three patents: U.S. Patents

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Nos. 5,809,336 (the ’336 Patent), 5,440,749 (the ’749 Patent), and 5,530,890 (the’890 Patent).

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Presently before the Court is Kyocera’s Motion to Stay this action in its entirety pending the
conclusion of an investigation by the United States International Trade Commission (ITC) in

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response to the complaint filed by Plaintiffs on July 23, 2012 concerning the ‘336 Patent. (Dkt No.

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6.) In response to the motion, Plaintiffs filed a Statement of Non-Opposition to Motion to Stay.

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(Dkt No. 11.) The Court finds this motion appropriate for decision without oral argument and,

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pursuant to Federal Rule of Civil Procedure 78(b) and Civil Local Rule 7-1(b), VACATES the hearing

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set for December 4, 2012.

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Stay of this civil action with respect to the ’336 Patent is automatic pursuant to 28 U.S.C. §

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1659. (“[T]he district court shall stay, until the determination of the Commission becomes final,

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proceedings in the civil action with respect to any claim that involves the same issues involved in the

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proceeding before the Commission . . . .”) Stay of the litigation as to the other two patents is within

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this Court’s discretion. See Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); CMAX, Inc. v. Hall, 300
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F.2d 265, 268 (9th Cir.1962); FormFactor, Inc. v. Micronics Japan Co., Ltd., CV-06-07159 JSW,

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2008 WL 361128 (N.D. Cal. Feb. 11, 2008) (granting stay where two of the five patents at issue

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were subject to automatic stay due to ITC proceedings). In light of the absence of opposition, as well

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as the evidence indicating potential prejudice and duplication of efforts, a discretionary stay of the

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Northern District of California

United States District Court

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claims as to the remaining patents is warranted.

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The Court GRANTS the Motion for Stay. This case is hereby STAYED pending the completion

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of the ITC’s investigation. A case management conference is set in this matter for April 22, 2013, at

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2:00 p.m. The parties shall file a joint case management statement limited to an update on the status

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of the ITC proceedings no less than seven days prior to the conference.

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This Order terminates Docket No. 6.
IT IS SO ORDERED.
Date: November 26, 2012

_________________________________________
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE

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