Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited et al

Filing 595

MEMORANDUM AND ORDER. Defendants motion for a continued stay of this action (D.I. 577 ) is denied as moot. Defendants letter request for a further stay pending administrative proceedings (D.I. 593 ) is denied. Signed by Judge Joseph F. Bataillon on 7/8/2021. (cna, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GODO KAISHA IP BRIDGE 1,
Plaintiff,
v.
TCL COMMUNICATION
TECHNOLOGY HOLDINGS
LIMITED, A Chinese Corporation,
TCT MOBILE LIMITED, a Hong
Kong Corporation, TCT
MOBILE (US), INC., A Delaware
Corporation, and TCT MOBILE, INC.,
A Delaware Corporation,
Defendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

Civil Action No. 15-634-JFB-SRF

MEMORANDUM AND ORDER

This matter is before the Court on the motion of defendants TCL Communication
Technology Holdings Limited, TCT Mobile Limited , TCT MOBILE (U.S.), Inc. and TCT
Mobile, Inc. (collectively, “TCL”) for a Continued Stay of Execution of Judgment Pending
Final Disposition of this Case by the Supreme Court (D.I. 577) and on letters submitted
by the parties in connection with that motion (D.I. 592 and 593). This is an action for
patent infringement under 35 U.S.C. § 271. This Court has jurisdiction under 28 U.S.C.
§§ 1331 and 1338(a).
This Court’s judgment in the amount of $950,00.00, plus pre- and post-judgment
interest and ongoing royalties, was affirmed by the United States Court of Appeals for the
Federal Circuit and the Mandate was issued on December 11, 2020. D.I. 512, Judgment
pursuant to Jury Verdict; D.I. 539, Final Judgment; D.I. 573, Mandate; D.I. 573-1, Federal
Circuit decision 573-2, Federal Circuit judgment. Claims 15 and 16 of the U.S. Patent
No. 8,351,538 (“the ’538 patent”) and claims 9 and 12 of U.S. Patent No. 8,385,239 (“the
’239 patent”) were at issue in the litigation. This Court stayed execution on the judgment
1

pending the appeal (D.I. 543). The Court lifted the stay once the Federal Circuit’s
Mandate affirming the judgment was issued. (D.I. 575).
TCL then moved to continue the stay pending a writ of certiorari. D.I. 577. The
Supreme Court has now denied TCL’s petition for a writ of certiorari. D.I. 592-1, Ex. A at
4; see TCL Commc’n v. Godo Kaisha IP Bridge 1, No. 20-1545, 2021 WL 2637892 (U.S.
June 28, 2021). Accordingly, the Court finds TCL’s motion to stay is moot and will be
denied.
TCL notified the Court of reexamination proceedings pending at the Patent and
Trademark Office on May 17, 2021. D.I. 591. In a letter to the Court that pertains to the
stay, plaintiff Godo Kaisha IP Bridge 1 (“IP Bridge”) requests that the Court deny any
further stay, allow execution on the judgment and grant an award of costs.1 D.I. 592 TCL,
on the other hand, informs the Court that the PTO has since rejected claims 15 and 16 of
the ’538 patent in two office actions and the Patent and Trademark Appeals Board
(“PTAB”) issued a Final Rejection and Examiner’s Answer on May 5, 2021. D.I. 593; see
D.I. 573-1, Ex. 9. It urges the Court to continue the stay pending a final order on the
reexamination, which it contends will be entered in the next five to six months.
The Court has reviewed and fully considered the letters and supporting
documentation and finds that a continued stay should be denied. The stay was originally
granted to allow for appeals through the judicial system, and not for further administrative
proceedings. Accordingly, the Court will deny TCL’s letter request for a further stay.

1

IP Bridge earlier filed a bill of costs (D.I. 578; D.I. 584; D.I. 585) and TCL filed objections thereto (D.I.
588). In accordance with the Local Rules of Civil Practice and Procedure of the United States District Court
for the District of Delaware, costs will be taxed by the Clerk of Court. See D. Del. LR 54.1(a)(4).

2

IT IS ORDERED:
1.

Defendants’ motion for a continued stay of this action (D.I. 577) is denied

as moot.
2.

Defendants’ letter request for a further stay pending administrative

proceedings (D.I. 593) is denied.

DATED this 8th day of July 2021.
BY THE COURT:
s/ Joseph F. Bataillon
Senior United States District Judge

3