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

Filing 17

MEMORANDUM ORDER granting 7 MOTION to Stay Pending Final Resolution of Related ITC Proceedings. This action is STAYED until the United States International Trade Commission's Determination in Investigation Number 337-TA- 1044 is no longer subject to judicial review. Signed by Judge Colm F. Connolly on 8/29/2019. (nmf)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
ADVANCED MICRO
DEVICES, INC., and ATI
TECHNOLOGIES ULC,
Plaintiffs,

v.

Civil Action No. 19-70-CFC

MEDIATEK INC., and
MEDIATEK USA INC.,
Defendants.:

MEMORANDUM ORDER

On January 10, 2019, Plaintiffs Advanced Micro Devices, Inc. and ATI
Technologies ULC (collectively, "AMD") filed this lawsuit accusing Defendants
MediaTek Inc. and MediaTek USA Inc. ("MediaTek") of infringing two patents:
United States Patent Numbers 7,633,506 (the "#506 patent") and 7,796,133 (the
"#133 patent"). AMO and MediaTek were also parties to Investigation No. 337TA-1044, instituted by the International Trade Commission (the "Commission")
on March 22, 2017 under section 337 of the Tariff Act of 1930, codified at 19
U.S.C. § 1337. See D.I. 11-1 at 1-2. On August 22, 2018, the Commission issued
a notice in which it announced that the investigation "is terminated" and that the
Commission had "determined to affirm" an Administrative Law Judge's final

Initial Determination that MediaTek infringes the #506 patent and does not
infringe the #133 patent. See id. at 1, 3. MediaTek appealed to the Federal Circuit
the Commission's determination that MediaTek infringes the #506 patent. That
appeal is pending. Before me now is MediaTek's motion filed on February 8,
2019 to stay this case "until the final resolution" of Investigation No. 337-TA1044. D.I. 7 at 1.
MediaTek argues that a stay of A:MD's claims relating to the #506 patent is
mandated by 28 U.S.C. § 1659, and that "[g]iven the substantial overlap" between
the two patents I should exercise my discretion to stay as well the claims relating to
the #133 patent. D.I. 8 at 1-2. It argues in the alternative that if I determine that§
1659 does not mandate a stay, I should exercise my discretion incidental to the
power inherent in every court to stay the case. D.I. 8 at 5 n.4; D.I. 12 at 5-6.
The language of§ 1659 negates AMD's argument that a stay is mandated in
this case. Section 1659(a) provides in relevant part that
[i]n a civil action involving parties that are also parties to
a proceeding before the United States International Trade
Commission under section 337 of the Tariff Act of 1930,
at the request of a party to the civil action that is also a
respondent in the proceeding before the Commission, the
district court shall stay, until the determination of the
Commission becomes final, proceedings in the civil
action with respect to any claim that involves the same
issues involved in the proceeding before the Commission

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28 U.S.C. § 1659(a). Thus, by the statute's express terms, a stay is not mandated
unless the parties are currently parties to a proceeding pending before the
Commission. The statute requires the district court to grant a stay only "at the
request of a party to the civil action that is also a respondent in the proceeding
before the Commission" and only if the parties "are also parties to a proceeding
before the Commission." Id. (emphasis added).
The only "proceeding" that takes place before the ITC under section 337 is
an investigation. See 19 U.S.C. § 1337(b) and (c) (authorizing ITC to initiate
"investigation" of alleged violations of section 33 7 and using the terms
"investigation" and "proceeding" interchangeably). The ITC terminated
Investigation No. 337-TA-1044 on August 22, 2018-five months before
MediaTek filed its motion to stay this case. Thus, there was no pending
Commission proceeding when MediaTek filed its motion for a stay and, therefore,
the plain language of§ 1659 does not mandate a stay of this action. See United

States v. Ron Pair Enters., Inc., 489 U.S. 235,241 (1989) ("The task of resolving
the dispute over the meaning of [a statute] begins where all such inquiries must
begin: with the language of the statute itself. In this case it is also where the
inquiry should end, for where, as here, the statute's language is plain, the sole

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function of the courts is to enforce it according to its terms." (internal quotation
marks and citations omitted)). 1
There remains the question of whether I should exercise my discretion to
grant Mediatek's stay request. "[T]he power to stay proceedings is incidental to
the power inherent in every court to control the disposition of the cases on its
.docket with economy of time and effort for itself, for counsel, and for litigants."

Landis v. N Am. Co., 299 U.S. 238, 254 (1936). The factors courts typically
consider in deciding whether to exercise this discretionary power are: (i) whether a
stay will simplify the issues in question and trial of the case; (ii) whether discovery
is complete and a trial date has been set; and (iii) whether a stay would unduly
prejudice or present a clear tactical disadvantage to the non-moving party. See,

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Mediatek's reliance on In re Princo Corp., 478 F.3d 1345 (Fed. Cir. 2007) is
unavailing. The Federal Circuit held in Princo that "the Commission's
determination has not yet 'become final' under § 1659 ... until the Commission
order is no longer subject to appellate review." Id. at 1357 (emphasis added).
"Determination" and "proceeding" are two completely different things-analogous
to, respectively, "verdict" and "trial." (And for this reason, I understand
MediaTek's motion to be incorrectly captioned and effectively to seek a stay until
the final resolution of the Commission's determination, not the Commission's
proceeding.) Princo says nothing about the duration or pendency of "proceeding"
under § 1659 or whether the movant for a stay under § 1659 "is also a respondent
in the proceeding before the Commission" under § 1659. Unlike Mediatek, the
defendants in Princo requested a stay when they were also parties to a proceeding
then pending before the Commission (albeit on remand after the Federal Circuit
had reversed the Commission's initial determination). See id. at 1350.

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e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Sony Corp., 2003 WL
25283239, at* 1 (D. Del. Jan. 30, 2003).
Here, a stay will likely simplify the issues in question and trial of the case.
The Commission's proceeding and determination addressed both of the patents
asserted in this case and some of the same products accused of infringement. The
patents share common inventors and claim terms and have overlapping figures and
written descriptions. The Federal Circuit will likely issue within the next few
months a ruling that addresses directly issues concerning the #506 patent and
perhaps indirectly issues that concern the #133 patent. AMD agrees that "the same
discovery in this case will be applicable to both AMD 's counts of infringement for
the '506 and' 133 Patents." D.I. 11 at 12. AMD also agrees that its "claims
relating to the '506 and' 133 Patents implicate the same witnesses, accused
products, third-party technology, and evidence." Id. (quoting D.I. 8 at 7). Further,
AMD does not dispute that staying this action in its entirety pending final
resolution of the Commission's determination would enable the Court, the parties,
and third parties who provide the graphics processing technology central to AMD' s
infringement claims to avoid the burdens of duplicative litigation. Thus, a stay
would promote judicial economy and minimize burdening third parties.
The second factor courts typically consider also favors a stay. Discovery has
not begun, a trial date has not been set, and there is no scheduling order in place.

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Finally, a stay would not cause AMD undue prejudice. AMD contends that
a stay would prejudice it in two ways. It argues first that a stay "would be
inequitable" because MediaTek filed its own infringement action against AMD
after filing its motion to stay in this action. See D.I. 11 at 15. But Mediatek's
lawsuit involves different patents and different accused products and neither party
has argued that it would be unduly prejudiced by having to litigate two cases at
once. MediaTek's filing of a separate lawsuit accusing AMD of infringing
MediaTek's patents is thus not relevant to the undue prejudice inquiry.
AMD also argues that, based on the average time the Federal Circuit takes to
adjudicate appeals, a stay will prejudice AMD by delaying the case "for at least~
year." D.I. 11 at 15 (emphasis in original). It does not, however, explain how a
delay of a year (or any time) would cause it to suffer any irreparable harm, and
thus fails to demonstrate that it would be unduly prejudiced by a stay. See

Virtua/Agility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014)
("Of course, whether the patentee will be unduly prejudiced by a stay ... like the
irreparable harm-type inquiry, focuses on the patentee's need for an expeditious
resolution of its claim. A stay will not diminish the monetary damages to which
[the patentee] will be entitled if it succeeds in its infringement suit-it only delays
realization of those damages and delays any potential injunctive remedy."
(emphasis in original)). Moreover, its argument that a delay in this action will

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cause it prejudice is undermined by the fact that AMD did not file this lawsuit until
two years after it filed its complaint that led the Commission to initiate
Investigation No. 337-TA-1044.
Accordingly, for the reasons set forth above, IT IS HEREBY ORDERED
this 29th day of August, 2019 that "[MediaTek's] Motion to Stay Pending Final
Resolution of Related ITC Proceedings" (D.I. 7) is GRANTED and that this action
is STAYED until the United States International Trade Commission's
Determination in Investigation Number 337-TA-1044 is no longer subject to
judicial review.

UNITED STATES DISTRICT JUDGE

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