Bell Semiconductor, LLC v. NXP USA, Inc.
- Proceeding
- district
- Area
- civil
- Panel
- Cynthia Ann Bashant (author)
Analysis
The court considered a joint motion to stay the patent action due to parallel proceedings at the International Trade Commission. The court granted the motion, staying the action pending the final ITC decision, and ordered the parties to file periodic status reports.
| What the court decided | The model |
|---|---|
Joint Motion to Stay (ECF No. 32) granted“Hence, the Court GRANTS the parties’ joint motion (ECF No. 32) and STAYS this action pending the final decision in ITC Investigation No. 337-TA-1319.” | agree with court The court correctly applied 28 U.S.C. § 1659, which mandates a stay when a civil action involves the same issues as a proceeding before the ITC. The order recites that the plaintiff is asserting a single patent in both forums, satisfying the statutory requirement for a mandatory stay. |
Order requiring interim status reports“Further, the Court ORDERS the parties to file a joint status report no later than December 21, 2022, and to file a joint status report every six months thereafter until ITC Investigation No. 337-TA-1319 has concluded.” | agree with court The court exercised its inherent authority to manage the docket and ensure the stay does not result in a loss of jurisdiction or procedural default. Requiring status reports is a standard and appropriate procedural mechanism to monitor the progress of the parallel ITC proceedings. |
The order itself: sound — The order is procedurally sound and legally correct. It correctly identifies the mandatory nature of the stay under 28 U.S.C. § 1659 given the identity of the patent and issues in both forums. The citation to *In re Princo Corp.* accurately reflects the Federal Circuit's interpretation of the statute's purpose. The additional order for status reports is a reasonable exercise of judicial management authority to ensure the case remains active upon the conclusion of the ITC proceedings.
Opinion
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 BELL SEMICONDUCTOR, LLC, Case No. 22-cv-0594-BAS-KSC 12 Plaintiff, ORDER GRANTING JOINT 13 v. MOTION TO STAY (ECF No. 32) AND REQUIRING INTERIM 14 NXP USA, INC., STATUS REPORTS 15 Defendant.
17 Before the Court is a joint motion to stay this patent action in light of parallel 18 proceedings at the International Trade Commission. (ECF No. 32.) In both this case and 19 before the ITC, Plaintiff Bell Semiconductor is asserting a single patent against Defendant 20 NXP USA. (Compl.; Mot. Ex. 1, ECF No. 32-1.) On June 7, 2022, the ITC instituted a 21 parallel proceeding in Certain Electronic Devices And Semiconductor Devices With 22 Timing-Aware Dummy Fill And Components Thereof, Investigation No. 337-TA-1319. 23 (Mot. Ex. 2, ECF No. 32-2.) 24 Under 28 U.S.C. § 1659, “at the request of a party to the civil action that is also a 25 respondent in the proceeding before the Commission, the district court shall stay, until the 26 determination of the Commission becomes final, proceedings in the civil action with 27 respect to any claim that involves the same issues involved in the proceeding before the 28 Commission.” The purpose of this mandatory stay “is to prevent separate proceedings on | same issues occurring at the same time” and to avoid duplicative and inefficient 2 || consumption of the court’s and parties’ resources. In re Princo Corp., 478 F.3d 1345, 1355 3 ||(Fed. Cir. 2007); see also Polymer Tech. Sys., Inc. v. ACON Lab’ys, Inc., No. 18-CV- 4 ||00805-H-JLB, 2018 WL 3388123, at *2 (S.D. Cal. July 11, 2018) (applying stay 5 || provision). 6 The Court finds § 1659 applies here. Hence, the Court GRANTS the parties’ joint 7 |}motion (ECF No. 32) and STAYS this action pending the final decision in ITC 8 || Investigation No. 337-TA-1319. Further, the Court ORDERS the parties to file a joint 9 || status report no later than December 21, 2022, and to file a joint status report every six 10 months thereafter until ITC Investigation No. 337-TA-1319 has concluded. The Court also 11 |} ORDERS the parties to file a joint status report within ten (10) days after the ITC issues 12 final decision in Investigation No. 337-TA-1319. 13 IT IS SO ORDERED. 14 A , 15 || DATED: June 21, 2022 (Yin A (Lyohan. 16 United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28