`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`INTELLECTUAL VENTURES II LLC,
`
`Plaintiff,
`
`v.
`
`Case No. 1:17-cv-00297-LPS-CJB
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`DENSO CORPORATION, AND DENSO
`INTERNATIONAL AMERICA, INC.,
`
`
`
`Defendants.
`
`
`
`DEFENDANT DENSO CORPORATION, AND DENSO INTERNATIONAL AMERICA,
`INC.’S UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION
`
`Defendants DENSO CORPORATION (“DCJP”) and DENSO INTERNATIONAL
`
`AMERICA, INC. (“DIAM”) (collectively “DENSO” or “Defendants”) respectfully move this
`
`Court pursuant to 28 U.S.C. § 1659 and its inherent powers to control its docket for a stay of all
`
`proceedings in the above-captioned case until the determination of the United States
`
`International Trade Commission (“ITC”) in a parallel proceeding becomes final. Pursuant to
`
`District of Delaware Local Rule 7.1.1, the parties have met and conferred regarding this motion.
`
`Plaintiff Intellectual Ventures II LLC (“IV”) does not oppose this motion.
`
`On March 20, 2017, IV filed its complaint against DENSO in this action (“the Delaware
`
`action”), alleging infringement of U.S. Patent No. 7,067,952 (“the ’952 patent”). The very next
`
`day, IV also filed a complaint against DENSO with the ITC (“the ITC action”) asserting the ’952
`
`patent. The ITC instituted the ITC action on April 28, 2017.
`
`Pursuant to 28 U.S.C. § 1659 district court patent claims that involve the same issues as a
`
`parallel ITC proceeding are subject to a mandatory stay. Specifically, 28 U.S.C. § 1659(a)
`
`provides:
`
`
`
`
`
`Case 1:17-cv-00297-LPS-CJB Document 15 Filed 05/09/17 Page 2 of 3 PageID #: 95
`
`(a) Stay. In 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, but only if such request is made within –
`
`(1) 30 days after the party is named as a respondent in the
`proceeding before the Commission, or
`
`(2) 30 days after the district court action is filed, whichever is
`later.
`
`28 U.S.C. § 1659(a). A stay issued under this statute remains in effect during any appeals and
`
`“until the Commission proceedings are no longer subject to judicial review.” In re Princo Corp.,
`
`478 F.3d 1345, 1355 (Fed. Cir. 2007). Here, because the patent asserted in this action is also
`
`asserted against DENSO in the 337-TA-1052 Investigation, and because the parties and the
`
`accused products are also the same, a stay of this case is mandatory upon timely request by
`
`DENSO. DENSO’s request is timely under §1659 because this request is being made within 30
`
`days of the May 3, 2017 publication of the ITC’s Notice of Institution of Investigation, which
`
`names DENSO as respondents in the 337-TA-1052 Investigation.
`
`For the foregoing reasons, DENSO respectfully requests that the Court enter the attached
`
`proposed order and stay all proceedings in the Delaware action until the determination of the
`
`337-TA-1052 Investigation becomes final, including any appeals and until the Commission
`
`proceedings are no longer subject to judicial review.
`
`
`
`
`2
`
`
`
`Case 1:17-cv-00297-LPS-CJB Document 15 Filed 05/09/17 Page 3 of 3 PageID #: 96
`
`Dated: May 9, 2017
`
`
`Of Counsel:
`
`Paul R. Steadman
`Matthew Satchwell
`DLA PIPER LLP (US)
`203 N. LaSalle St., Suite 1900
`Chicago, IL 60601-1293
`Telephone: (312) 368-2111
`Facsimile: (312) 236-7516
`paul.steadman@dlapiper.com
`matthew.satchwell@dlapiper.com
`
`
`
`
`
`
`
`DLA PIPER LLP (US)
`
`/s/ Denise S. Kraft
`Denise S. Kraft (DE Bar No. 2778)
`Brian A. Biggs (DE Bar No. 5591)
`1201 North Market Street, Suite 2100
`Wilmington, DE 19801
`Telephone: (302) 468-5700
`Facsimile: (302) 394-2341
`denise.kraft@dlapiper.com
`brian.biggs@dlapiper.com
`
`Attorneys for Defendants DENSO
`CORPORATION, and DENSO
`INTERNATIONAL AMERICA, INC.
`
`
`3
`
`
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