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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`INTELLECTUAL VENTURES II LLC,
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`Plaintiff,
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`v.
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`Case No. 1:17-cv-00297-LPS-CJB
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`JURY TRIAL DEMANDED
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`DENSO CORPORATION, AND DENSO
`INTERNATIONAL AMERICA, INC.,
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`
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`Defendants.
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`
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`DEFENDANT DENSO CORPORATION, AND DENSO INTERNATIONAL AMERICA,
`INC.’S UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION
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`Defendants DENSO CORPORATION (“DCJP”) and DENSO INTERNATIONAL
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`AMERICA, INC. (“DIAM”) (collectively “DENSO” or “Defendants”) respectfully move this
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`Court pursuant to 28 U.S.C. § 1659 and its inherent powers to control its docket for a stay of all
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`proceedings in the above-captioned case until the determination of the United States
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`International Trade Commission (“ITC”) in a parallel proceeding becomes final. Pursuant to
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`District of Delaware Local Rule 7.1.1, the parties have met and conferred regarding this motion.
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`Plaintiff Intellectual Ventures II LLC (“IV”) does not oppose this motion.
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`On March 20, 2017, IV filed its complaint against DENSO in this action (“the Delaware
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`action”), alleging infringement of U.S. Patent No. 7,067,952 (“the ’952 patent”). The very next
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`day, IV also filed a complaint against DENSO with the ITC (“the ITC action”) asserting the ’952
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`patent. The ITC instituted the ITC action on April 28, 2017.
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`Pursuant to 28 U.S.C. § 1659 district court patent claims that involve the same issues as a
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`parallel ITC proceeding are subject to a mandatory stay. Specifically, 28 U.S.C. § 1659(a)
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`provides:
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`Case 1:17-cv-00297-LPS-CJB Document 15 Filed 05/09/17 Page 2 of 3 PageID #: 95
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`(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 –
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`(1) 30 days after the party is named as a respondent in the
`proceeding before the Commission, or
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`(2) 30 days after the district court action is filed, whichever is
`later.
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`28 U.S.C. § 1659(a). A stay issued under this statute remains in effect during any appeals and
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`“until the Commission proceedings are no longer subject to judicial review.” In re Princo Corp.,
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`478 F.3d 1345, 1355 (Fed. Cir. 2007). Here, because the patent asserted in this action is also
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`asserted against DENSO in the 337-TA-1052 Investigation, and because the parties and the
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`accused products are also the same, a stay of this case is mandatory upon timely request by
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`DENSO. DENSO’s request is timely under §1659 because this request is being made within 30
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`days of the May 3, 2017 publication of the ITC’s Notice of Institution of Investigation, which
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`names DENSO as respondents in the 337-TA-1052 Investigation.
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`For the foregoing reasons, DENSO respectfully requests that the Court enter the attached
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`proposed order and stay all proceedings in the Delaware action until the determination of the
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`337-TA-1052 Investigation becomes final, including any appeals and until the Commission
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`proceedings are no longer subject to judicial review.
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`2
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`Case 1:17-cv-00297-LPS-CJB Document 15 Filed 05/09/17 Page 3 of 3 PageID #: 96
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`Dated: May 9, 2017
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`Of Counsel:
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`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
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`
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`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
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`Attorneys for Defendants DENSO
`CORPORATION, and DENSO
`INTERNATIONAL AMERICA, INC.
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`3
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