Case 1:17-cv-00770-RGA Document 25 Filed 05/27/21 Page 1 of 3 PageID #: 2305
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`CATERPILLAR INC.,
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`Defendant.
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`Civil Action No. 17-770-RGA
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`ORDER
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`The above-captioned case was stayed on August 29, 2017, due to proceedings pending
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`before the U.S. International Trade Commission (the "ITC"), and the parties have submitted a
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`joint letter informing this Court of the status of the ITC proceedings. (D.I. 9; D.I. 24).
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`There were five patents in the ITC proceedings. On appeal, the Federal Circuit affirmed
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`the ITC’s findings relating to claims involving U.S. Patent 7,828,309 (“’309 Patent”) and U.S.
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`Patent 9,656,530 (“’530 Patent”). Caterpillar Prodotti Stradali S.R.L. v. Int’l Trade Comm’n,
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`2021 WL 960759, at *4 (Fed. Cir. Mar. 15, 2021). The Federal Circuit reversed two rulings
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`regarding indirect infringement of claims 11 and 17 of U.S. Patent No. 7,530,641 (“’641 Patent”)
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`and remanded for further proceedings. Id. at *6. The appeal did not involve the other two patents,
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`U.S. Patent 9,624,628 (“’628 Patent”) and U.S. Patent 9,644,340 (“’340 Patent”). Wirtgen
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`voluntarily dismissed its claims as to the ’628 Patent and there was no appeal regarding the
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`decision on the ’340 Patent. Id. at *1 n.1.
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`Plaintiff Wirtgen now takes the position that the stay should be lifted in its entirety, while
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`Defendant Caterpillar argues that 28 U.S.C. § 1659(a) requires a mandatory stay for issues
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`Case 1:17-cv-00770-RGA Document 25 Filed 05/27/21 Page 2 of 3 PageID #: 2306
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`related to the ’641, ’309, ’530, ’628 and ’340 Patents and that a discretionary stay should remain
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`in place for proceedings related to the other seven patents in suit. (D.I. 24).
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`Since a mandatory stay depends upon statutory authority, I consider the statute and its
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`interpretation. The Federal Circuit has held that the language of 28 U.S.C. § 1659(a)
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`“necessarily suggests that after a final determination by the Commission, the district court may
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`resume its consideration of the civil action.” Fuji Photo Film Co. v. Benun, 463 F.3d 1252, 1256
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`(Fed. Cir. 2006). Additionally, § 1659(a) and its legislative history show that the purpose of the
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`statute is to avoid duplicative proceedings in the district court and the ITC by issuing a
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`mandatory stay only “when parallel claims involve the same issues about the same patent.”
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`SanDisk Corp. v. Phison Elec. Corp., 538 F.Supp.2d 1060, 1065 (W.D. Wisc. 2008) (citing H.R.
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`REP. NO. 103–826(I), at 140 (1994), reprinted in 1994 U.S.C.C.A.N. 3773, 3912–3913). When a
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`stay is not mandatory as to an asserted patent, it still may be stayed at the discretion of the
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`district court. Id. at 141. Furthermore, the Federal Circuit has ruled that ITC proceedings are
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`“final” as they relate to 28 U.S.C. § 1659(a) when they are “no longer subject to judicial review,”
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`including any remand proceedings. In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
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`Here, the only patent that now has any overlapping issues is the ’641 Patent. Caterpillar,
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`2021 WL 960759, at *4 (discussing “only Wirtgen's challenge to the two rulings regarding
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`indirect infringement of claims 11 and 17 of the ’641 patent.”). The ITC’s handling of the other
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`four patents at issue in the ITC proceedings is “no longer subject to judicial review.” Therefore,
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`this Court is required to continue the stay regarding claims involving the ’641 Patent pursuant to
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`§ 1659(a), but the stay regarding the other four patents and the seven patents not overlapping
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`with the ITC proceedings is committed to the discretion of this Court.
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`Case 1:17-cv-00770-RGA Document 25 Filed 05/27/21 Page 3 of 3 PageID #: 2307
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`When deciding whether to institute or maintain a discretionary stay, the Court will
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`typically consider whether issues will be simplified for trial, the current stage of litigation, and
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`whether the non-movant will suffer any undue prejudice from the stay. Toshiba Samsung Storage
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`Tech. Korea Corp. v. LG Elecs., Inc., 193 F. Supp. 3d 345, 348 (D. Del. 2016). In the present
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`action, the current stage of litigation is very early. I do not find Wirtgen’s claim of undue
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`prejudice particularly persuasive. Nevertheless, a stay is simply postponing the inevitable.
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`Neither the issues nor the discovery in this action will be simplified by issuing a stay relating to
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`the claims involving the eleven patents that are not now at issue in the ITC.1 Besides
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`encompassing similar subject matter and having a shared presence in the accused infringing
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`products, the issues involving the ’641 Patent are largely independent since that patent is in a
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`different family from all the other patents-in-suit. (D.I. 1 at 5). Thus, claim construction may also
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`be simplified since one less patent from a different patent family provides less complications.
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`See Align Tech., Inc. v. 3Shape A/S, 2018 WL 4292675, at *2 (D. Del. Sept. 7, 2018).
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`THEREFORE, IT IS HEREBY ORDERED that the stay in the above-captioned case is
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`lifted with respect to claims related to all the patents in suit, excluding U.S. Patent No.
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`7,530,641.
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`Entered this 27th day of May, 2021.
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`_/s/ Richard G. Andrews___
`United States District Judge
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`1 It seems likely that lifting the stay may result in dismissal of the ’641 patent. Plaintiff has asserted many more
`patents from many more patent families than can actually be tried in a one-week trial. Thus, the need for the ‘641
`patent is likely minimal at most. I am not going to hold two Markmans or two trials in this case. Thus, unless the
`ITC proceedings involving the ‘641 patent are quickly resolved, it should drop out of this case.
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