Case 1:24-cv-00264-JLH Document 13 Filed 04/05/24 Page 1 of 3 PageID #: 665
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`MEDTRONIC, INC., MEDTRONIC
`PUERTO RICO OPERATIONS CO.,
`MEDTRONIC LOGISTICS, LLC, AND
`MEDTRONIC USA, INC.,
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`Plaintiffs,
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`C.A. No. 24-264-JLH
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`v.
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`AXONICS, INC.,
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`Defendant.
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`UNOPPOSED MOTION TO STAY PURSUANT TO 28 U.S.C. § 1659
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`Defendant Axonics, Inc. (“Axonics”), pursuant to 28 U.S.C. § 1659, respectfully moves
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`the Court to stay this action until the determination of International Trade Commission in
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`Investigation No. 337-TA-1396, instituted on March 29, 2024, including appeals, becomes final.
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`Section 1659 of Title 28 provides: “In a civil action involving parties that are also parties
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`to a proceeding before the United States International Trade Commission under section 337 of the
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`Tariff Act of 1930, at the request of a party to the civil action that is also a respondent in the
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`proceeding before the Commission, the district court shall stay, until the determination of the
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`Commission becomes final, proceedings in the civil action with respect to any claim that involves
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`the same issues involved in the proceeding before the Commission.” 28 U.S.C. § 1659(a). A stay
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`under this section is mandatory and must be granted if made within thirty days from the later of
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`(1) the party being named a respondent in a proceeding before the ITC, or (2) the filing of the
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`district court action. 28 U.S.C. § 1659(a)(1)–(2); see also In re Remy Cointreau USA, Inc., 541 F.
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`1
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`Case 1:24-cv-00264-JLH Document 13 Filed 04/05/24 Page 2 of 3 PageID #: 666
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`App’x 985, 987 (Fed. Cir. 2013) (upholding the district court’s stay of all proceedings under 28
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`U.S.C. § 1659(a) until the ITC proceedings became final).
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`Plaintiffs Medtronic, Inc., Medtronic Puerto Rico Operations Co., Medtronic Logistics,
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`LLC, and Medtronic USA, Inc. (collectively, “Plaintiffs” or “Medtronic”) filed this action on
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`February 28, 2024, alleging infringement of U.S. Patent Nos. 8,712,540 and 9,174,059. See D.I.
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`1. Medtronic also filed a complaint with the ITC for the two same patents on February 28, 2024.
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`On March 29, 2024, the ITC instituted the 1396 Investigation, after which a Notice of Investigation
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`was published in the Federal Register on April 3, 2024. See 89 Fed. Reg. 65. The Notice of
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`Investigation identifies Axonics as respondent in the 1396 Investigation.
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`This action and the 1396 Investigation involve the same parties and same asserted patents.
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`Thus, the conditions of 28 U.S.C. § 1659 are satisfied and this action must be stayed until the ITC
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`issues a final determination in the 1396 Investigation. This motion is submitted within thirty days
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`of Axonics being named as respondent in the ITC 1396 Investigation and is therefore timely
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`filed. See 19 C.F.R. § 210.10(b). Counsel for Axonics communicated with counsel for Medtronic
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`regarding this motion on April 3, 2024, and Medtronic advised that it does not oppose the motion.
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`This motion is purely procedural and does not waive Axonics’ rights to petition this Court
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`regarding jurisdiction, or any other relief due under the law. See Hideki Elecs. v. Lacrosse Tech.,
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`2006 U.S. Dist. LEXIS 42296 (D. Or. June 5, 2006) (after court lifted stay under 28 U.S.C. § 1659,
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`defendants successfully moved for dismissal pursuant to FRCP 12(b) for lack of jurisdiction).
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`For these reasons, Axonics respectfully requests that the Court stay this action until the
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`determination of International Trade Commission in the 1396 Investigation, including appeals,
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`becomes final.
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`2
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`Case 1:24-cv-00264-JLH Document 13 Filed 04/05/24 Page 3 of 3 PageID #: 667
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`/s/ Karen E. Keller
`Karen E. Keller (No. 4489)
`SHAW KELLER LLP
`I.M. Pei Building
`1105 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 298-0700
`kkeller@shawkeller.com
`Attorney for Defendant Axonics, Inc.
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`OF COUNSEL:
`Matthew Powers
`TENSEGRITY LAW GROUP LLP
`555 Twin Dolphin Drive, Suite 650
`Redwood Shores, CA 94065
`(650) 802-6010
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`Azra Hadzimehmedovic
`Aaron Nathan
`Samantha Jameson
`TENSEGRITY LAW GROUP LLP
`1676 International Drive, Suite 910
`McLean, VA 22102-3848
`(703) 940-5031
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`Dated: April 5, 2024
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`3
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