Case 6:20-cv-00646-ADA Document 10 Filed 09/17/20 Page 1 of 4
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`Case No. 6:20-cv-00646-ADA
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`MOTION TO STAY ACTION PURSUANT TO 28 U.S.C. § 1659
`PENDING PARALLEL ITC ACTION
`
`Defendant Apple Inc. respectfully moves this Court, pursuant to 28 U.S.C. § 1659 and
`
`the Court’s inherent powers, to stay all proceedings in the above-captioned action until the
`
`determination of the United States International Trade Commission becomes final. Maxell
`
`agrees this action should be stayed, but has suggested without authority that the duration of the
`
`stay should not include any appeals of the International Trade Commission action. Counsel for
`
`Apple has tried for more than a week to elicit from Maxell the basis for its position that any
`
`appeals stemming from the ITC action should be excluded from the statutory stay. But not only
`
`has Maxell not explained its position, its counsel (including its Texas counsel and its lead
`
`counsel) have refused to respond to Apple’s counsel’s emails and phone calls seeking an
`
`explanation. Setting aside Maxell’s intransigence, controlling authority establishes that this case
`
`should be stayed until all appeals of the International Trade Commission action are exhausted.
`
`This Action Should Be Stayed Pursuant to 28 U.S.C. § 1659.
`
`On July 17, 2020, Maxell, Ltd. filed a complaint against Apple before the ITC (“the ITC
`
`action”) alleging infringement of United States Patent Nos. 7,203,517; 8,982,086; 7,199,821;
`
`10,129,590; and 10,176,848 (collectively the “asserted patents”). On July 16, 2020, Maxell filed
`
`WEST\291675102.3
`
`IPR2021-00400
`Apple EX1008 Page 1
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`Case No. 6:20-cv-00646-ADA
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`MOTION TO STAY ACTION PURSUANT TO 28 U.S.C. § 1659
`PENDING PARALLEL ITC ACTION
`
`Defendant Apple Inc. respectfully moves this Court, pursuant to 28 U.S.C. § 1659 and
`
`the Court’s inherent powers, to stay all proceedings in the above-captioned action until the
`
`determination of the United States International Trade Commission becomes final. Maxell
`
`agrees this action should be stayed, but has suggested without authority that the duration of the
`
`stay should not include any appeals of the International Trade Commission action. Counsel for
`
`Apple has tried for more than a week to elicit from Maxell the basis for its position that any
`
`appeals stemming from the ITC action should be excluded from the statutory stay. But not only
`
`has Maxell not explained its position, its counsel (including its Texas counsel and its lead
`
`counsel) have refused to respond to Apple’s counsel’s emails and phone calls seeking an
`
`explanation. Setting aside Maxell’s intransigence, controlling authority establishes that this case
`
`should be stayed until all appeals of the International Trade Commission action are exhausted.
`
`This Action Should Be Stayed Pursuant to 28 U.S.C. § 1659.
`
`On July 17, 2020, Maxell, Ltd. filed a complaint against Apple before the ITC (“the ITC
`
`action”) alleging infringement of United States Patent Nos. 7,203,517; 8,982,086; 7,199,821;
`
`10,129,590; and 10,176,848 (collectively the “asserted patents”). On July 16, 2020, Maxell filed
`
`WEST\291675102.3
`
`IPR2021-00400
`Apple EX1008 Page 1
`
`
`
`Case 6:20-cv-00646-ADA Document 10 Filed 09/17/20 Page 2 of 4
`
`its complaint against Apple in this action, asserting the same five patents. The ITC instituted the
`
`ITC action on August 19, 2020 as Investigation No. 337-TA-1215. 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. 28 U.S.C. § 1659(a) provides:
`
`(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 –
`
`30 days after the party is named as a respondent in the proceeding
`before the Commission, or
`
`30 days after the district court action is filed, whichever is later.
`
`28 U.S.C. § 1659(a) (emphasis added). Here, because the same patents asserted in this action
`
`are also asserted against Apple in the ITC action, and because the parties and the accused
`
`products are also the same, a stay of this case is mandatory upon timely request by Apple. The
`
`Section 1659 mandatory stay applies where a request is made: (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. As such, Apple’s request is timely under
`
`§ 1659(a) because this request is being made within 30 days of the publication in the Federal
`
`Register of the ITC’s Notice of Institution of Investigation, which names Apple as a respondent
`
`in the ITC action. 85 Fed. Reg. 52153 (Aug. 24, 2020).
`
`WEST\291675102.3
`
`- 2 -
`
`IPR2021-00400
`Apple EX1008 Page 2
`
`
`
`Case 6:20-cv-00646-ADA Document 10 Filed 09/17/20 Page 3 of 4
`
`The Mandatory Stay Should Remain in Place Until All Appeals Of The ITC
`Action Are Exhausted.
`
`Under settled Federal Circuit law, a stay under Section 1659 must remain in effect during
`
`any appeals; that is, “until the Commission proceedings are no longer subject to judicial review.”
`
`In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007). Apple is not aware of any Federal
`
`Circuit authority to the contrary, nor has Maxell identified any despite Apple’s (unanswered)
`
`invitations to do so. But no excuse Maxell might provide in its opposition will alter the outcome
`
`on this well-settled issue. Indeed, this Court (consistent with other courts across the nation
`
`considering this issue) has recognized on multiple occasions that a mandatory stay pursuant to
`
`Section 1659 should remain in place until all appeals of the parallel ITC action are exhausted.
`
`See Globalfoundries U.S. Inc. v. Avnet, Inc., No. 6:19-cv-500, Order Granting Motion to Stay
`
`Case (W.D. Tex. Oct. 16, 2019); Globalfoundries U.S. Inc. v. Taiwan Semiconductor Mfg. Co.,
`
`No. 6:19-cv-499, Order Granting Motion to Stay Case (W.D. Tex. Oct. 16, 2019); Neodron Ltd.
`
`v. Sony Corp., No. 6:20-cv-00122, Order Granting Motion to Stay Case (W.D. Tex. Apr. 6,
`
`2020).
`
`Conclusion
`
`For the foregoing reasons, Apple respectfully requests the Court enter the attached
`
`proposed order and stay all proceedings in this action until the ITC proceedings are no longer
`
`subject to judicial review, including all appeals from the ITC’s determination.
`
`Dated: September 17, 2020
`
`Respectfully submitted,
`
`/s/ John M. Guaragna
`
`WEST\291675102.3
`
`- 3 -
`
`IPR2021-00400
`Apple EX1008 Page 3
`
`
`
`Case 6:20-cv-00646-ADA Document 10 Filed 09/17/20 Page 4 of 4
`
`John M. Guaragna
`Texas Bar No 24043308
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Tel: 512.457.7125
`Fax: 512.457.7001
`john.guaragna@dlapiper.com
`
`ATTORNEY FOR DEFENDANT
`APPLE INC.
`
`CERTIFICATE OF CONFERENCE
`
`I hereby certify that the undersigned counsel for Defendant, Apple Inc. conferred with
`
`Plaintiffs’ counsel. Plaintiff has not opposed a stay generally, but has opposed language
`
`indicating the stay should remain in effect until all appeals are exhausted. On multiple occasions
`
`Apple requested that Maxell identify the authority it relied upon to support its position, but
`
`Maxell did not respond to Apple’s requests.
`
`/s/ John M. Guaragna
`John M. Guaragna
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 17th day of September 2020, I electronically filed the
`foregoing with the Clerk of Court using the CM/ECF system which will send notification of such
`filing via electronic mail to all counsel of record. Any other counsel of record will be served by
`first class U.S. mail.
`
`/s/ John M. Guaragna
`John M. Guaragna
`
`WEST\291675102.3
`
`- 4 -
`
`IPR2021-00400
`Apple EX1008 Page 4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
