`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`
`
`
`CIVIL ACTION NO. 2:22-CV-00440-JRG
`
`
`
`Plaintiff,
`
`
`
`
`v.
`
`INC.,
`ASUSTEK COMPUTER
`COMPUTER INTERNATIONAL,
`
`
`
`
`
`
`
`
`Defendants.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`ORDER
`
` ASUS
`
`
`
`
`
`
`
`
`
`Before the Court is the Unopposed Motion to Stay Action Pending ITC Determination (the
`
`“Motion”) filed by Defendants ASUSTeK Computer Inc. (“ASUSTeK Computer”) and ASUS
`
`Computer International (“ACI”) (collectively, “ASUS”). (Dkt. No. 12.) In the Motion, ASUS
`
`appears specially in the case to move to stay all proceedings in the above-captioned matter until
`
`the determination of the United States International Trade Commission (“ITC”) in a parallel
`
`proceeding becomes final. (Id. at 1.)1 The ITC instituted an investigation, In the Matter of Certain
`
`Location-Sharing Systems, Related Software Components Thereof, and Products Containing
`
`Same, Investigation No. 337-TA-1347 (U.S. Int’l Trade Comm’n) (hereinafter, “ITC Action”), on
`
`December 22, 2022. (Id.) Plaintiff AGIS Software Development LLC (“AGIS”) does not oppose
`
`the Motion. (Id.)
`
`
`
`Under 28 U.S.C. § 1659, a District Court “shall stay” parallel litigation “until the
`
`determination of
`
`the Commission becomes
`
`final”
`
`if certain conditions are met.
`
`
`1 “ASUS appears specially to make this motion because AGIS has not yet served process on ASUS.” (Dkt. No. 12 at
`3.)
`
`
`
`Case 2:22-cv-00440-JRG Document 13 Filed 01/18/23 Page 2 of 2 PageID #: 65
`
`28 U.S.C. § 1659(a). First, the civil action before the District Court must “involv[e] parties that
`
`are also parties to a proceeding before the [ITC].” (Id.) Second, the claims for which the stay is
`
`requested must “involve[] the same issues” as those before the ITC. (Id.) Third, the stay must be
`
`requested by a respondent before the ITC within thirty days of being named as a respondent before
`
`the ITC, or within thirty days of the District Court action being filed, whichever is later. (Id.)
`
`
`
`The Court finds that all three requirements for a statutory stay have been met. First, the
`
`ITC Action and the above-captioned matter involve the same parties because AGIS is the
`
`complainant in the ITC Action and ASUS is named as a respondent. (Id. at 1–2.) Second, all
`
`patents-in-suit—U.S. Patent Nos. 8,213,970, 9,445,251, 9,467,838, 9,749,829, and 9,820,123—
`
`are the subject of AGIS’s infringement allegations in the ITC Action. (Id. at 1.) Third, ASUS is a
`
`respondent in the ITC Action and has filed its Motion within thirty days of the ITC’s institution of
`
`an investigation. (Id. at 2–3.) The statutory requirements for a stay having been met, the Court
`
`finds that the Motion should be and hereby is GRANTED.
`
`
`
`Accordingly, pursuant to 28 U.S.C. § 1659, it is ORDERED that all action in the
`
`above-captioned matter is STAYED until further Order of this Court. It is further ORDERED that
`
`the parties file a joint notice in this case with attached supporting copies of any dispositive or
`
`partially dispositive action by the ITC.
`
`
`
`
`
`
`
`2
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 18th day of January, 2023.
`
`