Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 1 of 6 PageID #: 62
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff
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`v.
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`XIAOMI CORPORATION, XIAOMI H.K.
`LTD., XIAOMI COMMUNICATIONS CO.,
`LTD., AND XIAOMI INC.,
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`Defendants.
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`Case No. 2:22-cv-00450-JRG
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`DEMAND FOR A JURY TRIAL
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`DEFENDANTS’ UNOPPOSED MOTION FOR
`A MANDATORY STAY UNDER 28 U.S.C. § 1659
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`Defendants Xiaomi Corporation, Xiaomi H.K. Ltd., Xiaomi Communications Co., Ltd.,
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`and Xiaomi Inc. (collectively, “Xiaomi”) appear specially to move this Court to stay this case
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`under 28 U.S.C. § 1659, which requires a district court to stay proceedings in a case involving
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`the same parties as a concurrent U.S. International Trade Commission (“ITC”) investigation at
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`the timely request of a respondent.
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`Because Defendants’ request is timely and all other requirements are met, 28 U.S.C. §
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`1659(a) provides that this case “shall” be stayed until the ITC determination becomes final,
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`including during any appeals and until the Commission proceedings are no longer subject to
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`judicial review. See In re Princo, 478 F.3d 1345, 1355 (Fed. Cir. 2007) (granting a writ of
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`mandamus and directing a district court to stay proceedings pursuant to 28 U.S.C. § 1659(a) until
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`the ITC proceeding became final). A stay of the proceedings will minimize the time and effort
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff
`
`
`v.
`
`
`XIAOMI CORPORATION, XIAOMI H.K.
`LTD., XIAOMI COMMUNICATIONS CO.,
`LTD., AND XIAOMI INC.,
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`Defendants.
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`
`
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`Case No. 2:22-cv-00450-JRG
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`DEMAND FOR A JURY TRIAL
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`DEFENDANTS’ UNOPPOSED MOTION FOR
`A MANDATORY STAY UNDER 28 U.S.C. § 1659
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`Defendants Xiaomi Corporation, Xiaomi H.K. Ltd., Xiaomi Communications Co., Ltd.,
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`and Xiaomi Inc. (collectively, “Xiaomi”) appear specially to move this Court to stay this case
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`under 28 U.S.C. § 1659, which requires a district court to stay proceedings in a case involving
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`the same parties as a concurrent U.S. International Trade Commission (“ITC”) investigation at
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`the timely request of a respondent.
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`Because Defendants’ request is timely and all other requirements are met, 28 U.S.C. §
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`1659(a) provides that this case “shall” be stayed until the ITC determination becomes final,
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`including during any appeals and until the Commission proceedings are no longer subject to
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`judicial review. See In re Princo, 478 F.3d 1345, 1355 (Fed. Cir. 2007) (granting a writ of
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`mandamus and directing a district court to stay proceedings pursuant to 28 U.S.C. § 1659(a) until
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`the ITC proceeding became final). A stay of the proceedings will minimize the time and effort
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`Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 2 of 6 PageID #: 63
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`required for the Court and the litigants to resolve the dispute. Moreover, a stay is warranted
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`given Plaintiff’s non-opposition to the request.
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`I.
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`STATEMENT OF FACTS
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`This action was filed on November 18, 2022, alleging infringement of U.S. Patent Nos.
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`8,213,970 (the “’970 Patent”), 9,445,251 (the “’251 Patent”), 9,467,838 (the “’838 Patent”),
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`9,749,829 (the “’829 Patent”), and 9,820,123 (the “’123 Patent”) (collectively, “the Asserted
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`Patents”). Dkt. No. 1. Two days prior, on November 16, 2022, AGIS Software Development
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`LLC (“AGIS”) and Advanced Ground Information Systems, Inc. filed a Complaint under Section
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`337 of The Tariff Act of 1930, as amended, in the ITC, requesting that the ITC institute an
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`investigation under Section 337 against Xiaomi and other respondents. See Declaration of Sid V.
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`Pandit (“Pandit Decl.”), Ex. A (“ITC Compl.”). On December 22, 2022, an ITC investigation
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`was instituted titled In the Matter of Certain Location-Sharing Systems, Related Software,
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`Components Thereof, and Products Containing Same, Inv. No. 337-TA-1347. Pandit Decl., Ex.
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`B. The ITC Investigation names, among others, Defendants as respondents and asserts that
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`Defendants infringe the same Asserted Patents.
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`II.
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`LEGAL STANDARD
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`Under Section 1659 of Title 28, upon the request of any party to a civil action who is also
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`a respondent in an ITC investigation involving the parties, the Court “shall stay, until the
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`determination of the Commission becomes final, proceedings in the civil action with respect to
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`any claim that involves the same issues involved in the proceeding before the Commission.” 28
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`U.S.C. § 1659(a). This stay is mandatory and must be granted if made within thirty days from the
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`later of: (1) the party being named a respondent in a proceeding before the ITC, or (2) the filing of
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`the district court action. 28 U.S.C. § 1659(a)(1)-(2); see also In re Princo at 1355 (Fed. Cir. 2007).
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`2
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`Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 3 of 6 PageID #: 64
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`A stay issued under this statute must remain in effect during any appeal(s) and must continue “until
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`the Commission proceedings are no longer subject to judicial review.” Id.
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`III. A STAY OF ALL PROCEEDINGS IN THIS COURT IS MANDATORY AND
`UNOPPOSED
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`Defendants’ motion for a stay satisfies § 1659(a)’s requirements for a mandatory stay.
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`First, the parties in the instant action are the same parties in the ITC Investigation: AGIS
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`Software and Development LLC, the plaintiff here, is a Complainant in the ITC Investigation.
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`Xiaomi Corporation, Xiaomi H.K. Ltd., Xiaomi Communications Co., Ltd., and Xiaomi Inc., the
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`defendants here, are respondents in the ITC Investigation. See 28 U.S.C. § 1659(a) (“at the
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`request of a party to the civil action that is also a respondent in the proceeding before the
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`Commission, the district court shall stay”).
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`Second, the claims in this action involve the same issues involved in the ITC
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`Investigation. In both the Complaint here and the ITC Complaint, AGIS alleges that Defendants
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`infringe the Asserted Patents, and the allegations of infringement are the same. Compare Compl.
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`¶¶ 10-15, 19-85 with ITC Compl. ¶¶ 59, 139-141, 215-220. The claims in both this action and the
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`ITC Investigation encompass the same issues relating to the Asserted Patents, including
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`infringement, validity, and enforceability, as well as the same defenses that Defendants might
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`raise in the two proceedings. See 28 U.S.C. § 1659(a) (“the district court shall stay . . .
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`proceedings in the civil action with respect to any claim that involves the same issues involved in
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`the proceeding before the Commission”).
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`Finally, Defendants’ request is timely. This motion is timely under 28 U.S.C. §
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`1659(a)(1) because it was filed within 30 days after Defendants were named as respondents in
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`the ITC Investigation pursuant to the Commission’s December 22, 2022 notice of institution.
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`3
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`Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 4 of 6 PageID #: 65
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`See, e.g., Evolved Wireless, LLC v. Samsung Elecs. Co., No. 21-033, 2021 WL 7161368, at *1
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`(E.D. Tex. Mar. 10, 2021) (deadline for filing motion to stay occurs thirty days after ITC’s notice
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`of institution). A stay is, therefore, mandatory under § 1659(a).
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`For the foregoing reasons, Xiaomi respectfully requests that the Court enter the attached
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`proposed order staying all proceedings in this action until the determination of the 337-TA-1347
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`Investigation becomes final, including any appeals and until the ITC proceedings are no longer
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`subject to judicial review.
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`Xiaomi appears specially to make this motion because AGIS has not yet served process on
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`Xiaomi.
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`Xiaomi’s special appearance does not waive any of its objections and defenses to AGIS’s
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`Complaint, including, but not limited to, any defenses based on lack of jurisdiction, improper
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`venue, inconvenient venue, insufficiency of process, and insufficiency of service of process and
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`does not waive Xiaomi’s rights to seek appropriate relief, including dismissal of the Complaint or
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`venue transfer. See, e.g., Mann v. Castiel, 681 F.3d 368, 374 (D.C. Cir. 2012) (holding that a
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`motion to stay does not waive an objection to sufficiency of service of process); Lane v. XYZ
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`Venture Partners, L.L.C., 322 F. App’x 675, 678 (11th Cir. 2009) (holding that defendants “did
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`not waive their defense of lack of personal jurisdiction by moving to stay the proceedings”). Thus,
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`Xiaomi expressly reserves all objections, defenses, and rights in response to AGIS’s Complaint
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`allegations. Requesting a stay at this juncture without resolution of such objections and defenses
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`will conserve judicial resources consistent with FRCP 1.
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`IV. CONCLUSION
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`For the foregoing reasons, Defendants respectfully request that the Court stay this action
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`4
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`Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 5 of 6 PageID #: 66
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`under 28 U.S.C. § 1659(a) until the determination of the 337-TA-1347 Investigation becomes
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`final, including any appeals, and until the Commission proceedings are no longer subject to
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`judicial review.
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`DATED: JANUARY 11, 2023
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` /s/ Sid V. Pandit
`Timothy J. Maier (pro hac vice to be submitted)
`tjm@maierandmaier.com
`Siddhesh V. Pandit
`VA Bar # 75,686 (Lead Attorney - admitted to
`practice in the EDTX)
`svp@maierandmaier.com
`MAIER & MAIER, PLLC
`345 South Patrick Street
`Alexandria, VA 22314
`Tel: (703) 740-8322
`Fax: (703) 991-7071
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`Attorneys for Defendants Xiaomi Corporation,
`Xiaomi H.K. Ltd., Xiaomi Communications Co.,
`Ltd., and Xiaomi Inc.
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`5
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`Case 2:22-cv-00450-JRG Document 11 Filed 01/11/23 Page 6 of 6 PageID #: 67
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`CERTIFICATE OF SERVICE
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`The undersigned attorney certifies that on January 11, 2023, he caused the foregoing
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`document to be electronically filed with the Clerk of the U.S. District Court, using the Court’s
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`CM/ECF system, which will send electronic notification to all parties who have appeared and are
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`registered as CM/ECF participants in this matter. Parties may access this filing through the
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`Court’s CM/ECF system.
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` /s/ Sid V. Pandit
`Siddhesh V. Pandit
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`CERTIFICATE OF CONFERENCE
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`The undersigned attorney certifies that counsel for Defendants met and conferred with
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`counsel for Plaintiffs. Counsel for Plaintiffs indicated that it is unopposed to this motion.
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` /s/ Sid V. Pandit
`Siddhesh V. Pandit
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