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`Case 4:23-cv-00573-ALM Document 4 Filed 08/04/23 Page 1 of 5 PageID #: 250
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`BELL NORTHERN RESEARCH, LLC,
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`Plaintiff,
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`v.
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`Case No. 4:23-cv-00573
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`ASUSTEK COMPUTER INC. and ASUS
`COMPUTER INTERNATIONAL,
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`Defendants.
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`DEFENDANTS’ UNOPPOSED MOTION TO STAY ACTION PENDING ITC
`DETERMINATION
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`Defendants ASUSTeK Computer Inc. (“ASUSTeK Computer”) and ASUS Computer
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`International (“ACI”) (collectively, “ASUS” or “Defendants”) appear specially to move this Court
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`pursuant to 28 U.S.C. § 1659 to stay all proceedings in the above-captioned case until the
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`determination of the United States International Trade Commission (“ITC”) in the parallel
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`proceeding titled In the Matter of Certain Electronic Devices and Semiconductor Devices Having
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`Wireless Communication Capabilities and Components Thereof, Investigation No. 337-TA-1367
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`becomes final, including during any appeals and until the Commission proceedings are no longer
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`subject to judicial review. Counsel for the ASUS Defendants contacted counsel for Plaintiff Bell
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`Northern Research, LLC (“BNR”), who indicated that BNR did not oppose the stay request.
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`On June 20, 2023, BNR filed the Complaint in this action against ASUS alleging
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`infringement of U.S. Patent Nos. RE 48,629 (the “’629 patent”), 8,416,862 (the “’862 patent”),
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`7,564,914 (the “’914 patent”), patent”). (Dkt. No. 1). On June 21, 2023, BNR filed a complaint
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`with the ITC under Section 337 of the Tariff Act of 1930, as amended, against ASUS and several
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`other respondents, requesting that the ITC institute an investigation based on alleged infringement
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`Case 4:23-cv-00573-ALM Document 4 Filed 08/04/23 Page 2 of 5 PageID #: 251
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`of the same three patents. (See Ex. A, ITC Complaint, Public Version). BNR’s ITC complaint
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`alleges that ASUS infringes the same ’629, ’862, and ’914 patents. (See id. at ¶¶ 48-57, 85-94).
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`On July 21, 2023, the ITC instituted an investigation based on BNR’s complaint, naming ASUS
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`Defendants as among the respondents to the proceeding titled In the Matter of Certain Electronic
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`Devices and Semiconductor Devices Having Wireless Communication Capabilities and
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`Components Thereof, Investigation No. 337-TA-1367 (See Ex. B, Notice of Institution of Inv. No.
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`337-TA-1367).
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`Pursuant to 28 U.S.C. § 1659(a), District Court claims that involve the same issues as a
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`parallel ITC proceeding are subject to a mandatory stay. Specifically, the statute provides:
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`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 –
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`(1) 30 days after the party is named as a respondent in the proceeding before
`the Commission, or
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`(2) 30 days after the district court action is filed, whichever is later.
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`28 U.S.C. § 1659(a). A stay issued under this statute must remain in effect during any appeal(s)
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`and must continue “until the Commission proceedings are no longer subject to judicial review.” In
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`re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
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`The requirements of 28 U.S.C. § 1659 are satisfied here. The ASUS Defendants “are also
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`parties to a proceeding before the United States International Trade Commission under section
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`337” because they are respondents in the ITC investigation. The claims asserted in this action also
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`involve the same issues as the claims in the ITC investigation. Indeed, in both, BNR asserts the
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`Case 4:23-cv-00573-ALM Document 4 Filed 08/04/23 Page 3 of 5 PageID #: 252
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`same patents and alleges infringement of many of the same patent claims. (See Dkt. No. 1 ¶¶ 20-
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`43, 45-97; Ex. A ¶¶ 48-57, 85-94). This motion is timely under 28 U.S.C. § 1659(a)(1) because it
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`was filed within 30 days after the ASUS Defendants were named as respondents in the ITC
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`Investigation pursuant to the Commission’s July 21, 2023, notice of institution. See, e.g., Evolved
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`Wireless, LLC v. Samsung Elecs. Co., No. 21-033, 2021 WL 7161368, at *1 (E.D. Tex. Mar. 10,
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`2021) (deadline for filing motion to stay occurs thirty days after ITC’s notice of institution). A stay
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`is, therefore, mandatory under § 1659(a).
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`For the foregoing reasons, ASUS 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-1367
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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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`ASUS appears specially to make this motion because BNR has not yet served process on
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`ASUS.
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`ASUS’s special appearance does not waive any of its objections and defenses to BNR’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 ASUS’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, 373-74 (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 not
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`waive their defense of lack of personal jurisdiction by moving to stay the proceedings”). Thus,
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`ASUS expressly reserves all objections, defenses, and rights in response to BNR’s Complaint
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`Case 4:23-cv-00573-ALM Document 4 Filed 08/04/23 Page 4 of 5 PageID #: 253
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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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`CONCLUSION
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`For all the foregoing reasons, ASUS 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-1367
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`Investigation becomes final, including any appeals, and until the Commission proceedings are no
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`longer subject to judicial review.
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`Date: August 4, 2023
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`By: /s/ Michelle L. Marriot
`Eric A. Buresh
`eric.buresh@eriseip.com
`Chris R. Schmidt (pro hac vice forthcoming)
`chris.schmidt@eriseip.com
`Michelle L. Marriott
`michelle.marriott@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd., Ste 700
`Overland Park, KS 66211
`Phone: (913) 777-5600
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`Counsel for ASUSTeK Computer Inc. and ASUS
`Computer International.
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`Case 4:23-cv-00573-ALM Document 4 Filed 08/04/23 Page 5 of 5 PageID #: 254
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`CERTIFICATE OF CONFERENCE
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`The undersigned counsel hereby certifies that, pursuant to Local Court Rule CV-7(i), he
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`conferred with counsel for Plaintiff Bell Northern Research LLC who confirmed that Plaintiff is
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`unopposed to the relief requested herein.
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`/s/ Chris R. Schmidt
`Chris R. Schmidt
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on August 4, 2023, all counsel of record who have appeared in this case are being served with
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`a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Chris R. Schmidt
`Chris R. Schmidt
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