Case 6:20-cv-00122-ADA Document 12 Filed 04/01/20 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`NEODRON LTD.,
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`v.
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`SONY CORPORATION,
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`Plaintiff,
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`Defendant.
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`Case No. 6:20-cv-00122-ADA
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`DEFENDANT SONY CORPORATION’S MOTION
`TO STAY ACTION PENDING ITC DETERMINATION
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`Defendant Sony Corporation (hereinafter “Sony”) appears 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 below-
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`referenced parallel proceeding becomes final, including any appeals. Counsel for Sony
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`contacted counsel for Plaintiff Neodron Ltd. (“Neodron”) on three occasions over the past three
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`days to determine Neodron’s position. Counsel for Neodron did not respond.
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`On February 14, 2020, Neodron filed the complaint in this action against Sony alleging
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`infringement of U.S. Patent Nos. 7,903,092 (the “’092 patent”) and 8,749,251 (the “’251
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`patent”). (Dkt. No. 1). On that same day, Neodron filed a complaint with the ITC under Section
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`337 of the Tariff Act of 1930, as amended, against Sony and several other respondents,
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`requesting that the ITC institute an investigation based on alleged patent infringement. (See Ex.
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`A, ITC Complaint, Public Version). Neodron’s ITC complaint alleges that Sony infringes the
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`same ’092 and ’251 patents. (See id. at ¶¶ 43-47, 152-157). On March 16, 2020, the ITC
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`Case 6:20-cv-00122-ADA Document 12 Filed 04/01/20 Page 2 of 6
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`instituted an investigation based on Neodron’s complaint, naming Sony as a respondent to the
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`proceeding. (See Ex. B, Notice of Institution of Inv. No. 337-TA-1193).
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`Pursuant to 28 U.S.C. § 1659, 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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`(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 –
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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.”
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`In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
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`Sony is both the defendant in this action and a respondent in the ITC investigation. The
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`claims asserted in this action involve the exact same issues as the claims in the ITC investigation.
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`Indeed, in both, Neodron asserts the same patents and alleges infringement of many of the same
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`patent claims. (See Dkt. No. 1 ¶¶ 13, 21; Ex. A ¶¶ 152, 155). This motion is timely under 28
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`U.S.C. § 1659(a)(1) because it was filed within 30 days after Sony was named as a respondent in
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`the ITC Investigation. A stay is, therefore, mandatory under § 1659(a).
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`For the foregoing reasons, Sony 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-1193
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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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`Case 6:20-cv-00122-ADA Document 12 Filed 04/01/20 Page 3 of 6
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`Sony appears specially to make this motion because Neodron has not yet served process
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`on Sony. Neodron’s purported Proof of Service (Dkt. No. 10) shows only that Neodron’s regular
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`process server served documents on Neodron’s international process server. Doing so does not
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`affect service on Sony, does not satisfy Federal Rule of Civil Procedure 4(h)(2) & (f)(1), does
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`not invoke the procedures of the Hague Convention on Convention on the Service Abroad of
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`Judicial and Extrajudicial Documents in Civil or Commercial Matters, and does not comply with
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`this Court’s order appointing the process server “to forward to the Central Authority in the
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`applicable country, any and all documents to be served in this case.” (Dkt. No. 9).
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`This service defect does not impact Sony’s right to a stay under 28 U.S.C. § 1659.
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`Polymer Tech. Sys., Inc. v. ACON Labs., Inc., No. 18-CV-00805-H-JLB, 2018 WL 3388123, at
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`*2 (S.D. Cal. July 11, 2018) (staying district court case pending ITC investigation despite request
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`to defer stay pending resolution of service dispute: “[U]nder section 1659(a), the Court is
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`required to stay all the claims in the action as to both defendants, and the Court does not have
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`discretion to delay its entry of a stay to allow the parties to resolve their dispute regarding service
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`as to [one of the two defendants]”).
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`Sony’s special appearance does not waive any of its objections and defenses to
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`Neodron’s complaint, including, but not limited to, any defenses based on lack of jurisdiction,
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`improper venue, insufficiency of process, and insufficiency of service of process. See, e.g.,
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`Mann v. Castiel, 681 F.3d 368, 374 (D.C. Cir. 2012) (holding that a motion to stay does not
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`waive an objection to the sufficiency of service of process); Lane v. XYZ Venture Partners,
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`L.L.C., 322 F. App’x 675, 678 (11th Cir. 2009) (holding that defendants “did not waive their
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`defense of lack of personal jurisdiction by moving to stay the proceedings”). Thus, Sony
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`expressly reserves all of its objections and defenses to Neodron’s complaint.
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`Case 6:20-cv-00122-ADA Document 12 Filed 04/01/20 Page 4 of 6
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`CONCLUSION
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`For all the foregoing reasons, Sony 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-1193
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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: April 1, 2020
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`/s/ Gerald B. Hrycyszyn
`Gerald B. Hrycyszyn
`Texas State Bar No. 24043734
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Telephone: 617.646.8000
`Fax: 617.646.8646
`ghrycyszyn@wolfgreenfield.com
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`Counsel for Defendant Sony Corporation
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that, pursuant to Local Court Rule CV-7(i), I contacted counsel for
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`Plaintiff Neodron Ltd. concerning the relief sought in this motion (1) on March 30, 2020 via
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`email sent to counsel of record, (2) on March 31, 2020 via email sent to counsel of record, and
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`(3) on April 1, 2002 by voice mail left with counsel Reza Mirzaie. Counsel for Plaintiff
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`Neodron Ltd. did not respond.
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`Dated: April 1, 2020
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`/s/ Gerald B. Hrycyszyn
`Gerald B. Hrycyszyn
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`Case 6:20-cv-00122-ADA Document 12 Filed 04/01/20 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this day, I caused the foregoing to be electronically filed with the
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`Clerk of the Court using CM/ECF, which will send notification of such filing to all CM/ECF
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`registered participants.
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`Dated: April 1, 2020
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`/s/ Gerald B. Hrycyszyn
`Gerald B. Hrycyszyn
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