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Case 6:21-cv-00547-ADA Document 16 Filed 07/29/21 Page 1 of 4
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`NEODRON LTD.,
`
`
`
`vs.
`
`STMICROELECTRONICS, INC., ET AL.
`
`
`
`
`
`
`Plaintiff,
`
` Defendants.
`
`CASE NO. 6:21-CV-00547-ADA
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANTS STMICROELECTRONICS, INC. AND STMICROELECTRONICS (NORTH AMERICA)
`HOLDING, INC.’S UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION
`
`Defendants STMicroelectronics, Inc. and STMicroelectronics (North America) Holding,
`
`Inc. (“ST”)1 respectfully move this Court pursuant to 28 U.S.C. § 1659 for a stay of all
`
`proceedings in the above-captioned case until the determination of the United States
`
`International Trade Commission (“ITC”) in a parallel proceeding becomes final. Plaintiff
`
`Neodron Ltd. (“Neodron” or “Plaintiff”) does not oppose this motion.
`
`On May 24, 2021, Neodron filed an ITC complaint against ST. Neodron’s ITC complaint
`
`alleges that ST infringes U.S. Patent No. 8,749,251 (“the ’251 Patent) and U.S. Patent No.
`
`8,432,173 (“the ’173 Patent”). On May 28, 2021, Neodron filed the complaint in this action (the
`
`“Neodron II case”) against ST alleging infringement of the same ’251 Patent at issue in the ITC
`
`proceeding. See ECF No. 1.2
`
`
`1 STMicroelectronics N.V. has not yet been served in this case and therefore is not properly
`before the Court and not subject to the Court’s jurisdiction.
`2 Neodron is also asserting the same ’173 Patent against ST in another action pending before this
`Court. See Neodron Ltd. v. STMicroelectronics, Inc. et al., Case No. 6:20–cv–560-ADA (W.D.
`Tex.) (the “Neodron I case”). Concurrently with the filing of this Motion, ST is filing an opposed
`motion in the Neodron I case requesting that the Court stay that action pending determination of
`the ITC proceeding.
`
`ST’s Unopposed Motion to Stay
`
`
`
`Page 1 of 4
`
`

`

`Case 6:21-cv-00547-ADA Document 16 Filed 07/29/21 Page 2 of 4
`
`
`
`On June 23, 2021, Neodron’s requested ITC investigation was instituted as Investigation
`
`No. 337-TA-1268.
`
`Pursuant to 28 U.S.C. § 1659, district court claims that involve the same issues as a
`
`parallel ITC proceeding are subject to a mandatory stay. Specifically, 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 –
`
`(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.
`
`28 U.S.C. § 1659(a). A stay issued under this statute remains in effect during any appeals and
`
`“until the Commission proceedings are no longer subject to judicial review.” In re Princo Corp.,
`
`478 F.3d 1345, 1355 (Fed. Cir. 2007).
`
`The claims asserted in this action involve the same issues as the claims in the ITC action,
`
`and the parties and products at issue are also the same. This motion is timely because this request
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`is being made within 30 days of the publication in the Federal Register of the ITC’s Notice of
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`Institution of Investigation, which names ST as a respondent in the ITC action. 86 Fed. Reg.
`
`34,277 (June 29, 2021). A stay is, therefore, mandatory under § 1659(a).
`
`For the foregoing reasons, ST 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-1268
`
`ST’s Unopposed Motion to Stay
`
`
`
`Page 2 of 4
`
`

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`Case 6:21-cv-00547-ADA Document 16 Filed 07/29/21 Page 3 of 4
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`
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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.
`
`
`
`
`
`ST’s Unopposed Motion to Stay
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`
`
`Page 3 of 4
`
`

`

`Case 6:21-cv-00547-ADA Document 16 Filed 07/29/21 Page 4 of 4
`
`
`
`Dated: July 29, 2021
`
`
`
`Respectfully submitted:
`
`By: /s/ Max Ciccarelli
`Bruce S. Sostek
` SBN 18855700
` Bruce.Sostek@tklaw.com
`Max Ciccarelli
` SBN 00787242
` Max.Ciccarelli@tklaw.com
`Justin S. Cohen
` SBN 24078356
` Justin.Cohen@tklaw.com
`Nadia E. Haghighatian
` SBN 24087652
` Nadia.Haghighatian@tklaw.com
`
`THOMPSON & KNIGHT LLP
` One Arts Plaza
` 1722 Routh St., Suite 1500
` Dallas, Texas 75201
` 214.969.1386
`
`Attorneys for Defendants
`STMICROELECTRONICS INC. and
`STMICROELECTRONICS (NORTH
`AMERICA) HOLDING, INC.
`
`
`CERTIFICATE OF CONFERENCE
`
`On June 4, 2021, counsel for ST (along with counsel for other defendants sued by Neodron)
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`conferred with counsel for Neodron by telephone concerning the relief sought in this Motion, and
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`was advised that Neodron does not oppose the requested relief.
`
`
`
`
`/s/ Max Ciccarelli
`Max Ciccarelli
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that on July 29, 2021, the foregoing document was served via ECF on counsel of
`
`record for Plaintiff.
`
`
`
`
`/s/ Max Ciccarelli
`Max Ciccarelli
`
`
`
`ST’s Unopposed Motion to Stay
`
`
`
`Page 4 of 4
`
`

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