Case 6:20-cv-00116-ADA Document 10 Filed 03/30/20 Page 1 of 3
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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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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`CASE NO. 6:20-CV-00116-ADA
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`UNOPPOSED MOTION TO STAY ACTION PENDING ITC DETERMINATION
`Defendant Apple Inc. (“Apple”) respectfully moves this Court pursuant to 28 U.S.C. §
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`1659 and its inherent powers to control its docket for a stay of all proceedings in the above-
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`captioned case until the determination of the United States International Trade Commission
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`(“ITC”) in a parallel proceeding becomes final.
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`On February 14, 2020, Neodron Ltd. (“Neodron”) filed a complaint against Apple, and
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`other proposed Respondents, with the ITC (“the ITC action”) alleging infringement of United
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`States Patent Nos. 7,821,425 (“’425 patent”); 7,903,092 (“’092 patent”); 8,749,251 (“’251
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`patent”); and 9,411,472 (“’472 patent”) (collectively, “the patents-in-suit”). On the same day
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`Neodron Ltd. filed its complaint against Apple in this action (“the Texas action”) asserting the
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`patents-in-suit. The ITC instituted the investigation on March 16, 2020, as Investigation No.
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`337-TA-1193. Pursuant to 28 U.S.C. § 1659, district court patent claims that involve the same
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`issues as a parallel ITC proceeding are subject to a mandatory stay. Specifically, 28 U.S.C. §
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`1659(a) provides:
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`Case 6:20-cv-00116-ADA Document 10 Filed 03/30/20 Page 2 of 3
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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 remains in effect during any appeals and
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`“until the Commission proceedings are no longer subject to judicial review.” In re Princo
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`Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007). Here, because the same patents asserted in this
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`action are also asserted against Apple in the ITC action, and because the parties and the
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`accused products are also the same, a stay of this case is mandatory upon timely request by
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`Apple. The mandatory stay of Section 1659 applies where a request is made: (1) 30 days after
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`the party is named as a respondent in the proceeding before the Commission; or (2) 30 days
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`after the district court action is filed, whichever is later. As such, Apple’s request is timely
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`under § 1659(a) because this request is being made within 30 days of the publication in the
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`Federal Register, ITC’s Notice of Institution of Investigation, which names Apple as a
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`respondent in the ITC action. 84 Fed. Reg. 29545 (March 20, 2020).
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`For the foregoing reasons, Apple respectfully requests that the Court enter the attached
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`proposed order and stay all proceedings in the Texas action until the determination of the ITC
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`action 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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`Case 6:20-cv-00116-ADA Document 10 Filed 03/30/20 Page 3 of 3
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`Dated: March 30, 2020
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`Respectfully submitted,
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`/s/ John M. Guaragna
`John M. Guaragna
`Texas Bar No 24043308
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Tel: 512.457.7125
`Fax: 512.457.7001
`john.guaragna@dlapiper.com
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`ATTORNEY FOR DEFENDANT
`APPLE INC.
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that the undersigned counsel for Defendant, Apple Inc. conferred with
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`Plaintiffs’ counsel. Plaintiff has agreed to Defendant’s request sought in this motion.
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`/s/ John M. Guaragna
`John M. Guaragna
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 30th day of March 2020, I electronically filed the foregoing
`with the Clerk of Court using the CM/ECF system which will send notification of such filing via
`electronic mail to all counsel of record. Any other counsel of record will be served by first class
`U.S. mail.
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`/s/ John M. Guaragna
`John M. Guaragna
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