Free MEMORANDUM in Support - District Court of Delaware - Delaware

Case 1 :07-cv-00165-JJF Document 16 Filed 05/19/2007 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
INTERDIGITAL COMMUNICATIONS CORP., )
and INTERDIGITAL TECHNOLOGY CORP., )
)
Plaintiffs, ) Civil Action No. 07-165-JFF
)
v. g
SAMSUNG ELECTRONICS CO., LTD. )
SAMSUNG ELECTRONICS AMERICA., INC. )
and SAMSUNG TELECOMMUNICATIONS )
AMERICA LLC, )
)
Defendants. )
MEMORANDUM IN SUPPORT OF
DEFENDANTS’ MOTION, AS RESPONDENTS IN AN ITC INVESTIGATION
INVOLVING THE SAME PATENTS AND PARTIES HEREIN, TO INVOKE
THE MANDATORY STAY OF THIS DISTRICT COURT ACTION PROVIDED
UNDER 28 U.S.C. § 1659, PENDING FINAL DETERMINATION IN THE ITC
Pursuant to 28 U.S.C. § 1659, defendants Samsung Electronics Co.,
Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America
LLC (collectively "Samsung") state as follows in support of their Motion to Stay this
Action:
BACKGROUND
° Plaintiffs InterDigital Communications Corporation and InterDigital
Technology Corporation (collectively "Ir1terDi gital") have filed complaints with the
United States Intemational Trade Commission (the "ITC") and this Court that involve the
same patents and the same parties.
On March 23, 2007, InterDigital filed a Complaint in this action against
Samsung. The Complaint alleges infringement by Samsung of U.S. Patent Nos.

Case 1 :07-cv-00165-JJF I Document 16 Filed 05/19/2007 Page 2 of 4
7,117,004 ("the ’004 Patent") 6,674,791 ("the ’79l Patent") and 6,973,579 ("the ’579
Patent"). On May 7, 2007, InterDigital filed a First Amended Complaint, which
additionally alleges infringement of U.S. Patent No. 7,190,966 ("the ’966 Patent").
On March 23, 2007, InterDigital tiled a Complaint in the ITC under
Section 337 ofthe Tariff Act of 1930, as amended, 19 U.S.C. § 337. Like its allegations
in this action, InterDigital’s ITC Complaint alleges that Samsung has inhinged the ’004,
’791 and ’579 Patents. See Exhibit A (InterDigital’s ITC Complaint, without exhibits).
On April 20, 2007, the ITC instituted Investigation No. 337-TA-601 ("the ITC
Investigation"), naming the same Samsung entities in this action as formal Respondents
in the ITC Investigation. The ITC Investigation was officially instituted on April 27,
2007, by publication in the Federal Register. See Exhibit B (Notice of Investigation as
Printed in the Federal Register).
In parallel with the filing of InterDigital’s First Amended Complaint in
this action, Ir1terDigital moved to amend their Complaint in the ITC Investigation to
include allegations of infringement of the ’966 Patent. That motion remains pending as
of the date set forth below.
Accordingly, pursuant to 28 U.S.C. § l659(a), Samsung invokes its right
to a stay of this action in its entirety until the date that the determination of the ITC
becomes final.
ARGUMENT
This Motion is brought pursuant to 28 U.S.C. §l659(a), which sets forth
the following:
(a) Stay. — In a civil action involving parties that are also parties to a
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proceeding before the [ITC] 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 [ITC], the district court shall stay, until the
determination of the [ITC] becomes final, proceedings in the civil action
with respect to any claim that involves the same issues involved in the
proceeding before the [ITC], but only if such request is made within —
(1) 30 days after the party is named as a respondent in the
proceeding before the [ITC], or
(2) 30 days after the district court action is filed,
Whichever is later.
28 U.S.C. § l659(a). See e.g., Proxim Inc. v. 3COM Corp. et al., 2003 WL 403348, *1
(D. Del. Feb. 21, 2003) (noting that "[g]iven the fact that [defendant] was also a
respondent in an action brought before the ITC by plaintiff related to the same
teclmologies, the court was required to stay this action pursuant to 28 U.S.C. § l659");
Universal Tool and Stamping Co. v. Ventra Group, No. 1:97-CV-418, 46 U.S.P.Q. 2d
1799, 1998 WL 303298, *1 (N .D. Ind. J an. 20, 1998) ("[A] stay must (the statute says
‘shall’) be entered since there is no dispute that the claims here and those before the
[ITC] involve the same issues.").1
The patent intiingement alleged in the present action by InterDigital
against Samsimg is the same as that alleged in the ITC Investigation. See Exhibit A.
Samsung was named as a respondent in the ITC investigation on April 27, 2007. Thus,
Samsung hereby requests, in a timely manner under the statute, a stay of this action by
filing this Motion within the 30-day period required by the statute. Where, as here,
Samsung files a timely request pursuant to 28 U.S.C. § l659(a), the Court "shall stay" the
1 In addition to the statutory mandate requiring a timely requested stay of a civil action
that raises the same issues as pending ITC proceedings, district courts have "inherent
authority to stay proceedings before them." See Rohan ex. rel. Gates v. Woodford, 334
F.3d 803, 817 (9th Cir. 2003).
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Case 1:07-cv-00165-JJF Document 16 Filed 05/19/2007 Page 4 of 4
civil action until the date that "the determination of the [ITC] becomes tina1."
Accordingly, Samsung respectfully requests that this Court enter an Order staying this
action in its entirety pursuant to 28 U.S.C. § 1659(a).
CONCLUSION
Samsung respectfully requests that this Court stay the present action until
the date that the determination of the ITC becomes final.
ASHBY & GEDDES
/s/ John G. Day
Steven J. Balick (I.D. #2114)
J olm G. Day (I.D. #2403)
Lauren E. Maguire (I.D. #4261)
500 Delaware Avenue, 8th Floor
P.O. Box 1150
Wilmington, Delaware 19899
(302) 654-1888
(302) 654-2067 (Fax)
sbalick@ashby-geddescom
jday@ashby- geddescom
lmaguire@ashby—geddescom
Attorneysfar Defendants
Of Counsel:
David Healey
Weil, Gotshal & Manges LLP
700 Louisiana Street
Suite 1600
Houston, Texas 77002
(713) 446-5000
_ (713) 224-9511 (Fax)
Dated: May 19, 2007
180678.1
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