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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 1 of 6
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`
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`KIRKLAND & ELLIS LLP
`Lien Dang (SBN 254221)
`3330 Hillview Avenue
`Palo Alto, CA 94304
`Telephone: (650) 859-7016
`Facsimile: (650) 859-7500
`lien.dang@kirkland.com
`
` Attorneys for Plaintiffs SAMSUNG SEMICONDUCTOR, INC.,
` SAMSUNG ELECTRONICS CO. LTD., and
` SAMSUNG ELECTRONICS AMERICA, INC.
`
`DAVID BOHRER (SBN 212397) (dbohrer@greenfieldlaw.com)
`GREENFIELD DRAA & HARRINGTON LLP
`55 South Market Street, Suite 1500
`San Jose, California 95113
`Telephone: (408) 995-5600
`Facsimile: (408) 995-0308
`
`Attorneys for Defendants BiTMICRO, LLC
`and BiTMICRO Networks, Inc.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`Case No. 3:18-cv-3502 EMC
`
`
`
`
`STIPULATION AND [PROPOSED] ORDER
`TO STAY CASE PENDING ITC
`INVESTIGATION
`
`
`
`
`
`SAMSUNG SEMICONDUCTOR, INC.,
`SAMSUNG ELECTRONICS CO. LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
` Plaintiffs,
`
`vs.
`
`BiTMICRO, LLC and BiTMICRO
`NETWORKS, INC.,
`
`
`
`
` Defendants.
`
`
`Pursuant to Civil Local Rule 7-12, Plaintiffs Samsung Semiconductor, Inc., Samsung
`
`Electronics Co., Ltd., And Samsung Electronics America, Inc.’s (collectively, “Samsung”), and
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`Defendants BiTMICRO, LLC (“BiTMICRO”) and BiTMICRO Networks, Inc. (“BNI”), by and
`
`through their undersigned counsel, hereby submit the following stipulation and proposed order:
`
`-1-
`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`

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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 2 of 6
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`WHEREAS, on December 21, 2017, BiTMICRO filed a Complaint under 19 U.S.C. § 1337
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`at the ITC (Certain Solid State Storage Devices, Stacked Electronics, and Products Containing the
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`Same, Inv. No. 337-TA-1097) against SK hynix, Inc. and SK hynix America, Inc. (collectively “SK
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`hynix”) and Samsung, among others, alleging unlawful importation into the United States, sale for
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`importation into the United States, or sale within the United States after importation, of certain solid
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`state storage drives and stacked electronics components, and products containing them, by way of
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`alleged infringement of U.S. Patent Nos. 6,529,416 (the “’416 patent”), 7,826,243 (the “’243
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`patent”), 8,093,103 (the “’103 patent”), and 9,135,190 (the “’190 patent”);
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`WHEREAS, on January 19, 2018, the ITC instituted the investigation;
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`WHEREAS, on May 11, 2018, the ITC issued an Initial Determination concluding that
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`BiTMICRO had satisfied the economic prong of the domestic industry requirement with respect to
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`the ’416, ’103, and ’243 patents, but terminated the ’190 patent from the investigation,
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`WHEREAS, on June 12, 2018, Samsung and SK hynix each filed a Complaint seeking a
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`Declaratory Judgement of Non-Infringement of each of the ’416, ’103, ’243, and ’190 patents, with
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`the Samsung action numbered 3:18-cv-3502 and currently assigned to Judge Chen in the San
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`Francisco division and the SK hynix action number 4:18-cv-3505 and currently assigned to Judge
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`Gilliam in the Oakland division;
`
`WHEREAS, on June 20, 2018, the ITC issued a Decision affirming the Initial Determination,
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`with certain modifications that do not impact this stipulation;
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`WHEREAS, the ITC set a target date of September 13, 2019 for completion of the
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`investigation;
`
`WHEREAS, 28 U.S.C. § 1659(a) states that, at the request of a party to a civil action that is
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`also a respondent to a proceeding before the ITC, a district court shall stay, until the determination of
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`the ITC becomes final, proceedings in a civil action with respect to any claim that involves the same
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`issues involved before the ITC if such request is made within the later of 30 days after the party is
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`named as a respondent in a proceeding before the ITC or 30 days after the district court action is filed;
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`WHEREAS, § 1659(a) requires a stay of district court proceedings until the ITC proceedings
`
`involving the same issues are no longer subject to judicial review. See In re Princo Corp., 478 F.3d
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`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 3 of 6
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`
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`1345, 1355 (Fed. Cir. 2007); FormFactor, Inc. v. Micronics Japan Co., Case No. CV-06-07159, 2008
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`WL 361128 (N.D. Cal. Feb. 11, 2008) (In circumstances where 28 U.S.C. § 1659 applies, “a court
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`must stay a civil action in favor of ITC proceedings.”); Micron Tech., Inc. v. Mosel Vitelic Corp.,
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`Case No. CIV-98-0293, 1999 WL 458168, *2 (D. Idaho Mar. 31, 1999) (“[T]he Court is statutorily
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`required to stay” those claims that are also before the ITC where the ITC respondent timely moved to
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`stay the district court action.); Universal Tool & Stamping Co. v. Ventra Group, Inc., 46 U.S.P.Q.2d
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`1799, 1800 (N.D. Ind. 1998) (stating that “such a stay (again in the words of the statute) shall be of
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`the ‘proceedings in the civil action’ and hence the Court will not fashion an exemption to the stay by
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`requiring the defendant to file an answer or make any order relating to discovery”).
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`WHEREAS, the alleged infringement by Samsung and SK hynix of the ’416, ’103, and ’243
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`patents raises the “same issues” before the ITC, and July 12, 2018 is the 30th day after the Complaints
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`were filed;
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`WHEREAS, the allegations in the Complaints relating to the ’190 patent arguably raise the
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`“same issues” presented by the allegations on the other three patents. The parties, the technology,
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`and much of the fact discovery will overlap among the patents. For this reason, the Court arguably
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`has the authority to stay the entire Action under the mandatory stay provision of 28 U.S.C. § 1659,
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`and at minimum, has the authority to grant a discretionary stay based on factors of judicial
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`efficiency given the same parties, same overlapping technology, and overlapping discovery with the
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`other patents.
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`WHEREAS, Samsung, BiTMICRO and BNI agree that staying this case as to all patents will
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`conserve judicial and party resources;
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`WHEREAS, Samsung, BiTMICRO and BNI, as part of their discussions on whether and
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`how to stay this case, have agreed that Samsung will dismiss BNI without prejudice, BiTMICRO
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`will agree to discovery directed to BNI as discussed more specifically below, BiTMICRO will not
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`contest jurisdiction and venue in this action, Samsung will file a Notice of Pendency of Other
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`Action Involving Same Patent(s) pursuant to Local Patent Rule 2-1(a)(2) (thus providing basis for
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`the Clerk to reassign and relate the Samsung and SK hynix actions pursuant to Local Patent Rule 2-
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`-3-
`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 4 of 6
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`
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`1(a)(3)), and that BiTMICRO will file an answer, affirmative defenses and counterclaims before the
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`stay is entered;
`
`WHEREAS, SK hynix, BiTMICRO and BNI have reached the same agreement and are
`
`filing the same stipulation and proposed order in the SK hynix action;
`
`NOW, THEREFORE, Samsung, BiTMICRO and BNI respectfully request:
`1.
`
`That BNI be dismissed from this case, without prejudice. For the purposes of
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`discovery in these cases, upon entry of this order dismissing BNI, information,
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`witnesses, and documents in the possession, custody, or control of BNI shall be
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`deemed in the possession, custody, or control of BiTMICRO, but only to the extent
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`they may be relevant to this litigation and to the extent that Samsung or SK hynix
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`issues a request for them to BiTMICRO.
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`2.
`
`3.
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`That BiTMICRO will file an answer, affirmative defenses and any counterclaims
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`within 14 days of the entry of this proposed order by the Court.
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`That Samsung shall file Notice of Pendency of Other Action Involving Same
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`Patent(s) pursuant to Local Patent Rule 2-1(a) (2) within 14 days of this proposed
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`order by the Court.
`
`4.
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`That BiTMICRO agrees that it does not contest jurisdiction or venue in the Northern
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`District of California for this case. BiTMICRO’s agreement is for these cases only to
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`facilitate the stipulated stay, and does not constitute an admission that jurisdiction or
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`venue would be proper in the Northern District of California in any other matter.
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`5.
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`That, following BiTMICRO’s filing of an answer, affirmative defenses and any
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`counterclaims, these cases shall be stayed until the determination of the ITC in
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`Investigation No. 337-TA-1097 becomes final, including all appeals.
`
`
`
`IT IS SO STIPULATED.
`Dated: July 12, 2018
`
`
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`GREENFIELD DRAA & HARRINGTON LLP
`
`
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`
`
`By: /s/ David C. Bohrer
`
`DAVID C. BOHRER
`-4-
`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 5 of 6
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`Attorneys for Defendants
`BiTMICRO LLC and BiTMICRO NETWORKS, INC.
`
`
`
` KIRKLAND & ELLIS LLP
`
`/s/ F. Christopher Mizzo (pro hac vice pending)
`Paul F. Brinkman, P.C. (pro hac vice to be filed)
`Edward C. Donovan, P.C. (pro hac vice to be filed)
`F. Christopher Mizzo, P.C. (pro hac vice to be filed)
`Nathan S. Mammen (pro hac vice to be filed)
`Craig T. Murray (pro hac vice to be filed)
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 879-5000
`Facsimile: (202) 829-5200
`paul.brinkman@kirkland.com
`edonovan@kirkland.com
`chris.mizzo@kirkland.com
`nmammen@kirkland.com
`craig.murray@kirkland.com
`
`KIRKLAND & ELLIS LLP
`Gregory S. Arovas (pro hac vice pending)
`601 Lexington Avenue
`New York, NY 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`greg.arovas@kirkland.com
`
`KIRKLAND & ELLIS LLP
`Lien Dang (SBN 254221)
`3330 Hillview Avenue
`Palo Alto, CA 94304
`Telephone: (650) 859-7016
`Facsimile: (650) 859-7500
`lien.dang@kirkland.com
`
`Attorneys for Plaintiffs
`
`
`
`
`
`
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`
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`Dated: July 12, 2018
`
`
`[Order on next page]
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`
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`-5-
`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`

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`Case 3:18-cv-03502-EMC Document 19 Filed 07/13/18 Page 6 of 6
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`PURSUANT TO STIPULATION, IT IS SO ORDERED.
`1.
`2.
`
`BNI is dismissed from this case, without prejudice.
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`BiTMICRO, for purposes of this action only, is not contesting jurisdiction and venue,
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`shall file an answer, affirmative defenses and any counterclaims within 14 days of
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`this Order.
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`3.
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`4.
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`Samsung shall file Notice of Pendency of Other Action Involving Same Patent(s)
`
`pursuant to Local Patent Rule 2-1(a)(2) within 14 days of this Order.
`
`Following BiTMICRO’s filing of an answer, affirmative defenses and any
`
`counterclaims, this case shall be stayed until the determination of the ITC in
`
`Investigation No. 337-TA-1097 becomes final, including all appeals.
`
`5.
`
`For the purposes of discovery in this case, upon entry of this Order dismissing BNI,
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`information, witnesses, and documents in the possession, custody, or control of BNI
`
`shall be deemed in the possession, custody, or control of BiTMICRO, but only to the
`
`extent they may be relevant to this litigation and to the extent that Samsung or SK
`
`hynix issues a request for them to BiTMICRO.
`
`
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`13
`Dated: July ___, 2018
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`__________________________
`Honorable Edward M. Chen
`United State District Court
`Northern District of California
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`-6-
`STIPULATION AND [PROPOSED] ORDER TO STAY CASE PENDING ITC INVESTIGATION – CASE No. 18-CV-3505
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`6.
`
`
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`Case management conference is reset from 10/2/2018 to 6/13/2019 at 9:30 AM.
`Joint case management statement is due seven (7) days before the case management
`conference.
`
`