Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 1 of 7 PageID #: 308
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ADVANCED MICRO DEVICES, INC.; and ATI
`TECHNOLOGIES ULC,
`Plaintiffs,
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`v.
`TCL INDUSTRIES HOLDINGS CO., LTD.; TCL
`INDUSTRIES HOLDINGS (H.K.) LIMITED;
`TCL ELECTRONICS HOLDINGS LIMITED;
`TCL TECHNOLOGY GROUP CORPORATION;
`TTE CORPORATION; TCL HOLDINGS (BVI)
`LIMITED; TCL KING ELECTRICAL
`APPLIANCES (HUIZHOU) CO. LTD.;
`SHENZHEN TCL NEW TECHNOLOGIES CO.,
`LTD.; TCL MOKA INTERNATIONAL
`LIMITED; TCL SMART DEVICE (VIETNAM)
`CO., LTD; MANUFACTURAS AVANZADAS
`SA DE CV; TCL ELECTRONICS MEXICO, S
`DE RL DE CV; TCL OVERSEAS MARKETING
`LTD.; and REALTEK SEMICONDUCTOR
`CORP.,
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`Defendants.
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`C. A. NO. 2:22-CV-00134-JRG
`JURY TRIAL DEMANDED
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`DEFENDANT TCL’S UNOPPOSED MOTION TO STAY CASE PENDING
`RESOLUTION OF PARALLEL U.S. INTERNATIONAL TRADE COMMISSION
`INVESTIGATION NO. 337-TA-1318
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`Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 2 of 7 PageID #: 309
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`Pursuant to 28 U.S.C. § 1659(a), Defendants TCL Industries Holdings Co. Ltd., TCL
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`Industries Holdings (H.K.) Limited.—correct name TCL Industries Holdings (H.K.) Co., Ltd.—,
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`TCL Electronics Holdings Limited, TCL Technology Group Corporation, TTE Corporation,
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`TCL Holdings (BVI) Limited, TCL King Electrical Appliances (Huizhou) Co. Ltd., Shenzhen
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`TCL New Technologies Co., Ltd.—correct name Shenzhen TCL New Technology Co., Ltd.—,
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`TCL MOKA International Limited, TCL Smart Device (Vietnam) Co., Ltd., Manufacturas
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`Avanzadas SA de CV, TCL Electronics Mexico, S de RL de CV, and TCL Overseas Marketing
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`Ltd. (collectively, “TCL”) respectfully request the Court to stay this case pending disposition of
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`a related proceeding, In the Matter of Certain Graphics Systems, Components Thereof, and
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`Digital Televisions Containing the Same, Inv. No. 337-TA-1318, before the United States
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`International Trade Commission (“ITC” or “Commission”). Plaintiffs Advanced Micro Devices,
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`Inc. and ATI Technologies ULC (collectively, “AMD”) and defendant Realtek Semiconductor
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`Corp. do not oppose this motion.
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`Accordingly, TCL respectfully moves, without opposition, to stay these proceedings
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`pending final resolution of the parallel ITC investigation. Resolution of the parallel ITC
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`investigation has a significant chance of simplifying or resolving some or all of the issues
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`presented in this case, and such a stay is mandated by 28 U.S.C. § 1659(a), and also warranted
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`under the Court’s inherent authority.
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`I.
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`STATEMENT OF FACTS
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`On May 5, 2022, AMD filed the Complaint in this action. (Dkt. 1.) Shortly after, AMD
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`filed a parallel investigation in the United States International Trade Commission.
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`On June 1, 2022, the ITC investigation was instituted. In re Matter of Certain Graphics
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`Systems, Components Thereof, and Digital Televisions Containing the Same, Inv. No. 337-TA-
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`-1-
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`Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 3 of 7 PageID #: 310
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`1318. A true and correct copy of the ITC's Notice of Investigation is attached to this Motion as
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`Exhibit A.
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`On July 1, 2022, TCL and AMD jointly moved to extend the deadline to seek a
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`mandatory motion to stay amongst other things. (See Dkt. No. 23.)
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`On July 7, 2022, the Court granted TCL and AMD’s joint motion, ordering that the
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`deadline for TCL to seek a mandatory stay be extended to July 22, 2022. (Dkt. No. 28 at 2.)
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`On July 11, 2022, AMD moved for partial termination to terminate the claims of the ’454
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`Patent from the ITC investigation. In re Matter of Certain Graphics Systems, Components
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`Thereof, and Digital Televisions Containing the Same, Inv. No. 337-TA-1318, Order No. 10:
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`Initial Determination Granting Complainants’ Unopposed Motion For Partial Termination, at 1
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`(July 14, 2022). On July 14, the ITC granted AMD’s motion, which terminated the claims of the
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`’454 Patent from the investigation. (Id. at 2–3.)
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`II.
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`ARGUMENT
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`A.
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`TCL is Entitled to a Mandatory Stay Under 28 U.S.C. § 1659(a).
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`Federal law provides for a mandatory stay of related civil actions that involve the same
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`parties and the same issues pending final disposition of proceedings before the ITC:
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`(a) Stay. - In a civil action involving parties that are also parties to a proceeding
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`before the United States International Trade Commission under section 337 of the
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`Tariff Act of 1930, at the request of a party to the civil action that is also a
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`respondent in the proceeding before the Commission, the district court shall stay,
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`until the determination of the Commission becomes final, proceedings in the civil
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`action with respect to any claim that involves the same issues involved in the
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`proceeding before the Commission, but only if such request is made within–
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`Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 4 of 7 PageID #: 311
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`(1) 30 days after the party is named as a respondent in the proceeding before
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`the Commission, or
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`(2) 30 days after the district court action is filed,
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`whichever is later.
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`28 U.S.C. § 1659(a) (emphasis added); see also In re Princo, 478 F.3d 1345, 1355 (Fed. Cir.
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`2007) (granting writ of mandamus directing district court to stay proceedings under 28 U.S.C.
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`§ 1659(a) until the ITC proceedings became final, i.e., “are no longer subject to judicial
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`review”). Prior to the 30-day deadline under § 1659(a)(1), TCL and AMD jointly moved to
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`extend the deadline to seek a mandatory stay of proceedings. (See Dkt. No. 23.) This Court
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`granted that motion, ordering that the deadline for TCL to seek a mandatory stay be extended to
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`July 22, 2022. (Dkt. No. 28 at 1–2.) TCL is requesting this stay within the Court-ordered
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`deadline. Consequently, TCL seeks a mandatory a stay of this action pursuant to § 1659(a) until
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`the determination of the Commission becomes final.
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`TCL’s request for a stay satisfies § 1659(a). The parties in this case are the same parties
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`to the ITC investigation. The Plaintiffs here, AMD, is the Complainant before the ITC, and TCL
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`is a defendant here and a respondent in the ITC proceeding. (See Notice of Investigation,
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`Exhibit A, at 2–4). The patents at issue in this case are the same patents at issue in the ITC
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`investigation. In the pending ITC investigation, AMD alleges that TCL infringed U.S. Patent
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`Nos. 7,742,053 (“the ’053 Patent”), 8,760,454 (“the ’454 Patent”)1, 11,184,628 (“the ’628
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`Patent”), 8,468,547 (“the ’547 Patent”), and 8,854,381 (“the ’381 Patent”). (Exhibit A at 1–2.)
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`1 The ’454 Patent was included in AMD’s complaint to the ITC, but has since been terminated
`from the investigation. See In re Matter of Certain Graphics Systems, Components Thereof, and
`Digital Televisions Containing the Same, Inv. No. 337-TA-1318, Order No. 10: Initial
`Determination Granting Complainants’ Unopposed Motion For Partial Termination, 1–3
`(July 14, 2022).
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`Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 5 of 7 PageID #: 312
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`Here, AMD likewise asserts that TCL infringes the ’053 Patent, the ’454 Patent, the ’628 Patent,
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`the ’547 Patent, and the ’381 Patent. (Dkt. No. 1 at 24–27). Similarly, the ITC investigation and
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`this case both encompass issues relating to the patents, such as infringement, validity, and
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`enforceability; and the defenses that TCL might raise are also the same in the two proceedings.
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`Furthermore, TCL’s request is timely. The ITC formally named the TCL entities as
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`respondents by publishing its Notice of Investigation in the Federal Register on July 1, 2022.
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`See 19 C.F.R. § 210.3 (defining respondent as any “person named in a notice of investigation”).
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`Thus, the 30-day period under § 1659(a)(1) began to run on June 1, 2022. TCL and AMD’s joint
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`motion, filed prior to the end of the 30-day period under § 1659(a)(1), was granted by this Court
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`thereby extending the 30-day deadline for three weeks, until July 22, 2022. (Dkt. No. 28 at 2.)
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`B.
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`The Court Has Inherent Authority to Stay The Case
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`A federal district court has discretion to stay proceedings in exercising its inherent
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`authority to control the disposition of its cases. Cherokee Nation of Okla. v. United States, 124
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`F.3d 1413, 1416 (Fed. Cir. 1997). Further, when and how to stay proceedings is within the
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`sound discretion of the trial court. See Landis v. North Am. Co., 299 U.S. 248, 254–55 (1936).
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`The ITC investigation will determine whether TCL is violating Section 337 by importing into or
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`selling in the United States products that infringe one or more claims of the ’053 Patent, the
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`’454 Patent, the ’628 Patent, the ’547 Patent, and the ’381 Patent. The Complaint in this action
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`asks the Court to determine whether the same parties infringe one or more claims of the same set
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`of patents by importing into or selling in the United States the same accused products. (See Dkt.
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`No. 1.) Permitting this case to proceed concurrently with the ITC investigation would result in
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`the expenditure of unnecessary time by the Court and could lead to duplicative and inconsistent
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`outcomes regarding the same patents and the same accused products. This District Court action
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`Case 2:22-cv-00134-JRG-RSP Document 36 Filed 07/22/22 Page 6 of 7 PageID #: 313
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`is still in its early stages as neither the infringement contentions nor the invalidity contentions
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`have been served. (Dkt. No. 28 at 2.) Accordingly, in view of the interest in conserving judicial
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`resources and to avoid inconsistent results from the parallel litigations, TCL respectfully requests
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`that the Court stay the instant action pursuant to its inherent authority.
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`III. CONCLUSION
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`For all the foregoing reasons, TCL’s unopposed motion for a stay should be granted, and
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`this action should be stayed pending final resolution of the parallel ITC proceedings.
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`Dated: July 22, 2022
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`Respectfully submitted,
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`/s/ John P. Schnurer
`John P. Schnurer, TX Bar No. 24072628
`JSchnurer@perkinscoie.com
`Kyle R. Canavera, CA Bar No. 314664
`KCanavera@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Ste 300
`San Diego, California 92130-2080
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`Attorneys for Defendants TCL Industries
`Holdings Co., Ltd.; TCL Industries Holdings
`(H.K.) Limited; TCL Electronics Holdings
`Limited; TCL Technology Group Corporation;
`TTE Corporation; TCL Holdings (BVI) Limited;
`TCL King Electrical Appliances (Huizhou) Co.
`Ltd.; Shenzhen TCL New Technologies Co., Ltd.;
`TCL Moka International Limited; TCL Smart
`Device (Vietnam) Co., Ltd; Manufacturas
`Avanzadas SA de CV; TCL Electronics Mexico, S
`de RL de CV; and TCL Overseas Marketing Ltd.
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`-5-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on July 22, 2022 on all counsel of record, via the Court’s CM/ECF
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`system.
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`/s/ John P. Schnurer
`John P. Schnurer
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that all counsel of record have met and conferred in
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`accordance with Local Rule CV-7(h) and that the motion is unopposed.
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`/s/ John P. Schnurer
`John P. Schnurer
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`-6-
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