Case 2:22-cv-00134-JRG-RSP Document 37 Filed 07/22/22 Page 1 of 11 PageID #: 353
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No.: 2:22-cv-00134-JRG-RSP
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`JURY TRIAL DEMANDED
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`ADVANCED MICRO DEVICES, INC., ET
`AL.,
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`TCL INDUSTRIES HOLDINGS CO., LTD.;
`ET AL.,
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`Plaintiffs,
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`v.
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`Defendants.
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`PLAINTIFFS’ MOTION FOR DISCRETIONARY STAY OF REMAINDER OF ACTION
`PENDING FINAL DETERMINATION BY THE INTERNATIONAL TRADE
`COMMISSION OF INVESTIGATION NO. 337-TA-1318
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`Plaintiffs Advanced Micro Devices, Inc. and ATI Technologies ULC (collectively,
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`“AMD” or “Plaintiffs”) respectfully move this Court for an order to stay this action against
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`Defendant Realtek Semiconductor Corp. (“Realtek”) pending a final determination of the United
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`States International Trade Commission in the investigation entitled Certain Graphic Systems,
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`Components Thereof, and Digital Televisions Containing the Same, Investigation No. 337-TA-
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`1318 (“the ITC Investigation”).
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`All of the Defendants in this proceeding, including both Realtek and Defendants TCL
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`Industries Holdings Co. Ltd., TCL Industries Holdings (H.K.) Limited, TCL Electronics Holdings
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`Limited, TCL Technology Group Corporation, TTE Corporation, TCL Holdings (BVI) Limited,
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`TCL King Electrical Appliances (Huizhou) Co. Ltd., Shenzhen TCL New Technologies 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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`1
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`Case 2:22-cv-00134-JRG-RSP Document 37 Filed 07/22/22 Page 2 of 11 PageID #: 354
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`Ltd. (collectively, “TCL”), are all named respondents who are fully participating in the pending
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`ITC Investigation.
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`Since the pending ITC Investigation involves substantially the same patents, products,
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`parties, and issues in this proceeding, there is a significant overlap between the ITC Investigation
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`and this proceeding with respect to the claims and defenses of infringement and validity of the
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`Asserted Patents, as well as with respect to fact (and expert) discovery. As a result, TCL has filed
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`a motion with this court for a non-discretionary stay, which neither AMD nor Realtek opposed.
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`Given that TCL has elected to move for a mandatory stay of these proceedings pending the ITC
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`Investigation (with respect to all TCL Defendants), and given that all of the Defendants, including
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`both TCL and Realtek in this proceeding are named respondents that are fully participating in the
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`pending ITC proceeding, staying the remainder of this action as against Realtek will result in
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`significant public and private efficiencies.
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`I.
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`FACTUAL BACKGROUND AND PROCEDURAL HISTORY
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`On May 5, 2022, AMD filed a Complaint against Defendants TCL and Realtek in this
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`District, with respect to AMD’s U.S. Patent Nos. 7,742,053 (“the ’053 patent”), 8,760,454 (“the
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`’454 patent”), 11,184,628 (“the ’628 patent”), 8,468,547 (“the ’547 patent”), and 8,854,381 (“the
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`’381 patent”) (collectively, the “Asserted Patents”). On the same day, AMD filed a Complaint
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`against TCL and Realtek in the International Trade Commission (“ITC”) under Section 337 of the
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`Tariff Act of 1930 as amended, styled Certain Graphic Systems, Components Thereof, and Digital
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`Televisions Containing the Same (“ITC Action”), asserting the same patents. Exhibit A, ITC
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`Complaint.
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`On June 1, 2022, the ITC issued a Notice of Institution of Investigation, to determine
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`whether TCL and Realtek are violating Section 337 of the Tariff Act of 1930, as to those patents.
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`Exhibit B, ITC Notice of Institution.
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`2
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`Regarding the TCL Defendants in this action, summons were issued on May 13, 2022.
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`Dkt. No. 8. On May 17, 2022, four of the TCL Defendants were served, and two more TCL
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`Defendants were served on May 18, 2022. Dkt. Nos. 10-16. Counsel for TCL entered appearance
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`on July 1, 2022. Dkt. Nos. 19-20. On July 22, 2022, TCL filed a mandatory stay of this action.
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`Dkt. No. 36 (July 22, 2022). On July 20, 2022, TCL stated it will take no position on this motion
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`for a discretionary stay of the remainder of this action pending the ITC Action.
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`As to Defendant Realtek in this action, summons were issued on May 16, 2022. Dkt. No.
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`9. Counsel for Realtek entered appearance on July 5, 2022. Dkt. Nos. 25-26. However, Realtek
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`has not even acknowledged that it has been served with the Complaint and summons in this case
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`yet. Despite AMD’s extensive and repeated efforts to send copies of the summons and complaint
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`in this Action to Realtek and its counsel, Realtek maintains that it has not received service, forcing
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`AMD to file its motion on July 8, 2022 for alternate service against Realtek. Dkt. No. 30. The
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`motion for alternative service is currently pending.1 On July 21, 2022, notwithstanding TCL’s
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`decision to move for a mandatory stay, Realtek stated it would oppose this motion for a
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`discretionary stay pending the ITC Action.
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`Following the ITC’s Notice of Institution’s publication in the Federal Register, fact
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`discovery in the Investigation commenced on June 8, 2022, and is currently set to close on
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`November 29, 2022. Exhibit C, ITC Order No. 9 (July 12, 2022). A Markman Hearing at the ITC
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`1 As requested in the motion for alternative service, to the extent any party seeks stay of these
`proceedings pending the parallel International Trade Commission case, AMD respectfully requests
`that the pending motion for alternative service (Dkt. No. 30) be adjudicated before any such stay
`is entered. See, e.g., Lighting Sci. Group Corp. v. Nichia Corp., 2019 WL 9633377 at *1-3 (N.D.
`Ga. Aug. 8, 2019) (considering and ruling on plaintiff’s motion for alternative service, after issuing
`ruling on a mandatory stay of the case pending ITC proceedings under § 1659, also noting that
`“Plaintiff may continue to attempt to serve Nichia Japan while the stay is pending”).
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`3
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`is scheduled for September 6, 2022, and the evidentiary hearing in the ITC Investigation is
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`scheduled for March 13-17, 2023. Exhibit C, ITC Order No. 9 (July 12, 2022).
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`Four out of the five Asserted Patents at-issue in this action are before the Commission in
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`the ITC Action.2 See Dkt. No. 1 at ¶¶ 56-63; Exhibit A at ¶¶ 53-99. The TCL and Realtek products
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`at-issue in the complaint filed in the ITC Investigation are also identified as infringing the Asserted
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`Patents in this action. See Dkt. No. 1 at ¶¶ 64-67; Exhibit A at ¶ 100. As a result, the ITC
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`Investigation involves many of the same issues (and same parties) that are presented in this action,
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`with respect to the claims and defenses of infringement and validity of the Asserted Patents, as
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`well as with respect to fact (and expert) discovery.
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`II.
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`LEGAL STANDARDS
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`Whether or not to stay litigation is a matter left to the Court’s discretion. See Ethicon, Inc.
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`v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1998). In exercising this discretion, the Court must
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`weigh the competing interests of the parties and attempt to maintain an even balance. See Landis
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`v. N Am. Co., 299 U.S. 248, 255 (1936). The factors courts typically consider in deciding how to
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`exercise this discretion include: (1) whether a stay would unduly prejudice or present a clear
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`tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question
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`and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.
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`See, e.g., Enter. Sys. Techs. S.A.R.L. v. Motorola Mobility Holdings, Inc., 2014 U.S. Dist. LEXIS
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`201105 at *4 (E.D. Tex. Nov. 4, 2014) (stating the same factors for discretionary stay pending
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`final disposition of related ITC proceedings) (citing Saxon Innovations, LLC v. Palm, Inc., No.
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`2 Given the issuance of a target date of seventeen months in the ITC Action, AMD moved for
`termination of the ’454 Patent from the ITC proceedings against TCL and Realtek. The
`Administrative Law Judge’s granting of that motion is currently pending the Commission’s final
`determination.
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`6:09-cv-272, 2009 U.S. Dist. LEXIS 105928, 2009 WL 3755041, at *2 (E.D. Tex. Nov. 4, 2009)).
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`Discretionary stays are appropriate even where the district court action involves patents
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`not asserted in parallel ITC proceedings. See, e.g., Exhibit D, Oral Order, DivX v. Realtek
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`Semiconductor Corp., Civ. No. 1:20-cv-01202, Dkt. No. 55 (D. Del. June 3, 2021) (granting
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`opposed discretionary stay notwithstanding that one of the asserted patents in the district court
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`action was not asserted in the parallel ITC proceedings).
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`III. ARGUMENT
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`All three factors that courts consider in deciding whether to stay litigation strongly favor
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`granting a stay in this case.
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`The first factor—whether a stay would unduly prejudice or present a clear tactical
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`disadvantage to the non-moving party—weighs in favor of a stay. Granting a stay for the
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`remainder of the case would not cause TCL or Realtek to suffer any undue prejudice from any
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`delay, or allow AMD to gain any tactical advantage, because of the substantial overlap between
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`the two cases. For example, in at least one other district court case in similar circumstances where
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`Realtek itself opposed a plaintiff’s requested discretionary stay pending ongoing ITC proceedings
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`(and where other co-defendants elected to move for a mandatory stay), the District of Delaware
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`used its discretion to stay the case against Realtek pending those ITC proceedings. See Exhibit D,
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`Oral Order, DivX v. Realtek Semiconductor Corp., Civ. No. 1:20-cv-01202, Dkt. No. 55 (D. Del.
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`June 3, 2021) (granting plaintiff’s motion to stay the case against defendant Realtek, over Realtek’s
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`opposition). There, the Court noted that “The Court does not find that a stay will cause undue
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`prejudice to Realtek. While granting a stay might postpone the resolution of Realtek’s pending
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`motions before this Court (including its pending Section 101 motion (D.I. 43)), the Court does not
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`find such delay to be unduly prejudicial, particularly since the issue of the validity of the ’486
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`patent is before the ITC; Realtek’s inability to obtain a ruling on its Section 101 motion from this
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`5
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`Court prior to the ITC's determination does not constitute undue prejudice.” Id.
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`Further, AMD is not seeking an indefinite stay. Here, the procedural schedule in the ITC
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`Investigation consists of a close of fact discovery date of November 29, 2022, a trial date starting
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`March 13, 2023, an Initial Determination that will be issued by July 7, 2023, and a final target date
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`for completion of the Investigation of November 7, 2023. Exhibit C, ITC Order No. 9 (July 12,
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`2022). Therefore, the stay AMD is seeking is not an indefinite stay, such that the Court would
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`need to “identify a pressing need for the stay” in order to show the lack of prejudice. Cherokee
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`Nation v. United States, 124 F.3d 1413, 1416 (Fed. Cir. 1997).
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`Though it is rare for a district court defendant that is also a respondent in a parallel ITC
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`investigation to decline to seek a mandatory stay pursuant to § 1659—as Realtek has done here—
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`courts have routinely exercised their discretion to stay where at least some portion of the case is
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`not covered by a mandatory § 1659 stay. For instance in Graphic Props. Holdings v. Toshiba Am.
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`Info., Sys., the court issued a stay pursuant to § 1659 for two of the asserted patents, and then
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`exercised its discretion in staying proceeding for the third patent which was not involved in the
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`ITC investigation. 2014 WL 923314 at *2 (D. Del. Mar. 5, 2014). The Court in Graphic Props.
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`Holdings did so because, just as here, staying the case posed no threat of undue prejudice to the
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`non-movant, simplified the issues, and caused no clear tactical advantage for the movant. Id.
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`Therefore, this factor weighs in favor of a stay.
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`The second factor—whether a stay will simplify the issues in question and trial of the
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`case—strongly favors a stay because there is substantial overlap between the two cases. The
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`ongoing ITC Action asserts four of the five AMD patents that are asserted in this action, against
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`the same defendants in this action, TCL and Realtek.3 Further, the accused products in this case
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`are also currently at-issue in the ITC Investigation, including with respect to TCL smart televisions
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`incorporating Realtek products. See, e.g., Dkt. No 1 at ¶ 64.
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`In the ITC Action, a Markman hearing has been set to occur on September 6, 2022. AMD
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`expects the Administrative Law Judge will issue a claim construction order shortly after the
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`Markman hearing on four of the same patents asserted in this action, which has the potential to
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`resolve several claim construction issues relevant to this instant action. Exhibit C, ITC Order No.
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`9 (July 12, 2022). In addition, the parties are scheduled to exchange infringement and invalidity
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`contentions based on the same patents as those in this action by September 16, 2022 in the ITC
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`proceedings. Id. “Congress explicitly intended that district courts should consider using their
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`discretionary power to stay patent infringement litigation that is related to . . . an action before the
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`ITC.” Zenith Elecs. LLC v. Sony Corp., Case No. C 11-02439 WHA, 2011 WL 2982377 at *2
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`(N.D. Cal. July 22, 2011) (citing H.R. Rep. No. 103-826(I), at 141). “Clearly, Congress thought
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`that district courts would benefit from the guidance of the ITC and Federal Circuit,” even if those
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`decisions are persuasive (but not binding) authority on this Court. See Google Inc. v. Creative
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`Labs, Inc., Case No. 16-cv-02628-JST, 2016 WL 6947564 at *3 (N.D. Cal. Nov. 28, 2016).
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`3 The ’454 Patent—while no longer asserted in the ITC—also has overlapping issues with patents
`asserted both here and in the ITC, such as the ’053 Patent. For example, the ’454 Patent’s parent,
`the 6,897,871 Patent, is so closely related to the ’053 Patent (asserted here and in the ITC), that in
`inter partes review proceedings, the PTAB treated patents in each of those families—i.e., the ’053
`and ’871 Patents—as the same for purposes of analyzing whether ATI, through its earlier
`conception and reduction to practice of the ATI R400 sequencer, were entitled to the same earlier
`priority date. See, e.g., LG Elecs., Inc., v. ATI Techs., No. IPR2015-00326, 2016 Pat. App. LEXIS
`7408 at *4-5 (PTAB June 28, 2016). The Federal Circuit reversed the PTAB on both patents in
`those two families for the same reasons, and concluded that the inventions in the challenged claims
`of both the ’871 and ’053 Patents were supported by the same conception and reduction to practice
`date of August 24, 2001, based on ATI’s development of its R400 “for the same reasons.” ATI
`Techs. ULC v. Iancu, 920 F.3d 1362, 1374-75 (Fed. Cir. 2019).
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`Therefore, this factor weighs in favor of a stay.
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`The third factor—whether discovery is complete and a trial date has been set—strongly
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`favors a stay because this instant action is still in its infancy, with discovery yet to open (i.e., the
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`parties have yet to even file any joint proposed discovery order). Granting a stay early in this case
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`will advance judicial efficiency and “maximize the likelihood that neither the Court nor the parties
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`expend their assets.” EchoStar Techs. Corp. v. TiVo, Inc., 2006 WL 2501494 at *3 (E.D. Tex.
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`July 14, 2006). Even where “a great deal of activity” has taken place in the litigation, including
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`substantial discovery, courts have granted a stay where resources can still be conserved. See, e.g.,
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`id.; Scorpcast v. Boutique Media, 2021 WL 3514751 at *3 (E.D. Tex. June 7, 2021) (staying the
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`case and finding the second factor in favor of stay when claim construction hearing has taken place
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`and the trial date was “quickly approaching”). Here, the third factor weighs even more
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`unequivocally in favor of a stay. For instance, Realtek made their first appearance this month,
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`discovery has yet to even begin, and trial is set for December 4, 2023—almost eight months after
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`the start of the hearing in the ITC investigation.
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`Further, Realtek has not even acknowledged that it has been served with the Complaint and
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`summons in this case yet. Dkt. No. 30. At this point, with this case still in its beginning stages,
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`this factor significantly weighs in favor of a stay.
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`By not having to litigate and re-litigate substantially similar, if not identical, matters in
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`both the ITC and this Court, the public and private resources of the parties and the Courts will not
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`have to engage in duplicative discovery and other pretrial matters. Further, with the case stayed
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`against TCL, having this case proceed against Realtek, only to have discovery start again with
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`respect to all TCL Defendants once the ITC Investigation is final, does nothing to simplify the
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`issues and trial of this case. See Evolved Wireless, LLC v. Samsung Elecs. Co., 2021 WL 7161368
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`(E.D. Tex. Mar. 10, 2021) (staying the entire proceeding where the parallel ITC proceeding
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`involved the same parties and patents-in-suit); see also Enter. Sys. Techs. S.A.R.L., 2014 U.S. Dist.
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`LEXIS 201105 (E.D. Tex. Nov. 4, 2014) (determining at the Court’s discretion to stay the entire
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`proceeding, even with regards to one patent not asserted in the parallel ITC proceeding, and with
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`respect to one defendant, Motorola, not in the ITC proceedings); Black Hills Media, LLC v.
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`Samsung Elecs. Co., 2014 WL 12951780 (E.D. Tex. Mar. 14, 2014) (determining at the Court’s
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`discretion to stay the entire proceeding, even with regards to a patent related to, but not asserted
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`in, the parallel ITC proceeding). Therefore, this factor also significantly weights in favor of a stay.
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`IV. CONCLUSION
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`For at least the foregoing reasons, AMD respectfully requests the Court to exercise its
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`discretion in staying this action as to Realtek until the determination of the Commission in 337-
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`TA-1318 becomes final, and enter an order substantially similar to the Order attached hereto.
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`9
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`July 22, 2022
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`By: /s/ Eric H. Findlay_____
`Eric H. Findlay
`State Bar No. 00789886
`Brian Craft
`State Bar No. 04972020
`Debby Gunter
`State Bar No. 24012752
`FINDLAY CRAFT, P.C.
`102 N. College Ave. Suite 900
`Tyler, Texas 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`Email: efindlay@findlaycraft.com
`Email: bcraft@findlaycraft.com
`Email: dgunter@findlaycraft.com
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`OF COUNSEL:
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`Michael T. Renaud
`James M. Wodarski
`Michael J. McNamara
`Adam S. Rizk
`William Meunier
`Marguerite McConihe
`Matthew A. Karambelas
`Catherine Xu
`Tianyi Tan
`MINTZ LEVIN COHN FERRIS
` GLOVSKY AND POPEO PC
`One Financial Center
`Boston, MA 02111
`617-542-6000
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`Attorneys for Plaintiffs ATI Technologies
`ULC and Advanced Micro Devices, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing document
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`has been served on July 22, 2022 to all counsel of record who are deemed to have consented to
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`electronic service via the Court’s CM/ECF system.
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`/s/ Eric H. Findlay____
`Eric H. Findlay
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`CERTIFICATE OF CONFERENCE
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`Pursuant to E.D. Tex. Local Rule CV-7(h), counsel for AMD informed counsel for TCL
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`and Realtek about AMD’s intent to file this motion. Following that, on July 20 and July 21, 2022
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`respectively, counsel for TCL and Realtek informed counsel for AMD that TCL takes no position
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`and Realtek opposes this motion. The discussions have conclusively ended in an impasse, leaving
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`an open issue for the Court to resolve.
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`/s/ Matthew Karambelas____
`Matthew Karambelas
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`11
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