Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 1 of 21 PageID #: 483
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ADVANCED MICRODEVICES, INC. and
`ATI TECHNOLOGIES ULC,
`
`Plaintiffs,
`
`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.,
`
`Defendants.
`
`C.A. No. 2:22-cv-00134-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANT REALTEK SEMICONDUCTOR CORP.’S OPPOSITION TO
`PLAINTIFFS’ MOTION FOR DISCRETIONARY STAY PENDING FINAL
`DETERMINATION BY THE ITC OF INVESTIGATION NO. 337-TA-1318
`
`
`
`
`

`

`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 2 of 21 PageID #: 484
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
`
`PLAINTIFFS SEEK TO STAY THIS CASE SO THEY CAN LITIGATE THE
`SAME CLAIMS TWICE—FIRST IN THE ITC, THEN LATER IN THIS
`COURT .............................................................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Plaintiffs Move to Stay Their Own Litigation Based on a Parallel ITC
`Proceeding That Plaintiffs Also Initiated ............................................................... 2
`
`Plaintiffs Seek a Stay of This Case So They Can Completely Relitigate the
`Same Claims in This Court If They Don’t Like the Result in the ITC—As
`Its Counsel Is Currently Doing in a Another Case Against Realtek ...................... 3
`
`The Staggered Schedules in This Action and the ITC Proceeding Allow
`for The Same Efficiencies Advocated by AMD Without Requiring a Stay .......... 4
`
`Adjudication of Plaintiffs’ Claims Against Realtek Will Also Resolve the
`Merits of Plaintiffs’ Claims Against Downstream Reseller TCL .......................... 5
`
`III.
`
`PLAINTIFF SHOULD NOT BE ALLOWED TO STAY THIS LITIGATION SO
`IT CAN LITIGATE THE SAME CLAIMS TWICE IN TWO FORUMS ........................ 6
`
`A.
`
`Courts Have Denied Plaintiffs’ Requests to Stay District Court Litigation
`That They Initiated in View of ITC Proceedings That They Also Initiated .......... 6
`
`B.
`
`A Stay Will Not Simplify the Issues for Adjudication in This Case ..................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The ITC Proceeding Has No Collateral Estoppel or Res Judicata
`Effect and Will Not Simplify this Litigation ............................................. 8
`
`By Refusing to Stipulate to Any Scope of Estoppel, AMD Seeks to
`Litigate the Same Claims Twice in Two Forums and Get Two
`Bites at the Apple ..................................................................................... 10
`
`The Earlier Deadlines in the ITC for All Litigation Activities and
`Rulings Allow Any Efficiencies to be Achieved Without a Stay ............ 11
`
`There Is No Basis for Staying This Litigation as to the ʾ454 Patent,
`Which Is No Longer Asserted in the ITC Proceeding ............................. 12
`
`Adjudicating AMD’s Claims Against Realtek First, While the
`Claims Against TCL are Stayed, Achieves Additional Efficiencies ....... 13
`
`C.
`
`A Stay That Allows AMD to Litigate Its Claims Twice—Once in the ITC
`and Again In This Court—Would Give AMD a Tactical Advantage and
`Prejudice Realtek ................................................................................................. 14
`
`D.
`
`The Status of the Case Is a Neutral Consideration. ............................................. 15
`
`IV.
`
`CONCLUSION ................................................................................................................ 15
`
`
`
`i
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 3 of 21 PageID #: 485
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Broadcom Corp. v. Qualcomm Inc.,
`2005 WL 8161480 (C.D. Cal. Aug. 16, 2005) .........................................................................13
`
`Clinton v. Jones,
`520 U.S. 681 (1997) ...................................................................................................................6
`
`Datatreasury Corp. v. Wells Fargo & Co.,
`490 F.Supp.2d 749 (E.D. Tex. 2006) .........................................................................................6
`
`Energetiq Technology, Inc. v. ASML Netherlands BV,
`2016 WL 11727302 (D. Mass. April 1, 2016) ................................................................. passim
`
`Exitechange Corp. v. Friendfinder Networks, Inc.,
`2014 WL 12616109 (E.D. Tex. March 31, 2014) ......................................................................6
`
`Google Inc. v. Creative Labs, Inc.,
`2016 WL 6947564 (N.D. Cal. Nov. 28, 2016) ..........................................................................9
`
`Graphic Props. Holdings v. Toshiba Am. Info. Sys.
`2014 WL 923314 (D. Del. March 5, 2014)................................................................................9
`
`Humanscale Corp. v. CompX Int’l Inc.,
`2009 WL 1444312 (E.D. Va. May 21, 2009) ..........................................................................13
`
`Hyosung TNS Inc. v. Int’l Trade Comm’n,
`926 F.3d 1353 (Fed. Cir. 2019)..................................................................................................8
`
`Intellectual Ventures II LLC v. Kemper Corp.,
`2016 WL 7634422 (E.D. Tex. Nov. 7, 2016) ..........................................................................11
`
`KIPB LLC v. Samsung Elec. Co.,
`2019 WL 6173365 (E.D. Tex. Nov. 20, 2019) ..........................................................................7
`
`LG Electronics, Inc. v. Eastman Kodak Co.,
`2009 WL 1468703 (S.D. Cal. May 26, 2009) ..........................................................................13
`
`Micron Tech., Inc. v. Mosel Vitelic Corp.,
`1999 WL 458168 (D. Idaho March 31, 1999) .........................................................................13
`
`In re Nintendo of America, Inc.,
`756 F.3d 1363 (Fed. Cir. 2014)................................................................................................13
`
`
`
`ii
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 4 of 21 PageID #: 486
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`
`
`Opticurrent, LLC v. Power Integrations, Inc.,
`2016 WL 9275395 (E.D. Tex. Oct. 19, 2016) .........................................................................13
`
`Realtime Data, LLC v. Hewlett Packard Enterprise Co.,
`2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ...........................................................................11
`
`Saint Lawrence Comms. LLC v. Apple Inc.,
`2017 WL 3712912 (E.D. Tex. July 12, 2017) .........................................................................13
`
`Tex. Instruments Inc. v. Cypress Semiconductor Corp.,
`90 F.3d 1558 (Fed. Cir. 1996)....................................................................................................8
`
`Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n,
`851 F.2d 342 (Fed. Cir. 1988)....................................................................................................8
`
`Uniloc 2017 LLC v. Samsung Elec. America, Inc.,
`2020 WL 1433960 (E.D. Tex. March 24, 2020) ......................................................................11
`
`Statutes
`
`28 U.S.C. §1659 ..................................................................................................................... passim
`
`
`
`iii
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 5 of 21 PageID #: 487
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`
`I.
`
`INTRODUCTION
`
`Plaintiffs’ motion for a stay is not intended to achieve judicial efficiency, nor will it
`
`simplify the issues in this case. Counsel for Plaintiffs have an established practice of litigating
`
`infringement claims in the ITC, then modifying their theories and relitigating their claims in the
`
`district court. This is what they intend to do here as well, as demonstrated by the fact that
`
`Plaintiffs refuse to be bound by any adverse determinations in the pending ITC proceeding as a
`
`condition of a stay. Plaintiffs’ motion should be denied.
`
`In September 2020, counsel for Plaintiffs, Mintz Levin (“Mintz”) concurrently initiated
`
`proceedings in the ITC and the District of Delaware asserting infringement of four patents
`
`against a group of defendants that included Realtek. Realtek and the other defendants requested
`
`a mandatory stay of the Delaware cases under 28 U.S.C. §1659. The ITC subsequently held that
`
`Realtek’s products did not infringe on at least two independent grounds. Instead of appealing
`
`this decision to the Federal Circuit and obtaining a definitive ruling on claim construction, Mintz
`
`asked the district court to lift the stay and proposed a scheduling order that includes infringement
`
`and invalidity contentions, claim construction briefing, and a Markman hearing, to be followed
`
`by fact and expert discovery. Mintz apparently believes that it is not bound by any of the
`
`Commission’s rulings and intends to relitigate the entire case in the District of Delaware,
`
`modifying the theories that lost in the ITC in an attempt to achieve a different outcome.
`
`Mintz has now again initiated parallel infringement proceedings, in this Court and in the
`
`ITC, asserting a new salvo of patents against Realtek and TCL. This time, having learned from
`
`recent history, Realtek declined to opt into the mandatory stay under §1659. But Mintz—
`
`determined to still get its two bites at the infringement apple—responded by filing the present
`
`motion for a discretionary stay, so it can take its shot in the ITC, and when it loses there, embark
`
`on a second attempt to prove infringement in this Court under different theories.
`
`There is precedent for preventing this type of gamesmanship. In other contexts, such as
`
`reexamination and IPR proceedings, when a party moves to stay litigation pending the outcome
`
`of a parallel proceeding before an administrative agency (such as the PTO or the ITC), this Court
`
`
`
`1
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`
`
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 6 of 21 PageID #: 488
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`
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`requires that the moving party agree to be bound by any adverse outcome in the parallel
`
`proceeding as a condition of a stay. This helps ensure that the outcome in the parallel proceeding
`
`will actually simplify the litigation in this Court, so the stay achieves a useful purpose in
`
`narrowing the issues rather than giving the moving party the opportunity to litigate its claims
`
`twice. The same approach can be taken here.
`
`With this in mind, Realtek proposed to Plaintiffs that as a condition of a stay, that they
`
`agree to be bound by any adverse rulings in the ITC on the merits of its claims, for example, any
`
`findings of non-infringement or invalidity. Plaintiffs refused, showing that their real motivation
`
`is not to simplify the current litigation, but to execute the same strategy that Mintz is currently
`
`pursuing in Delaware—to have two independent opportunities to try and prevail on shifting
`
`infringement claims, before two different forums. Realtek respectfully suggests that the Court
`
`prevent this type of abuse of the judicial system and deny Plaintiffs’ motion for a stay.
`
`II.
`
`PLAINTIFFS SEEK TO STAY THIS CASE SO THEY CAN LITIGATE THE
`
`SAME CLAIMS TWICE—FIRST IN THE ITC, THEN LATER IN THIS COURT
`
`A.
`
`Plaintiffs Move to Stay Their Own Litigation Based on a Parallel ITC
`Proceeding That Plaintiffs Also Initiated
`
`On May 5, 2022, Plaintiffs (“AMD”) filed the current litigation against semiconductor
`
`chip manufacturer Realtek Semiconductor Corp. (“Realtek”) and thirteen related TCL entities
`
`(“TCL”). AMD claims that five Asserted Patents (the ʾ053, ʾ454, ʾ628, ʾ547 and ʾ381 patents)
`
`are infringed by integrated circuits sold by Realtek, which are then used by TCL in various
`
`downstream television products. See Complaint ¶¶ 56-67, 71-76, 89-95, 108-113, 125-131, 143-
`
`149 (ECF 1). As to every Asserted Patent, AMD identifies the Realtek RTD2873 SoC as a
`
`representative infringing component, and then further identifies the TCL 50S535 television as an
`
`allegedly infringing downstream product because it contains a Realtek RTD2873 SoC. Id. More
`
`specifically, AMD’s infringement allegations are directed to the ARM Mali-G31 GPU within the
`
`Realtek RTD2873 SoC, as the asserted patents are directed to graphics processing systems. Id.
`
`Plaintiffs’ motion for alternative service was granted on August 1, 2022. (ECF 39.)
`
`
`
`2
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 7 of 21 PageID #: 489
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`
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`On the same day, May 5, 2022, AMD filed a Complaint with the International Trade
`
`Commission against Realtek and the same thirteen related TCL entities. Motion at Ex. A.
`
`AMD’s ITC Complaint asserted the same five patents against Realtek and TCL. See id. at ¶ 5.
`
`AMD subsequently terminated the ITC investigation as to one of the five patents, the ʾ454
`
`patent, which is now only asserted before this Court. Motion at 4, n. 2. AMD’s ITC Complaint
`
`identifies the same representative Realtek SoC as being accused of infringement, the RTD2873,
`
`based in its incorporation of an ARM Mali-G31 GPU, and identifies the same representative
`
`TCL television as infringing, the TCL 50S535. Id. at Ex. A, ¶¶ 107, 119. Thus, AMD contends
`
`that the two cases have “significant overlap” because they involve “substantially the same
`
`patents, products, parties, and issues.” Motion at 2.
`
`B.
`
`Plaintiffs Seek a Stay of This Case So They Can Completely Relitigate the
`Same Claims in This Court If They Don’t Like the Result in the ITC—As Its
`Counsel Is Currently Doing in a Another Case Against Realtek
`
`The true motivations and the strategy underlying the stay being sought by AMD in this
`
`action are revealed in a co-pending district court litigation that its counsel, Mintz, is litigating in
`
`the District of Delaware against Realtek. Mintz filed seven patent infringement cases in
`
`Delaware on September 17, 2020, against numerous defendants including Realtek. Benson
`
`Decl., Ex. 2. See generally Case Nos. 1:20-cv-01240, 1241, 1242, 1243, 1244 and 1247 (District
`
`of Delaware). The next day, on September 18, 2020, Mintz filed a Complaint in the ITC against
`
`the same defendants, asserting the same patents, and accusing the same products of infringement.
`
`Id., Ex. 3. The ITC subsequently instituted the 337-TA-1224 investigation. Each of the
`
`defendants in the district court actions, filed in Delaware, requested a mandatory stay under 28
`
`U.S.C. §1659, including Realtek. See, e.g., Case No. 1:20-cv-01247 (ECF 13).
`
`Mintz lost its claims in the ITC on numerous grounds. Among other reasons, the full
`
`Commission found that the patent asserted against Realtek was not infringed because two
`
`different limitations were not satisfied by Realtek’s products. Id., Ex. 4 at 45-55. Realtek had
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`additional non-infringement and invalidity arguments that the Commission did not reach, as it
`
`had already found non-infringement on multiple grounds. See id. at 2.
`
`3
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`

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`
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`Mintz decided not to appeal the Commission’s decision to the Federal Circuit, which
`
`could have resolved dispositive issues without for further litigation. Id., ¶ 7. Instead, Mintz
`
`informed all of the defendants, including Realtek, that it was going to move to lift the stay in the
`
`Delaware cases and proposed a scheduling order for infringement contentions, invalidity
`
`contentions, technical document production, claim construction briefing and a Markman hearing,
`
`followed by fact and expert discovery. Id., Ex. 5. Rather than appealing the adverse rulings that
`
`it received in the ITC proceeding, Mintz preferred to start from scratch and attempt to relitigate
`
`all issues of claim construction, invalidity, infringement, and other claims and defenses in the
`
`District of Delaware. As a result, the stay of the district court cases pending resolution of the
`
`ITC investigation failed to simplify the issues in the district court, because Mintz is now
`
`attempting to re-litigate the entire case a second time after taking full discovery in the ITC and
`
`losing its claims on the merits.
`
`C.
`
`The Staggered Schedules in This Action and the ITC Proceeding Allow for
`The Same Efficiencies Advocated by AMD Without Requiring a Stay
`
`AMD argues that a stay of this litigation pending resolution of the ITC investigation will
`
`“simplify the issues” in this case because of the “substantial overlap between the two cases.”
`
`Motion at 6. As explained below, however, there is no collateral estoppel or res judicata effect
`
`of the ITC investigation on this proceeding. Every claim and defense raised in the ITC
`
`proceeding can (and likely will) be relitigated in this action, should it be stayed.
`
`To the extent that the claim construction rulings, discovery, or other developments in the
`
`ITC proceeding might be informative to this litigation, a stay is not needed to accomplish this
`
`efficiency due to the staggered nature of the schedules in the two actions. Every relevant event
`
`in the ITC proceeding is scheduled to happen well in advance of any comparable deadline in this
`
`litigation, including claim construction briefing, the Markman hearing, the close of fact
`
`discovery, the close of expert discovery, and trial. A comparison of relevant deadlines in the two
`
`proceedings is set forth below:
`
`4
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 9 of 21 PageID #: 491
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`
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`Deadline
`
`ITC
`
`District Court1
`
`Opening Claim Construction Brief August 15, 2022
`
`May 2, 2023
`
`Claim Construction Hearing*
`
`September 6, 2022
`
`June 13, 2023
`
`Completion of Fact Discovery
`
`November 29, 202
`
`July 17, 2023
`
`Completion of Expert Discovery
`
`January 11, 2023
`
`August 21, 2023
`
`Pretrial Conference*
`
`March 10, 2023
`
`October 31, 2023
`
`Hearing in ITC (equivalent of trial) March 13, 2023
`
`Initial Determination by ALJ
`
`July 7, 2023
`
`N/A
`
`N/A
`
`Last date for Commission’s Final
`
`November 7, 2023
`
`N/A
`
`Determination
`
`Jury Selection*
`
`N/A
`
`December 4, 2023
`
`See Motion at Ex. C (procedural schedule in ITC proceeding); Benson Decl., Ex. 1.
`
`D.
`
`Adjudication of Plaintiffs’ Claims Against Realtek Will Also Resolve the
`Merits of Plaintiffs’ Claims Against Downstream Reseller TCL
`
`AMD’s motion does not identify any TCL televisions accused of infringement other than
`
`“TCL smart televisions incorporating Realtek products.” Motion at 7. Similarly, AMD’s
`
`Complaint does not accuse any TCL televisions of infringement other than those that contain
`
`Realtek chips, repeatedly identifying “TCL products … with infringing Realtek integrated
`
`circuits” as being the allegedly infringing products. See, e.g., Complaint at ¶¶ 64, 72-73, 90-91,
`
`109-110, 126-127, 144-145 (accusing, for example, the “TCL 50S535 television, and the Realtek
`
`RTD2873 system on chip incorporated therein”). Since AMD’s infringement claims against
`
`TCL’s televisions turn on whether the Realtek SoCs in those televisions infringe the asserted
`
`
`
` 1
`
` The listed District Court dates are from the Sample Docket Control Order the Court provided
`during the July 19, 2022 Scheduling Conference. The parties have not yet negotiated and
`submitted the Docket Control Order for the case. (*) indicates a deadline that cannot be changed
`without showing good cause.
`
`5
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 10 of 21 PageID #: 492
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`
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`patents, this Court’s adjudication of whether the Realtek chips infringe will be dispositive of
`
`AMD’s claims against TCL. Similarly, insofar as the same patent claims are asserted against
`
`both TCL and Realtek, adjudication of issues of invalidity in the case against Realtek will
`
`similarly resolve the same issues of invalidity as to AMD’s claims against TCL. Since TCL has
`
`already requested a mandatory stay under 28 U.S.C. §1659, allowing AMD’s claims to move
`
`forward against Realtek will achieve efficiencies in this litigation for this additional reason.
`
`III.
`
`PLAINTIFF SHOULD NOT BE ALLOWED TO STAY THIS LITIGATION SO IT
`
`CAN LITIGATE THE SAME CLAIMS TWICE IN TWO FORUMS
`
`This Court considers three factors when deciding a motion to stay:
`
`(1) whether a stay would unduly prejudice the non-moving party or present a clear
`tactical advantage to the moving party; (2) whether a stay would simplify the
`issues in question and the trial of the case; and (3) whether discovery is complete
`and whether a trial date has been established.
`
`Exitechange Corp. v. Friendfinder Networks, Inc., 2014 WL 12616109 at *1 (E.D. Tex. March
`
`31, 2014) (granting a stay pending a parallel administrative proceeding only if the moving party
`
`agreed to be bound by determinations of patent validity in the parallel proceeding). Accord,
`
`Datatreasury Corp. v. Wells Fargo & Co., 490 F.Supp.2d 749, 755-56 (E.D. Tex. 2006)
`
`(requiring that moving party stipulate to be bound by the results of a parallel administrative
`
`proceeding as a condition of a stay, because they “should not have two bites at the apple”). The
`
`“proponent of a stay bears the burden of establishing its need.” Clinton v. Jones, 520 U.S. 681,
`
`708 (1997).
`
`A.
`
`Courts Have Denied Plaintiffs’ Requests to Stay District Court Litigation
`That They Initiated in View of ITC Proceedings That They Also Initiated
`
`Under 28 U.S.C. §1659, Congress gave defendants the right to request a mandatory stay
`
`of patent litigation in a U.S. District Court where the plaintiff initiates a parallel proceeding in
`
`the International Trade Commission asserting the same claims against the same parties. Notably,
`
`Congress did not extend this right to plaintiffs who elect to file concurrent litigation in two
`
`forums asserting the same or overlapping claims. The reason for this is simple: the plaintiff has
`
`control over when and where to file which cases. It makes little sense to permit a plaintiff to file
`
`6
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`

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`
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`duplicative patent litigation in multiple forums and then elect to stay one or more of its own
`
`cases, needlessly increasing the cost of litigation and expanding the dockets of the courts.
`
`The court in Elan Microelectronics Corp. v. Apple, Inc. recognized the public policies
`
`embodied in this statutory scheme when it denied a motion by the plaintiff for a discretionary
`
`stay of its own case. 2010 WL 11719115 at *1 (N.D. Cal. June 1, 2010). The court observed
`
`that the statutory scheme enacted by Congress “reflect[s] the fact that it is primarily ITC
`
`respondents who may need protection from the burdens of litigating in two proceedings
`
`simultaneously, as a party asserting infringement claims may avoid those burdens simply by not
`
`initiating actions in more than one forum.” Id.
`
`Similarly, the court in Energetiq Technology, Inc. v. ASML Netherlands BV denied
`
`plaintiff’s motion to stay its own case pending a parallel ITC proceeding that the plaintiff had
`
`initiated. 2016 WL 11727302 (D. Mass. April 1, 2016). The court noted, in particular, that the
`
`plaintiff “has not shown sufficient hardship to justify staying its own case.” Id. at *2.
`
`“Moreover, as the party who initiated both this lawsuit and the Commission proceeding,
`
`[plaintiff] had control over when and where to file which cases—and therefore when and where
`
`and in which cases costs would accrue.” Id.
`
`B.
`
`A Stay Will Not Simplify the Issues for Adjudication in This Case
`
`This factor weighs heavily against a stay and is “typically the most important of the three
`
`factors.” KIPB LLC v. Samsung Elec. Co., 2019 WL 6173365 (E.D. Tex. Nov. 20, 2019)
`
`(denying a stay pending the outcome of an administrative proceeding that lacked estoppel effect,
`
`as it would give the moving party “two bites at the … apple”). First, any rulings in the ITC
`
`investigation have no collateral estoppel or res judicata effect in this litigation. Second, AMD
`
`refuses to be bound by any adverse rulings in the ITC proceeding (e.g., on non-infringement or
`
`invalidity). It is routine for this Court to require a party seeking a stay to agree to be bound by
`
`adverse determinations in a collateral administrative proceeding, where the collateral proceeding
`
`was initiated by the moving party to adjudicate the merits of the same claims. AMD refuses to
`
`7
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`

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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 12 of 21 PageID #: 494
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`
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`enter into such a stipulation here because it wants two bites at the apple. Accordingly, a stay will
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`not simplify any of the issues for adjudication in this case.
`
`Relatedly, to the extent any efficiencies can be achieved by the ITC investigation
`
`proceeding first, no stay is required to obtain those efficiencies. All pertinent deadlines in the
`
`ITC arise before the same deadlines in this litigation. Moreover, there is no basis for a stay as to
`
`the ʾ454 patent, as it is no longer asserted in the ITC. Finally, proceeding to adjudicate AMD’s
`
`infringement claims against Realtek’s chips while its claims against TCL are stayed is judicially
`
`efficient, because a determination of whether the chips infringe will likely resolve AMD’s claims
`
`against TCL, a mere reseller of the accused chips.
`
`1.
`
`The ITC Proceeding Has No Collateral Estoppel or Res Judicata
`Effect and Will Not Simplify this Litigation
`
`Waiting for the ITC proceeding to conclude will do nothing to simplify the claims or
`
`issues in this litigation because the rulings of the ITC, as an administrative agency, are not
`
`binding on this Court under the principles of collateral estoppel or res judicata. The Federal
`
`Circuit has held that “the ITC’s determination of patent infringement and validity do not have
`
`claim or issue preclusive effect.” Hyosung TNS Inc. v. Int’l Trade Comm’n, 926 F.3d 1353, 1358
`
`(Fed. Cir. 2019) (citing Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1563–64 (Fed.
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`Cir. 1996)); see also Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568–
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`69 (Fed. Cir. 1996); Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 851 F.2d 342, 344 (Fed.
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`Cir. 1988) (“[T]his court has stated that the ITC's determinations regarding patent issues should
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`be given no res judicata or collateral estoppel effect”). Regardless of whether any relief is
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`ordered in the ITC investigation, it will not narrow the relief sought by AMD.
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`In Energetiq, the court found that staying the district court case in favor of the ITC
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`proceeding was unlikely to simplify the issues, because “the Commission’s rulings are not
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`binding here.” 2016 WL 11727302 at *2. As a result, the court found that a parallel ITC
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`proceeding would have even less potential to simplify the district court litigation than an IPR
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`proceeding, because a finding of invalidity by the PTAB would render the patents invalid and
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`8
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`Case 2:22-cv-00134-JRG-RSP Document 43 Filed 08/05/22 Page 13 of 21 PageID #: 495
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`moot plaintiff’s infringement claims in the district court. Conversely, a finding of validity would
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`simplify the issues in the district court litigation because the defendant would be estopped from
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`raising the same invalidity contentions in the district court. An ITC proceeding, however, does
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`neither—findings of infringement or non-infringement, and findings of validity or invalidity,
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`have no binding effect on subsequent district court litigation under collateral estoppel or res
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`judicata. Moreover, AMD refuses to be bound or estopped by any adverse rulings. So while an
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`IPR proceeding has at least some potential to resolve co-pending infringement claims in the
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`district court, the current ITC proceeding being conducted by AMD has no such potential at all.
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`See also Elan Microelectronics, 2010 WL 11719115 at *1 (finding that whether and to what
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`extent any outcomes in the ITC could lead to a narrowing of the issues in the district court
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`litigation was “speculative” at best).
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` The cases cited by AMD are readily distinguishable, as nearly all of those cases involved
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`defendants moving for a mandatory stay under §1659 and then requesting a discretionary stay as
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`to additional patents or parties. See, e.g., Evolved Wireless, LLC v. Samsung Elec. Co., 2021 WL
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`7161368 (E.D. Tex. March 10, 2021) (defendants requested stay under §1659, which was not
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`opposed); Black Hills Media, LLC v. Samsung Elec. Co., 2014 WL 12951780 (E.D. Tex. March
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`17, 2014) (defendants moved for stay where some patents were subject to stay under §1659);
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`Zenith Elec. LLC v. Sony Corp., 2011 WL 2982377 (N.D. Cal. July 22, 2011) (same).2
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`
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` 2
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` A second case cited by AMD, Google Inc. v. Creative Labs, Inc., also involved a motion to stay
`filed by the defendant, which sought a stay of a declaratory judgment action filed by Google,
`who had voluntarily intervened in an ITC investigation. 2016 WL 6947564 (N.D. Cal. Nov. 28,
`2016). AMD also cites Graphic Props. Holdings v. Toshiba Am. Info. Sys., in which the court
`granted a mandatory stay under § 1659 for two patents pending in the ITC and then granted a
`discretionary stay as to a third patent that was not asserted in the ITC. Aside from the fact that
`the motion to stay was filed by defendants, not the plaintiff, AMD fails to mention that in
`Graphic Props., the court granted a motion to stay as to a patent not asserted in the ITC where it
`was related to the patents asserted in the ITC. The court reasoned that a stay was appropriate
`because the patents “share common inventors, specification, and prosecution history.” 2014 WL
`923314 at *2 (D. Del. March 5, 2014). In the present case, the ʾ454 patent that was terminated
`from the ITC proceeding is unrelated to the other patents asserted in the ITC or in this litigation.
`Graphic Props. is therefore inapposite.
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`9
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`2.
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`By Refusing to Stipulate to Any Scope of Estoppel, AMD Seeks to
`Litigate the Same Claims Twice in Two Forums and Get Two Bites at
`the Apple
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`As explained supra at 3-4, counsel for AMD (Mintz) is seeking to repeat, in this
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`litigation, the gamesmanship it is currently employing in the District of Delaware. Mintz filed a
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`Complaint in the ITC against Realtek and other respondents and concurrently filed district court
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`litigation asserting the same claims. Id. Realtek and the other defendants requested a mandatory
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`stay under 28 U.S.C. §1659. Id. After the ITC found no infringement on multiple grounds,
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`Mintz decided not to appeal the decision to the Federal Circuit and instead moved to lift the stay
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`in the Delaware actions and proceed to relitigate all of the same claims from scratch, in the
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`apparent hope of convincing Judge Connolly to change the claim construction rulings from the
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`ITC. Id.
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`Given Mintz’s brazen strategy of trying to relitigate its claims against Realtek in
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`Delaware after Realtek proved non-infringement in the ITC, Realtek realized that it would be
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`more judicious and efficient to allow the ITC and district court cases to proceed in parallel this
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`time, rather than litigating all issues twice in a sequential manner. Presumably, AMD will need
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`to maintain consistency in its infringement theories as between two cases that are being litigated
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`in parallel, rather than litigating in the ITC first and then advancing modified theories in the
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`district court after the ITC proceeding has concluded. Thus, Realtek declined to request the
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`mandatory stay under §1659 in this action and opposes AMD’s motion to stay.
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`There is a way that a stay could have the potential of simplifying the issues in this
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`litigation, and that is if AMD agreed to be bound by any adverse determinations in the parallel
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`ITC proceeding (e.g., any findings of non-infringement or invalidity as to the same patents).
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`Realtek proposed this solution to AMD, and not surprisingly, counsel for AMD refused—
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`because such an estoppel would deprive it of the opportunity to get two bites at the apple.
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`Benson Decl., Ex. 6. In view of AMD’s