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United States District Court for the Western District of Texas, Austin Division
February 7, 2022, Decided; February 7, 2022, Filed
CAUSE NO. 1:20-CV-611-LY
ORDER ON MOTION TO STAY
Before the court in the above-referenced cause are Defendants NXP Semiconductors, N.V., NXP, B.V., and NXP USA, Inc.'s (collectively, "NXP") Motion to Stay Pending Inter Partes Review ("IPR") filed January 10, 2022 (Doc. #108), Plaintiff Bell Semiconductor, LLC's ("Bell Semic") Response filed January 24, 2022 (Doc. #109), and NXP's Reply filed January 31, 2022 (Doc. #112). Having reviewed the motion and related briefing, the applicable law, and entire case file, the court will grant NXP's motion and stay the action.
NXP informs the court [*3] that three of the seven patents at issue in this case—U.S. Patent Nos. 8,049,340 ("340 Patent"), 8,288,269 ("269 Patent"), and 6,624,007 ("007 Patent") (collectively, the "IPR Patents")—are currently subject to IPR proceedings. NXP timely filed IPR petitions challenging the validity of all asserted claims in the '269 Patent and the '340 Patent. A non-party to this case—Advanced Semiconductor Engineering, Inc. ("Advanced Semiconductor")—filed an IPR petition challenging the validity of each asserted claim of the '007 Patent. The Patent Trial and Appeal Board ("PTAB") instituted all three IPRs, finding a reasonable likelihood that NXP and Advanced Semiconductor will prevail in establishing unpatentability. In light of these proceedings, NXP moves to stay the case pending the outcome of IPR2021-00966 ('340 Patent), IPR2021-00967 ('269 Patent), and IPR2021-00180 ('007 Patent).
Courts have the inherent power to manage their dockets, including the authority to order a stay. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). The party seeking a stay bears the burden of showing that a stay is appropriate. MiMedx Grp., Inc. v. Tissue Transplant Tech. Ltd., No. SA-14-CV-719, 2015 U.S. Dist. LEXIS 33388, 2015 WL 11573771, at *2 (W.D. Tex. Jan. 5, 2015). Courts generally consider three factors when determining whether to stay patent litigation in light of IPR proceedings: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question; and [*4] (3) the status of the litigation at the time a stay is requested. Id. In determining whether to stay court proceedings pending resolution of IPR proceedings, courts usually evaluate the totality of the circumstances in the particular case before them. Landis v. North Am. Co., 299 U.S. 248, 254, 57 S. Ct. 163, 81 L. Ed. 153 (1936) ("The power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants.").
For the first factor—whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party—NXP argues that because Bell Semic does not compete with NXP or practice its patents, a stay would not cause undue prejudice. Bell Semic responds that a stay pending IPR would cause unjustified delay and lead to tactical disadvantage. Specifically, Bell Semic argues that it has an interest in the timely enforcement of its patents and those of its licensing partners, several of which produce products and may be prejudiced by a stay.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
2022 U.S. Dist. LEXIS 82938 *; 2022 WL 1447948
BELL SEMICONDUCTOR, LLC, PLAINTIFF, v. NXP SEMICONDUCTORS, N.V.; NXP, B.V.; AND NXP USA, INC., DEFENDANTS.
patents, proceedings, argues, discovery, parties, weighs