By Eric Schweibenz
On June 9, 2011, ALJ Essex issued the public version of Order No. 22 (dated May 9, 2011) denying a motion to stay filed by respondents Broadcom Corporation, Freescale Semiconductor, Inc., LSI Corp., MediaTek Inc., NVIDIA Corp., STMicroelectronics Inc., Audio Partnership Plc., Cisco Systems, Inc., Garmin International Inc., Motorola Mobility, Inc., Oppo Digital, Inc., and Seagate Technology (collectively, “Respondents”) in Certain Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-753). 

Respondents filed the motion seeking a stay until the completion of the Federal Circuit NVidia Appeal on a closely related investigation (Inv. No. 337-TA-661) or until December 31, 2001, whichever comes first.

According the Order, there are five factors to consider, when deciding whether to grant a stay.

1.  The state of discovery and the hearing date

Respondents argued the case was in the early stages and discovery had just begun.  Rambus and OUII responded that discovery is progressing and documents and interrogatory responses have already been exchanged.

ALJ Essex found this factor neutral in determining whether to grant the stay.  Specifically, ALJ Essex determined that while discovery had commenced, it had only been for a couple of months and the hearing date was more than 7 months away.

2.  Whether a stay will simplify the issues and hearing of the case

Respondents urged a stay until the Federal Circuit issued opinions in the NVidia Appeal and two consolidated district court cases (the "Micron/Hynix cases").  Respondents argued the former would clarify issues relating to some of the patents in the case, while the latter would provide guidance in the spoliation of evidence issues in the case.  Rambus and OUII argued that the Micron/Hynix cases relate to different patents and thus will not resolve any issues in this investigation and the effect of the NVidia Appeal is purely speculative.

ALJ Essex found this factor weighed against granting a stay.  In particular, ALJ Essex determined that if the Federal Circuit upholds the Commission’s decision in the NVidia Appeal, it would not impact this investigation since the Micron/Hynix cases involve different patents.

3.  The undue prejudice or clear tactical disadvantage to any party

Respondents argued a stay would not prejudice Rambus.  Rambus had filed a concurrent district court case in which they could be awarded damages for any period in which the stay was in place.  Rambus and OUII responded that the stay would amount to a royalty-free license for the duration of the stay, as the ITC cannot award damages.

ALJ Essex agreed with Rambus and OUII.  Specifically, ALJ Essex found that while damages may be available in the district court, Respondents failed to show that these damages are sufficient to compensate for the continued import injury to Rambus.  Furthermore, the ITC is required to complete the investigation as quickly as possible.  These factors weighed against issuing a stay.

4.  The stage of the parallel proceedings

Respondents argued that the NVidia Appeal and Micron/Hynix cases were both further along than the present investigation with an opinion on Micron/Hynix expected “imminently” and an NVidia opinion expected in the next year.

ALJ Essex rejected Respondents’ argument, finding this factor weighed against a stay.  The NVidia opinion is not expected in the near future while the Micron/Hynix opinions will have little, if any, effect on the investigation.

5.  The efficient use of Commission resources

Respondents advocated a stay as a means of conserving resources by avoiding the need to “re-do” portions of the investigation if they conflicted with the Federal Circuit opinions.  Rambus and OUII argued that, for the reasons articulated in the earlier factors, a stay would not be an efficient use of the Commission’s resources.

ALJ Essex found this factor also weighed against a stay.  In particular, ALJ Essex determined that while the NVidia opinion could save the Commission resources, that argument is based on the assumption that NVidia would prevail at the Federal Circuit.  In any event, issues relating to other patents in the investigation, unrelated to the NVidia Appeal, would still have to be resolved by the Commission.

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With four factors weighing against a stay and one neutral, ALJ Essex denied Respondents’ motion.