A § 1659 Stay Granted by a District Court Must Remain in Effect Until a Related ITC Judgment Can No Longer Be Appealed 07-M841 March 01, 2007 Decision Last Month at the Federal Circuit - April 2007Judges: Bryson, Linn, Dyk (author) [Appealed from: S.D.N.Y., Judge Brieant, Jr.] In In re Princo Corp., Misc. No. 841 (Fed. Cir. Mar. 1, 2007), the Federal Circuit held that, with regard to a stay granted under 28 U.S.C. § 1659, a district court must continue to stay proceedings until a judgment in a related ITC proceeding is no longer eligible for appeal. This case stems from six patents owned by U.S. Philips Corporation (“Philips”) relating to the manufacture of recordable compact disks (“CD-Rs”) and rewritable compact disks (“CD-RWs”).

the court should enjoin the investigations under the “customer-suit exception” and marched through the relevant factors.iiiOn January 17, 2023, the Commission moved to intervene.iv The Commission signaled its opposition to the injunction in its motion.v The Commission argued that Seimens failed to avail itself of the opportunity to intervene in these investigations directly under 19 C.F.R. § 210.19.vi Instead, according to the ITC’s motion, Seimens filed its complaint in the District of Delaware and then waited nearly a month to move for a preliminary injunction.vii The Commission argued against the injunction because it would “substantially interfere with the Commission’s ability to conduct those investigations” and “would stunt the participation of the very party alleging a violation of section 337.”viiiThe Commission also touted its expertise in adjudicating patent cases and emphasized that a District Court may benefit from this expertise at the conclusion of an investigation under 28 U.S.C. § 1659(b).ix The Commission explained it has conducted over 1000 investigations with nearly all involving allegations of patent infringement.x Further, the Commission is staffed with nearly three dozen attorneys with technical degrees who participate in its investigations, including Office of Unfair Import Investigations, and as attorney advisors to the administrative law judges.xi Consequently, through its motion, the Commission reiterated the practice of litigants moving to stay District Court litigation while an investigation is pending rather than the other way around.Indeed, complainants in Section 337 investigations commonly file parallel District Court litigation. Often the allegations in both venues involve the same patents and claims. When this occurs, the defendant in the District Court—who is the respondent in the Section 337 investigation—may move to stay the District Court litigation “with respect to any claim that involves the same issues involved in the proceeding before the Comm

However, there is an exception to those confidentiality provisions for certain related district court cases. Under 28 U.S.C. §1659(b), if the district court case involves the same parties as the Section 337 proceeding and the district court case was stayed due to the ITC proceeding, after dissolution of the stay, “the record of the proceeding before the United States International Trade Commission shall be transmitted to the district court and shall be admissible in the civil action, subject to such protective order as the district court determines necessary.” 28 U.S.C. §1659(b).

However, any federal court case will be stayed upon timely request of the respondent pending the resolution of the ITC Investigation. See 28 U.S.C. § 1659.

Uruguay Round Agreements Act, Pub. L. 103–465, § 321, 108 Stat. 4809, 4943–4944 (1994) (codified as amended at 19 U.S.C. § 1337(c)); see also A Centennial History of the USITC, USITC Pub. 4744, at 327-28 (Nov. 2017). Uruguay Round Agreements Act, Pub. L. 103–465, §§ 261 and 321, 108 Stat. 4908–4910, 4943–4946 (1994) (codified as amended at 28 U.S.C. § 1659); see also A Centennial History of the USITC, USITC Pub. 4744, at 327-28 (Nov. 2017). Annual Report FY 1995, USITC Pub. No. 2979, at 11 (Sep. 1996).