On May 31, 2013, ALJ E. James Gildea issued the public version of Order No. 6 (dated May 21, 2013) in Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing the Same (Inv. No. 337-TA-876).  In the Order, ALJ Gildea denied Respondent InvenSense, Inc.’s (“InvenSense”) motion to stay the investigation pending reexamination of three of the five asserted patents and inter partes review (IPR) of the remaining two asserted patents.

According to the Order, requests for ex parte reexamination of three asserted patents were granted on November 5, 2012, November 9, 2012, and March 29, 2013, respectively.  After these requests were granted, InvenSense filed IPR petitions for the remaining two asserted patents on April 8, 2013, and April 24, 2013, respectively.  The U.S. Patent and Trademark Office (“PTO”) has not yet reached a decision on the IPR petitions.

The Order states that on April 30, 2013, InvenSense filed the instant motion seeking to stay the investigation pending the reexaminations and IPRs.  InvenSense argued that it was important to wait for the PTO proceedings to progress before continuing at the ITC because Complainant STMicroelectronics, Inc.’s (“STM”) remarks in response to the PTO’s office actions would have an impact on the issues raised at the ITC.  According to InvenSense, the conditions justifying a stay were met.

STM opposed the motion, arguing that the reexaminations are in their early stages, that InvenSense made its various requests for reexamination in order to avoid STM’s attempts to enforce its intellectual property rights, and that precedent shows that the Commission has demonstrated an increasing inclination not to stay investigations pending PTO reexamination.

After considering the arguments, ALJ Gildea determined to deny InvenSense’s motion to stay.  The ALJ reviewed six factors that are typically considered in determining whether to stay an ITC investigation pending reexamination proceedings at the PTO:  (1) the state of discovery and the hearing date; (2) whether a stay will simplify the issues and hearing of the case; (3) the undue prejudice or clear tactical disadvantage to any party; (4) the stage of the PTO proceedings; (5) the efficient use of Commission resources; and (6) the availability of alternative remedies in federal court. 

ALJ Gildea found that the first factor weighed in favor of a stay because the investigation had just commenced and relatively few resources had been expended to date.  He found that the second factor also weighed in favor of a stay to a limited extent because the reexamination proceedings could have an impact on claim construction issues and prior art considerations in the investigation.  He found that the third factor weighed against granting a stay because STM would suffer more prejudice if a stay were granted than InvenSense would suffer if a stay were denied.  The ALJ found that the fourth factor weighed very heavily against granting a stay because the three ex parte reexaminations were in their early stages, and the two IPR petitions had not yet been decided.  He found that the fifth factor did not significantly impact the decision because granting the stay would entail both benefits and costs with respect to Commission resources.  Lastly, he found that the sixth factor weighed against granting a stay because a pending district court action involving the three patents for which ex parte reexamination had been requested had already been stayed pending those reexaminations—meaning that an additional stay at the ITC “would result in a dead period of 2-3 years (or more) in which [STM] would be unable to assert its patent rights against alleged infringers….”  The ALJ noted that “if it were possible to create such a lengthy dead zone, reexamination petitions would become part of every respondent’s tactical playbook in every single ITC investigation.”

In view of the above, ALJ Gildea denied InvenSense’s motion to stay without prejudice.  In particular, the Order states that InvenSense has leave to periodically file updates on EDIS with respect to the reexaminations, and may, if warranted, file a second, well supported motion for a stay (or other action) should any of the reexaminations progress and conclude significantly faster than what would be expected based on PTO averages.