CAFC Refuses Mandamus to Stay ITC Proceeding Pending Reexamination

In re Freescale Semiconductor (Fed. Cir. 2008) (non-precedential)

Although this case arises from an ITC action, it still serves as a good example the difference between a court deciding whether to stay a proceeding versus the decision on preliminary injunctive relief. Both decisions are within the discretion of the lower court. However, only the preliminary injunction decision is immediately appealable.

In an ITC Section 337 action begun by patentee Tessera against Motorola, Freescale, Quallcom and others, the Administrative Law Judge (ALJ) granted a stay of its proceedings pending reexamination of the patent. On appeal, the Commission rejected the stay and ordered the proceedings reinstated. Freescale filed a petition for a writ of mandamus asking the CAFC to stay the proceedings.

Tessera’s 6,465,893 patent broadly covers a semiconducter chip arrangement:

a) a first semiconductor chip having a front surface, a rear surface and contacts on said front surface;

b) a second semiconductor chip having a front surface, a rear surface and contacts on said front surface, said rear surface of said second semiconductor chip being juxtaposed with said front surface of said first semiconductor chip;

c) a first backing element having electrically conductive first terminals, said first backing element being juxtaposed with said rear surface of said first semiconductor chip so that at least some of said terminals overlie said rear surface of said first semiconductor chip, at least some of said contacts on said first and said second semiconductor chips being electrically connected to at least some of said terminals; and

d) a substrate having contact pads thereon, said first terminals being connected to said contact pads of said substrate, said substrate being adapted to connect the assembly with other elements of a circuit, at least some of said first terminals overlying said rear surface of said first semiconductor chip.

The CAFC rejected Freescale’s request for mandamus — holding that the accused infringer had not shown any special need for a stay.

“The Commission provided a sufficient basis for denying the stay. Furthermore, that a petitioner may suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus.

2 thoughts on “CAFC Refuses Mandamus to Stay ITC Proceeding Pending Reexamination

  1. Hmmm

    The patent, filed in 2000 and granted in 2002 is the end of a chain of about 8 continuations going back to 1990. References cited amount to 239 US and Foriegn Patents and other references. 7 independent claims, 66 claims in total. Have fun everyone!

  2. The language “…juxtaposed with said…” reminds me of the good ol” days…

Comments are closed.