FormFactor, Inc. v. Micronics Japan Co., Ltd. (PDF) 2008 U.S. Dist. LEXIS 13114 Decided February 11, 2008 Judge Jeffrey S. White FormFactor filed a patent infringement lawsuit against Micronics for the alleged infringement of four patents related to the U-Probe. ââ?¬Å?The U-Probe measures the electrical characteristics of a semiconductor while in wafer form during the semiconductor manufacturing process.ââ?¬Â? A similar lawsuit was filed in the ITC where two of the five asserted patents were the same at two of the four asserted here. Both parties concede a stay should be granted as to the two overlapping patents. See 28 U.S.C. 1659(a). The remaining issue was whether to stay the entire proceeding until the ITC case is concluded or to proceed only as to the two non-overlapping patents. Judge White used the Landis test in his analysis.

The competing interests that a district court must weigh in deciding whether to grant a stay include: (1) possible damage which may result from the granting of a stay, (2) the hardship or inequity which a party may suffer in being required to go forward, and (3) the orderly course of justice measured in terms of the simplifying or complicating of issues, proof, and questions of law which could be expected to result from a stay.

All factors weigh in favor of a stay. First, Judge White dismissed FormFactorââ?¬â?¢s argument that it would suffer damage because the ITC cannot grant injunctive relief to the two non-overlapping patents. Although true, it was FormFactorââ?¬â?¢s decision not to include the two non-overlapping patents in the ITC complaint. I would be curious to know why FormFactor did not include all four patents in the ITC complaint. As master of its complaint, should FormFactor essentially be penalized for this decision? FormFactorââ?¬â?¢s argument that it should recover damages for irreparable harm was likewise unpersuasive. ââ?¬Å?Potential monetary damages are not sufficient harm to warrant not staying this proceeding.ââ?¬Â? Next, Micronics demonstrated hardship if a stay does not issue because it would have to comply with overlapping discovery. For example, ââ?¬Å?the parties would have to conduct multiple depositions of the same witness.ââ?¬Â? The third factor also weighs in favor of staying this proceeding. Although the ITC hearing is not binding on this court, the resolution of the issues will likely ââ?¬Å?bear upon the highly technical questions which are likely to arise in the district court case.ââ?¬Â? The motion to stay was granted.