CHIP PACKAGING TECHNOLOGIES, LLC v. STMicroelectronics, Inc. — Entry #59: ORDER GRANTING MOTION TO STAY PENDING EX PARTE REEXAMINATION (DKT

Case 7:25-cv-00505-DC-DTG         Document 59       Filed 09/03/26     Page 1 of 4


                      IN THE UNITED STATES DISTRICT COURT
                       FOR THE WESTERN DISTRICT OF TEXAS
                            MIDLAND-ODESSA DIVISION

CHIP PACKAGING TECHNOLOGIES,                    §
LLC,                                            §
      Plaintiff,                                §
                                                §   No. 7:25-CV-00505-DC-DTG
 v.                                             §
                                                §
STMICROELECTRONICS, INC.,                       §
     Defendant.                                 §


                   ORDER GRANTING MOTION TO STAY PENDING
                     EX PARTE REEXAMINATION (DKT. NO. 39)


       Before the Court is Defendant’s Motion to Stay Pending Ex Parte Reexamination. (Dkt.

No. 39). On September 3, 2026, the Court held a hearing. Dkt. No 56. Having considered the

Motion, related briefings, and the parties’ arguments, the Court finds that the Motion is

GRANTED.

                                       I. BACKGROUND

       The plaintiff, Chip Packaging Technologies, LLC, alleges that the defendant,

STMicroelectronics, Inc., infringes five patents—U.S. Patent Nos. 9,685,351 (the ’351 Patent),

9,263,299 (the ’299 patent), 9,299,646 (the ’646 Patent), 8,643,189 (the ’189 Patent), and

10,151,658 (the ’658 Patent). Dkt. No. 1. All five patents are currently subject to ex parte

reexaminations—four requested by third parties and two requested by the defendant. Dkt. No. 39

at 3. While only some of the ex parte reexaminations had been instituted when the defendant

filed its opening brief, by the conclusion of the briefing, the USPTO had ordered the

reexamination of all five of the asserted patents. Dkt. No. 44; Dkt. No. 51. By the time of the

hearing, the USPTO had also issued Non-Final Office Actions rejecting all claims of the ’351


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Patent and the ’646 Patent. Dkt. No. 53. Reexamination of the ’299 Patent, the ’189 Patent, and

the ’658 Patent is still pending. Dkt. No. 53. The defendant requested a hearing on the Motion

because the current claim construction hearing is set for September 9, 2026. Dkt. No. 46.

                                            II. ANALYSIS

       Whether to grant a stay is a discretionary decision for the Court. “Courts have inherent

power to manage their dockets and stay proceedings, including the authority to order a stay

pending conclusion of a PTO reexamination.” (internal citations omitted) Ethicon, Inc. v. Quigg,

849 F.2d 1422, 1426–27 (Fed. Cir. 1988). In deciding whether to stay a case pending USPTO

proceedings, courts consider the following three factors: (1) whether a stay will simplify the

issues for trial; (2) the status of the litigation, including whether discovery is complete and a trial

date is set; and (3) whether a stay would cause the non-movant undue prejudice or give the

movant a clear tactical advantage. Kirsch Rsch. & Dev., LLC v. IKO Indus., Inc., No. 6:20-CV-

00317-ADA, 2021 WL 4555610, at *2 (W.D. Tex. Oct. 5, 2021). Courts have found that the

USPTO’s granting of ex parte reexaminations as to all claims of all asserted patents in a case

may render a stay proper. See AGIS Software Dev. LLC v. Google LLC, No. 2:19-CV-00359-

JRG, 2021 WL 465424, at *1 (E.D. Tex. Feb. 9, 2021).

       The defendant argues that all three factors favor staying this case. They note that all the

asserted claims of all the asserted patents are subject to pending ex parte reexaminations. They

point out that this case is in the early stages as a claim construction hearing has not occurred and

fact discovery has not started. Finally, as the plaintiff seeks only monetary relief, the defendant

contends that the plaintiff will suffer minimal prejudice. Dkt. No. 39. The defendant also argues

that any potential prejudice is minimized because of the defendant’s willingness to agree to a

limited estoppel. See Dkt. No. 39 at 6, n.7.


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       The plaintiff opposes a stay. Dkt. No. 40. The plaintiff argues that whether the ex parte

reexaminations will simplify the case is speculative at best. It contends that the defendant’s

limited conditional estoppel does not eliminate the prejudice created by the tactical advantage the

defendant will receive from the ex parte reexaminations. The plaintiff also argues that the parties

have incurred substantial costs briefing and preparing for the upcoming claim construction

hearing. Finally, they contend that a stay would cause a substantial delay in the current trial date.

Dkt. No. 40.

       Having considered the factors outlined above and the unique circumstances of this case,

the Court finds that a stay is justified. As of the hearing on this motion, the USPTO has begun

reexaminations of all five of the asserted patents and has issued Non-Final Office Actions

rejecting all claims in two of the patents. Dkt. No. 44; Dkt. No. 51; Dkt. No. 53. As the parties

acknowledged during the hearing, Non-Final Office Actions are anticipated in the other ex parte

reexaminations as well. Those office actions and any responses will become part of the intrinsic

record, which will inform the Court’s constructions of any claims. Additionally, granting a stay

in this particular case furthers judicial efficiency because cancellation or modification of claims

during the ex parte reexaminations will also affect the Court’s claim construction duties. See

M.P.E.P. § 2258 (a patent owner may cancel or submit new claims when original claims are

rejected in an ex parte reexamination). While the parties have completed claim construction

briefing, the Court has not conducted a claim construction hearing or issued a claim construction

order, and fact discovery has not begun. While some prejudice will accompany a delay, the Court

finds that insufficient under the facts and circumstances of this case to outweigh the benefits of a

stay. Therefore, the Court finds that a stay is warranted in this case.


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                                         III. CONCLUSION

       Considering the above, the Defendant’s Motion to Stay Pending Ex Parte Reexamination

(Dkt. No. 39) is GRANTED. The parties are ORDERED to file a joint notice updating the

Court as to the status of the ex parte reexaminations every ninety (90) days, within fourteen (14)

days of the conclusion of any of the ex parte reexaminations, and a motion requesting a status

conference within thirty (30) days of a final disposition in the last ex parte reexamination.

       Further, in light of this Order, the claim construction hearing set for September 9, 2026,

is HEREBY CANCELLED.

       SIGNED this 3rd day of September, 2026.


                                      DEREK T. GILLILAND
                                      UNITED STATES MAGISTRATE JUDGE


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