“The CAFC denied mandamus relief because the court said Realtek had failed to prove that it has no other means of obtaining relief from either the ITC or, after final determination there, from the CAFC on appeal.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied a petition for writ of mandamus filed by Realtek Semiconductor Corporation seeking to direct the International Trade Commission (ITC) to vacate its ruling granting Advanced Micro Devices, Inc. (AMD)’s motion to strike Realtek’s witness from testifying at an upcoming evidentiary hearing.
The petition stems from ITC investigation No. 337-TA-1350, which Realtek initiated in December 2022, alleging that the importation of certain AMD chips infringes Realtek’s patents in violation of Section 337 of the Tariff Act of 1930. The patents at issue are U.S. Patent No. 7,936,245 (“the ’245 patent”); U.S. Patent No. 8,006,218 (“the ’218 patent”); and U.S. Patent No. 9,590,582 (“the ’582 patent”). AMD is arguing that the licensing activities Realtek is relying on to meet the domestic industry requirement are not covered under the relevant license agreement and do not establish a domestic industry related to the articles protected by the patents at issue. The ALJ denied AMD’s motion for summary determination on that point and an evidentiary hearing is scheduled for October 16, 2023.
Realtek outside counsel Steven S. Baik of White Hat Legal was called as a witness for the hearing because he helped to negotiate the 2015 licensing deal in question. AMD moved to strike Baik as a witness in June 2023 and the ITC administrative law judge (ALJ) granted the motion, “reasoning in part that Realtek would not be unduly prejudiced,” according to the CAFC order. However, Realtek petitioned for mandamus following the ALJ’s refusal to reconsider that decision, arguing that the counsel who moved to strike Baik is currently representing Baik in other litigation “and should have been disqualified from filing that motion based on a conflict of interest arising out of that alleged representation.”
The CAFC denied mandamus relief because the court said Realtek had failed to prove that it has no other means of obtaining relief from either the ITC or, after final determination there, from the CAFC on appeal, since an order refusing to disqualify counsel is reviewable on appeal after final judgment. The court also said Realtek failed to show “a clear and indisputable right to disqualification under the circumstances presented,” since the relevant American Bar Association rule refers to a disqualifying conflict potentially arising “when a lawyer is required to cross-examine a client who appears as a witness in a lawsuit involving another client”—a situation that never actually occurred in this case.
Realtek and AMD are also engaged in another investigation at the ITC in which ALJ Judge Cameron Elliot issued a Notice of Initial Determination (ID) in July in favor of AMD. The products at issue there are “Certain Graphics Systems, Components Thereof, and Digital Televisions Containing the Same.” Judge Elliot found in the ID that claims of U.S. Patent No. 7,742, 053, while valid, were not infringed, but claims of another AMD patent—U.S. Patent No. 8,854,381—were found to be both infringed and valid, and recommended the Commission issue a limited exclusion order against the infringing products. That determination also led to the ITC issuing a call for public comments on the public interest impact of such an import ban.
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