Unreported / Non-Citable
Background
Jonathan Black Kotyk owns U.S. Patent No. 7,527,314, which covers vehicle gap guard technology designed to fit between a vehicle seat and an adjacent compartment to prevent items from falling into that space. Kotyk sued Jeffrey Simon and Drop Stop, LLC in the Central District of California, alleging patent infringement under 35 U.S.C. § 271 and related California state-law claims for unfair competition and unjust enrichment. The accused products are vehicle seat gap fillers sold under the Drop Stop brand.
While the district court case was pending, Kotyk also filed a complaint with the U.S. International Trade Commission alleging that Defendants violated Section 337 of the Tariff Act by importing products that infringe the same patent. The ITC instituted Investigation No. 337-TA-1509 and named Drop Stop as a respondent, but not Simon. Defendants then moved for a mandatory stay of the patent claims under 28 U.S.C. § 1659(a) and a stay of the state-law claims under the statute or the court's inherent authority.
Kotyk did not oppose a limited stay of the federal patent claims against Drop Stop, but he argued that Section 1659(a) did not apply to Simon—who was not an ITC respondent—or to the state-law claims. The court considered the motion without oral argument and granted it in full, staying the entire action.
The Court’s Holding
The court held that 28 U.S.C. § 1659(a) required a mandatory stay of the entire action. The statute provides that, at the request of a party who is also a respondent in an ITC proceeding, the district court shall stay proceedings with respect to any claim that involves the same issues involved in the ITC proceeding, until the Commission's determination becomes final. The court found the motion timely because Drop Stop was named as an ITC respondent on July 1, 2026, and the motion was filed July 30, 2026, within the 30-day statutory window.
The court rejected Kotyk's argument that the stay could not reach Simon because he was not an ITC respondent. Under the plain language of Section 1659(a), the stay obligation turns on whether the claims involve the same issues as the ITC proceeding—not on whether every defendant is a respondent. Because the claims against Simon involved the same infringement issues pending before the ITC, his non-respondent status did not preclude a stay.
The court also held that the state-law claims for unfair competition and unjust enrichment had to be stayed because they shared common issues with the ITC investigation: Kotyk's state-law claims rested on allegations that Defendants encouraged consumers to use the accused product in an infringing configuration, so whether the product infringed the patent was common to both. The court therefore stayed the entire action until the ITC determination becomes final, denied as moot the pending motions to dismiss and for leave to amend, and ordered joint status reports every sixty days.
Key Takeaways
- Under 28 U.S.C. § 1659(a), a district court must stay claims that involve the same issues as a pending ITC investigation, and this obligation applies even to claims against a defendant who is not named as a respondent in the ITC proceeding.
- State-law claims such as unfair competition and unjust enrichment must also be stayed under Section 1659(a) when they depend on the same patent-infringement issues that are before the ITC.
- A motion for a mandatory stay under Section 1659(a) is timely if filed within 30 days after the moving party is named as a respondent in the ITC investigation.
- When a court stays an action under Section 1659(a), pending motions such as a motion to dismiss or a motion for leave to amend may be denied as moot, with leave to refile after the stay is lifted.
- The stay continues until the ITC determination becomes final, meaning until the Commission proceedings are no longer subject to judicial review.
Why It Matters
This order illustrates the broad reach of the mandatory stay provision in 28 U.S.C. § 1659(a), enacted to prevent duplicative proceedings on the same issues in district court and the ITC. The decision confirms that the stay obligation is claim-focused rather than party-focused: once a proper respondent timely requests a stay, the court must stay all claims sharing issues with the ITC investigation, even against co-defendants who are not ITC respondents.
The ruling also shows that plaintiffs cannot avoid a Section 1659(a) stay by repackaging patent-infringement allegations as state-law claims. Where unfair competition or unjust enrichment claims are premised on the same allegedly infringing conduct, they too fall within the mandatory stay, and the entire district court action waits until the ITC proceedings conclude.