Magistrate Judge Steven Gold
The ’235 patent’s inventor assigned all rights thereunder, including the right to sue, to Lavagear in 2005. Lavagear’s 2012 complaint charged Okamoto USA with the patent’s infringement since 2005. The U.S. Patent and Trademark Office granted Okamoto’s ex parte request to re-examine the subject patent’s validity. Examining the three factors set forth in Aerotel v. IDT, the court granted Okamoto’s motion to stay Lavagear’s infringement action. Lavagear would not be unduly prejudiced by the “routinely” granted stay. Nor did Lavagear plausibly suggest that Okamoto sought the subject stay so as to gain tactical advantage. In contrast to Lavagear’s seven-year delay in asserting its rights, Okamoto’s re-examination request was filed within 90 days of service of Lavagear’s infringement compliant. Further, the PTO’s re-examination will prospectively simplify the issues in the infringement action. The early stage of the subject litigationin which there has been neither significant discovery nor motion practice or concerted trial preparationfurther suggested a stay’s appropriateness.
