On September 9, 2024, Judge Lewis J. Liman granted a motion to stay pending the resolution of a U.S.P.T.O. inter partes review (“IPR”) filed by Defendant Tommy John, Inc. challenging the patentability of Plaintiff Pakage Apparel, Inc.’s asserted patent. In doing so, the Court considered three factors: “(1) whether a stay will simplify the issues in question and trial of the case; (2) the stage of the proceedings; and (3) whether a stay will prejudice the nonmoving party.”
The Court found that the first factor favored a stay even though the IPR had not yet been instituted because waiting until after institution “does not appear to be the majority position in this Circuit.” An institution decision was expected “in little more than four months,” meaning there would be only a “relatively short” delay if institution were denied.
The Court found that the second factor also favored a stay. While preliminary infringement, invalidity, and claim construction contentions were previously exchanged, there had been no written discovery or claim construction briefing.
Finally, the Court found that the third factor also favored a stay even though the parties were marketplace competitors. Plaintiff Pakage Apparel had waited almost three years after first contacting Defendant Tommy John before filing suit, indicating that it “apparently did not care enough about Defendant to do something about its alleged infringing activities.” And Plaintiff had not “identified concrete financial harm” it would suffer from a stay or “sought preliminary injunctive relief” to prevent ongoing infringement.
Pakage Apparel, Inc. v. Tommy John, Inc., No. 24-cv-6371 (LJL) (S.D.N.Y. Sept. 9, 2024)
