United States District Court, D. Massachusetts
Brite-Strike Technologies, Inc. and Telebrands Corp. Plaintiffs,
E. Mishan & Sons, Inc. Defendant.
MEMORANDUM & ORDER
Nathaniel M. Gorton United States District Judge
Brite-Strike Technologies, Inc. and Telebrands Corp. allege
defendant E. Mishan & Sons, Inc. (“Emson”)
infringed one of its patents relating to a compact flashlight
and a method for operation of such a flashlight.
responded with several counterclaims against plaintiffs and a
motion to stay the case pending an ex parte
reexamination of the subject patent by the United States
Patent and Trademark Office (“USPTO”). For the
following reasons, defendant's motion to stay will be
Technologies, Inc. produces so-called tactical flashlights,
which are used as sources of bright light and as tools for
self-defense, for sale to consumers, law enforcement and the
military. It is the assignee of United States Patent No. 7,
866, 841 (“'841 patent”), which was issued in
January, 2011. Telebrands, Inc., a marketing company, owns
exclusive rights to the '841 patent under a license
agreement with Brite-Strike. Emson is a competitor of
Brite-Strike that also produces tactical flashlights.
'841 patent, entitled “Compact Flashlight, ”
is directed toward a small flashlight which is controlled by
a user-operated switch. Brite-Strike utilized the patented
technology to manufacture a tactical flashlight, the mode of
which can be changed by the touch of a finger, purportedly
unlike other flashlights which require two hands to operate.
August, 2016, plaintiffs filed this patent infringement
action. Defendant has denied the substantive claims and
asserted several affirmative defenses and counterclaims. It
has also sought, ex parte, and recently received
leave of the USPTO for, the reexamination of the '841
patent. It now seeks to stay this action pending that
Defendants' Motion to Stay
It is well established that
[c]ourts have inherent power to manage their dockets and stay
proceedings including the authority to order a stay pending
conclusion of a PTO reexamination.
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed.
Cir. 1988) (citation omitted). While courts have the power to
grant a stay if there is a pending reexamination, they are
not required to do so. Viskase Corp. v. Am. Nat'l Can
Co., 261 F.3d 1316, 1328 (Fed. Cir. 2001). The decision
to grant a stay is within the court's discretion.
Id. In evaluating whether a stay is appropriate,
courts consider the following factors:
1) whether a stay would unduly prejudice or present a clear
tactical disadvantage to ...