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IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

TDY INDUSTRIES INCORPORATED, Plaintiff, v. INGERSOLL CUTTING TOOL COMPANY, Defendant.

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Civil Action No. 10-790 Magistrate Judge Bissoon1

ORDER Having considered all of the parties' submissions, the Court will grant Ingersoll Cutting Tool Company's ("Ingersoll's") Motion to stay this litigation pending reexamination of the patent-in-suit. In determining whether to stay a patent infringement action pending reexamination, the Court considers: (1) whether a stay will unduly prejudice or present clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question and the trial of the case, and (3) procedural posture, i.e., whether discovery is complete and whether a trial date has been set. Heraeus Electro-Nite Co., LLC v. Vesuvius USA Corp., 2010 WL 181375, *1 (E.D. Pa. Jan. 11, 2010) (citation to quoted source omitted). As to procedural disposition, Ingersoll filed its initial Request for Inter Partes Reexamination on August 6, 2010, roughly four months after being notified by TDY Industries Incorporated ("TDY") of the alleged infringement. Compare Ingersoll's Br. (Doc. 19) at 1 with TDY's Br. filed at Doc. 10 (noting that correspondence regarding alleged infringement began
1

By consent of the parties, the undersigned sits as the District Judge in this case. See Consent forms (Docs. 3 & 12).

in April, 2010). Ingersoll's reexamination request came less than two months after TDY filed its Complaint, and the procedural posture of this case weighs in favor of a stay. See, e.g., Heraeus, 2010 WL 181375 at *2 (holding same where, despite court's establishment of discovery deadline, litigation was at "a very early stage"); Wall Corp. v. BondDesk Group, L.L.C., 2009 WL 528564, *2 (D. Del. Feb. 24, 2009) (holding same where, as here, motion for stay was presented "prior to the court's [initial] scheduling conference and entry of a scheduling order").2 Turning to undue prejudice, the Court finds TDY's complaints substantially mitigated by Ingersoll's agreement to "no longer make, use, offer to sell, sell, import or distribute any [of the allegedly infringing] products in the United States, until the earlier of: (a) the date on which the [Patent] Examiner issues a Right of Appeal Notice . . . in the pending Reexamination, or (b) September 15, 2013, [i.e.,] 3 years away, a period longer than the average time between the filing of a reexamination request and issuance of a reexamination certificate." See Ex. 3 to Doc. 19; see also, e.g., Heraeus, 2010 WL 181375 at *1 (finding lack of undue prejudice based on similar agreement) and K.G. Motors, Inc. v. Specialized Bicycle Components, Inc., 2009 WL 2179129, *4 (W.D.N.Y. Jul. 22, 2009) (same). Although TDY is correct that Ingersoll has not "incorporate[d this] . . . promise into its [current] proposed court order," see TDY's Opp'n Br. (Doc. 23) at 5, the Court's grant of a stay will be conditioned upon the same. See discussion infra (instructing parties to submit, jointly or individually, proposed order(s) consistent with rulings herein).3

Given the narrow time frames in question, the Court has little reason to believe that Ingersoll's conduct has in any way been untoward. Cf. TDY's Doc. 10 at 4 (suggesting that Ingersoll's "candid[] communicat[ion]" of its intention to seek reexamination evinced "[a] strategy [of] delay"). 3 The Court declines to adopt those conditions proposed by TDY, and rejected by Ingersoll, in TDY's counter-proposal for a consented stay. Compare Ex. D to Doc. 19 (TDY's counterproposal) with Ingersoll's Br. at 5-6 (objecting to

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