The opinion of the court was delivered by: Walls, Senior District Judge
This matter comes before the Court upon motion by Defendants Calrec Audio, Ltd. ("Calrec") and D&M Holdings U.S. Inc. ("D&M") (collectively, "Defendants") to stay the matter pending reexamination of United States Patent Nos. 7,682,004 and 7,784,968 (together, the "patents-in-suit"), both entitled "Slide Controller for an Audio Mixer." Plaintiff Studer Professional Audio GmbH ("Studer") opposes the Motion to Stay. The Court decides the matter without oral argument pursuant to Federal Rule of Civil Procedure 78. The Court grants the Motion to Stay pending the reexamination of the patents-in-suit by the United States Patent and Trademark Office ("PTO").
FACTUAL AND PROCEDURAL BACKGROUND
Plaintiff Studer filed its Complaint in this action on October 20, 2011, alleging that Defendants are "importing, making, using, selling, and/or offering for sale audio mixing consoles" that violate 35 U.S.C. § 271 by directly infringing on the patents-in-suit. Compl. 4.
The same day as filing the Complaint, Studer offered to discuss an early resolution of the case with Defendants. Opp'n to Defs.' Mot. to Stay 5.
For approximately three months, the parties engaged in negotiations in hopes of resolving the dispute. Opp'n 5-6. Ultimately, Studer decided that the parties would not resolve the dispute and on February 6, 2012, attempted to formally serve the Defendants. Id. at 6. In response, Defendants asked for an additional extension of two-weeks for Defendants to respond to the Complaint, and Studer agreed. Id.
On February 7, 2012, Defendants requested an ex parte reexamination of all of the patents-in-suit with the PTO, claiming the patents were not valid "due to prior art patents and printed publication not considered by the Examiner." Defs.' Mot. to Stay 1. On April 3, 2012, the PTO found that substantial new questions existed with respect to the '004 Patent. Stay 1. On April 15, 2012, the PTO found that substantial new questions existed with respect to the '968 Patent. Id.
The Eastern District of Virginia granted Defendants' Motion to Transfer this case to this District on April 13, 2012. Id. at 2. The only activity in this lawsuit has been the initial pleadings filed by the parties and the briefing on the Motion to Transfer. Id. A scheduling order has not been entered, discovery has not yet begun, and the trial date has yet to be set. Id.
On June 8, 2012, the PTO issued a First Office Action that rejected all claims of both patents-in-suit. Studer has the option of replying and requesting either "reconsideration or further examination, with or without amendment." 37 C.F.R. § 1.111 (2012).
It is well-established that "the power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants." Landis v. North Am. Co., 299 U.S. 248, 254 (1936). The decision to stay a patent case in which a reexamination by the Patent Office has been requested is within the sound discretion of the district court. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426--27 (Fed.Cir.1988) (noting that "[c]courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.") (internal citations omitted).
In deciding whether to stay a matter pending reexamination, courts have developed a three-part test. A court should consider "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set." Wyeth v. Abbott Laboratories, No. 09-CV-4850, 2011 WL 380902 *2 (D.N.J. Feb. 1, 2011) (citing Xerox Corp. v. 3Com Corp., 69 F. Supp 2d 404, 406 (W.D.N.Y.1999). Courts weigh the costs and benefits associated with granting a stay pending reexamination of a patent.
Each of the three factors weighs in favor of ...