Zebra Techs. Corp. v. Tpenex Medical, LLC, No. 18 C 4711, Slip Op. (N.D. Ill. Dec. 13, 2018) (Ellis, J.).

Judge Ellis granted defendants’ motion to stay this patent and Lanham Act case pending an earlier case defendants filed in the Eastern District of Missouri against plaintiffs (collectively “Zebra”) involving a covenant not to sue in an agreement involving plaintiff Laser Band and defendant Ward Kraft.

Of particular note, the Court held as follows:

  • Zebra was not prejudiced by a stay:
    • It had already delayed as long as two years in bringing suit;
    • It had not sought a preliminary injunction; and
    • Money damages would be adequate to compensate Zebra should it eventually succeed on its claims.
  •  A stay had the potential to simplify the issues before the Court because a determination as to the effect and scope of the covenant not to sue was a threshold issue for the instant patent and Lanham Act claims, at least as to certain of the parties and potentially all of them.
  • A stay would reduce the litigation burden on the parties and the Court. The effect and scope of the covenant was a threshold issue for Zebra’s twelve count complaint asserting 199 patent claims. The Court further detailed the potential burden and complexity of the case noting that Zebra’s initial infringement contentions were 182 pages.
  • The fact that the E.D. Missouri action may, at best, only resolve a subset of the claims in the instant case did not prevent a stay.