Fleet Connect Solutions LLC v. Vehicle Tracking Solutions, LLC

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
Fleet Connect Solutions LLC,
Plaintiff,
-v-
Vehicle Tracking Solutions, LLC, doing business as
IntelliShift,
Defendant.
2:25-cv-4453
(NJC) (LGD)
ORDER
NUSRAT J. CHOUDHURY, United States District Judge:
This action involves patent infringement claims brought by Plaintiff Fleet Connect
Solutions LLC (“Fleet Connect”) asserting seven patents against Defendant Vehicle Tracking
Solutions, LLC (“IntelliShift”). Before the Court is IntelliShift’s motion to stay the litigation
pending completion of USPTO investigations regarding the validity of several of the patents at
issue. For the reasons set forth below, the Court denies the motion to stay.
BACKGROUND
Fleet Connect commenced this action against IntelliShift on August 8, 2025. (Compl.,
ECF No. 1.) Fleet Connect’s Complaint asserts patent infringement claims against IntelliShift
with respect to seven patents (the “Asserted Patents”). (Compl. ¶¶ 1, 20–96.) The Complaint
alleges that IntelliShift’s products “practice at least one claim of each of the Asserted Patents.”
(Compl. ¶ 19.) IntelliShift filed an Answer to the Complaint on November 25, 2025 and raised
certain affirmative defenses and counterclaims, including, among others, that the patents are
invalid and Fleet Connect’s claims are barred based upon prosecution history estoppel. (ECF No.
13.)
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On December 4, 2025, IntelliShift filed the instant motion to stay, seeking a stay on the
basis that several of the Asserted Patents are the subject of ex parte reexaminations (“EPR”)
before the United States Patent and Trademark Office (“USPTO”), initiated by other individuals
or entities not party to this litigation. (Mot. Stay, ECF No. 16.) Attached to IntelliShift’s motion
are exhibits relating to the reexamination requests. (ECF Nos. 16-1 through 16-11.) IntelliShift
contends that a stay is warranted because: (1) there are pending USPTO investigations on five of
the Asserted Patents; (2) resolution of the USPTO investigations would simplify many of the
issues in this litigation, including the scope of discovery, motion practice, and trial; (3) this
action is in the early stages of litigation; and (4) Fleet Connect would not be unduly prejudiced
because it chose to initiate this action after the EPR requests had been filed. (See Mot. Stay.)
On December 19, 2025, Fleet Connect filed its opposition to the motion to stay, and
attached an exhibit relating to a recent USPTO disposition regarding one of the Asserted Patents,
as well as a recent opinion from the Eastern District of Texas ruling on a motion to stay in an
action involving many of the same patents at issue here. (ECF Nos. 20, 20-1, 20-2.) Fleet
Connect opposes a stay on the basis that only four out of seven of the Asserted Patents are
subject to current EPR proceedings, Defendants are not a party to those proceedings and would
not be bound by rulings in them, the scope of discovery in this action would not be limited by the
outcome of those proceedings, and an indefinite stay would unduly prejudice Fleet Connect. (See
Opp.)
LEGAL STANDARD
Courts are obligated “to secure the just, speedy, and inexpensive determination of every
action.” Fed. R. Civ. Proc. 1. “[A] stay is an intrusion into the ordinary processes of
administration and judicial review, and . . . should be granted only in ‘rare circumstances.’”
Medina v. Angrignon, No. 15-cv-0427, 2022 WL 1555083, at *2 (W.D.N.Y. May 17, 2022)
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(quoting Maldonado-Padilla v. Holder, 651 F.3d 325, 328 (2d Cir. 2011) and Landis v. N. Am.
Co., 299 U.S. 248, 255 (1936)). “[S]tays of indefinite duration are generally disfavored. Medina,
2022 WL 1555083, at *2.
Nevertheless, “[d]istrict courts have the inherent power to manage their dockets, which
includes issuing a stay pending the conclusion of review proceedings before the USPTO.” CDX
Diagnostics, Inc. v. U.S. Endoscopy Grp., Inc., No. 13-cv-05669, 2014 WL 2854656, at *2
(S.D.N.Y. June 20, 2014). “Courts generally consider three factors in deciding a motion to stay
pending review by the PTO: ‘(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.’” Id. “These factors are not exclusive, however, and in the end, an overarching
consideration of the circumstances in their totality governs.” Id. “The burden is on the movant to
establish that a stay is warranted.” Goodman v. Samsung Elecs. Am., Inc., No. 17-cv-5539, 2017
WL 5636286, at *2 (S.D.N.Y. Nov. 22, 2017).
DISCUSSION
Upon consideration of the three CDX factors, IntelliShift has not met its burden to show
that a stay is warranted. Although this action is in the early stages, a stay would not simplify the
issues in this litigation and would unduly prejudice Fleet Connect.
I. 	Simplification of the Issues
With respect to the first stay analysis factor, a stay would not have a meaningful effect in
simplifying the issues in question in this litigation. Out of the seven Asserted Patents at issue in
this litigation, only four1 of them remain subject to an active ex parte reexamination before the
1 While IntelliShift asserts that “the USPTO has granted reexaminations on five of the seven total
asserted patents against IntelliShift,” it appears that at least one of those reexaminations has been
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USPTO. Critically, however, IntelliShift did not bring those EPR proceedings and “has not
agreed to be bound by the outcome of [them].” (Opp. at 2.) IntelliShift does not make any
assertion to the contrary, but instead asserts only that the EPR proceedings “will likely cancel or
narrow at least some of the asserted claims” and that these proceedings “[have] the potential to
reduce the scope of discovery, motion practice, and eventually trial.” (Mot. Stay at 3) (emphasis
added). Any USPTO finding that is unfavorable to IntelliShift’s position, therefore, may remain
subject to challenge in this litigation and all arguments remain available to IntelliShift regardless
of the outcome of the EPR proceedings. Therefore, contrary to IntelliShift’s contention, a stay is
unlikely to simplify the issues in the litigation. See, e.g. Prestige Jewelry Int'l, Inc. v. BK
Jewellery HK, No. 11-cv-2930, 2012 WL 2899077, at *2 (S.D.N.Y. July 16, 2012) (finding that
a stay would not simplify the issues because USPTO’s rulings would not be binding).
Accordingly, even if USPTO findings as to certain patents may later impact this litigation
in some manner, this Court concurs with the reasoning of another court that “the interests of
justice will be better served by dealing with that contingency when and if it occurs, rather than
putting this case on hold for an indefinite and lengthy period of time.” Lennon Image Techs.,
LLC v. Macy’s Retail Holdings, Inc., No. 2:13-CV-00235, 2014 WL 4652117, at *3 (E.D. Tex.
Sep. 18, 2014). Accordingly, the first factor in the stay analysis counsels against granting a stay.
II. 	Stage of the Proceedings
The second factor, which requires considering the stage of the proceedings, weighs in
favor of a stay when an action is in the early stages of its lifespan. See CDX Diagnostics, Inc.,
2014 WL 2854656, at *4; see also Wiesel v. Apple Inc., No. 19-CV-7261, 2021 WL 5038764, at
resolved. (See Opp. at 2, n.2.) IntelliShift has not shown otherwise. Therefore, as far as this
Court is aware, only four reexamination requests remain pending.
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*3 (E.D.N.Y. Oct. 29, 2021). “However, ‘[e]ven where a case is in its early stages of litigation, a
stay should still be denied if it offers limited potential to narrow the issues in the case and the
non-moving party will suffer undue prejudice by the delay.’” CDX Diagnostics, Inc., 2014 WL
2854656, at *4 (citing TouchTunes Music Corp. v. Rowe Int’l Corp., 676 F. Supp. 2d 169, 178
(S.D.N.Y. 2009)). Here, this action is in the early stages of proceedings; IntelliShift has filed an
Answer to the Complaint, but the parties have not yet commenced discovery or dispositive
motion practice. Therefore, this factor weighs slightly in favor of a stay. However, even where a
case is in its early stage of litigation, a stay should still be denied if the other stay factors weigh
against granting a stay. See CDX Diagnostics, Inc., 2014 WL 2854656, at *4; see also Grecia v.
MasterCard, Inc., No. 15-cv-9059, 2017 WL 11566955, at *3 (S.D.N.Y. Apr. 3, 2017)
(“[C]ourts generally decline to stay early-stage cases where the other two factors weigh in the
opposite direction.”).
III. 	Undue Prejudice to Fleet Connect
This third factor involves considering whether the grant of a stay would prejudice the
nonmoving party—Fleet Connect. “Mere delay in the litigation does not establish undue
prejudice.” CDX Diagnostics, Inc., 2014 WL 2854656, at *4. “Four subfactors are germane to
the undue prejudice inquiry: (1) the timing of the request for the review; (2) the timing of the
request for a stay; (3) the status of the review proceeding; and (4) the relationship of the parties.”
Think Prods., Inc. v. ACCO Brands Corp., No. 14-cv-6659, 2015 WL 13955492, at *2 (E.D.N.Y.
June 19, 2015). Upon consideration of all four subfactors, this Court finds that a stay would
unduly prejudice Fleet Connect.
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A. Timing of the Review Request
IntelliShift notes that the EPR requests were all filed prior to initiation of this litigation.
(Mot. Stay at 5.) The timing of the review request does not suggest that Fleet Connect will be
unduly prejudiced by a stay of this action, as it was aware of the pending requests before it
initiated this litigation as a plaintiff.
B. Timing of the Stay Request
IntelliShift filed this motion to stay shortly after filing its Answer and four months after
Fleet Connect initiated this action on August 8, 2025. No deadlines have been set other than an
initial conference before Magistrate Judge Dunst on February 11, 2026. The timing of the stay
request does not suggest that Fleet Connect has or will suffer undue prejudice, as the stay
briefing has not required any extensions or adjournments or otherwise caused any disruption to
the progress of the proceedings.
C. Status of the Review Proceeding
The third factor weighs in favor of finding that a stay would prejudice Fleet Connect
because, as another court found in an action brought by Fleet Connect against a different
defendant, EPR proceedings related to many of the same patents at issue here “have only a
remote chance of simplifying the case because such proceedings do not have statutory deadlines .
. . and only about 14% of such proceedings result in cancellation of all challenged claims.” Fleet
Connect Solutions LLC v. UAB Gurtam, No. 2:25-cv-00661, Order Denying Motion to Stay
(ECF No. 34), at 1–2 (E.D. Tex. Dec. 3, 2025). The EPR proceedings have not concluded, and
Fleet Connect intends to “appeal any adverse final decision by the USPTO” including to the
Court of Appeals for the Federal Circuit if necessary. (Opp. at 5.) Accordingly, it may take years
for there to be a final determination in the EPR proceedings. As a result, the grant of a
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IntelliShift’s requested indefinite stay would result in more than a “mere delay” to the litigation
and would unduly prejudice Fleet Connect by indefinitely delaying any relief in this action. See
also Prestige Jewelry Int’l, Inc. v. BK Jewellery HK, No. 11-cv-2930, 2012 WL 2899077, at *3
(S.D.N.Y. July 16, 2012) (“[C]ourts in this circuit have regularly found prejudice where a
reexamination would prolong the litigation.”). The indefinite nature of this request counsels
against the granting of a stay. Medina, 2022 WL 1555083, at *2 (“[S]tays of indefinite duration
are generally disfavored.)
D. Relationship of the Parties
“Where the parties are competitors, there is certainly the real possibility of undue
prejudice.” Slingshot Printing LLC v. Canon U.S.A., Inc., No. 22-cv-123, 2022 WL 17361232, at
*5 (E.D.N.Y. Dec. 1, 2022). IntelliShift maintains, and Fleet Connect does not contest, that Fleet
Connect is “a non-practicing entity” and therefore the parties “are not, and cannot be,
competitors.” (Mot. Stay at 5.) Therefore, the relationship of the parties does not suggest that
Fleet Connect has been unduly prejudiced.
Considering all of the subfactors together, the fact that the EPR proceedings and potential
appeal of any decisions rendered through those proceedings may take years to conclude, along
with IntelliShift’s request for an indefinite stay weigh strongly in favor of a finding that the grant
of the requested stay would unduly prejudice Fleet Connect.
Accordingly, two of the motion to stay factors weigh against granting a stay, while the
second factor is neutral. Although this action is in the early stages, a stay would not simplify the
issues in this litigation and would unduly prejudice Fleet Connect. After close consideration of
all three of the factors, the Court concludes that IntelliShift’s requested stay is unwarranted.
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CONCLUSION
For the reasons set forth above, the Court denies IntelliShift’s motion to stay the litigation
pending completion of a USPTO investigation regarding the validity of several of the seven
patents at issue in this action. The Parties shall proceed with the initial conference before
Magistrate Judge Dunst on February 11, 2026.
Dated: Central Islip, New York
January 21, 2026
/s/ Nusrat J. Choudhury
NUSRAT J. CHOUDHURY
United States District Judge
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