Fleet Connect Solutions LLC v. Forward Thinking Systems LLC

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
Fleet Connect Solutions LLC,
Plaintiff,
-v-
Forward Thinking Systems LLC d/b/a FleetCam,
Defendant.
2:25-cv-5178
(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 nine patents against Defendant Forward Thinking
Systems LLC (“FleetCam”). Before the Court is FleetCam’s motion to stay the litigation pending
completion of United States Patent and Trademark Office (“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 FleetCam on September 15, 2025. (Compl.,
ECF No. 1.) Fleet Connect’s Complaint asserts patent infringement claims against FleetCam
with respect to nine patents (the “Asserted Patents”). (Compl. ¶¶ 1, 17–114.) The Complaint
alleges that FleetCam’s products “practice at least one claim of each of the Asserted Patents.”
(Compl. ¶ 16.) FleetCam filed an Answer to the Complaint on December 5, 2025, and raised
certain affirmative defenses and counterclaims, including, among others, that the patents are
invalid and Fleet Connect’s claims are barred “by one or more of the equitable doctrines of
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 1 of 9 PageID #:
<pageID>

2
laches, estoppel, acquiescence, waiver, and unclean hands.” (ECF No. 15 at 12; see also id. in
toto.)
On December 5, 2025, FleetCam filed the motion seeking a stay on the basis that five of
the nine Asserted Patents are the subject of ex parte reexaminations (“EPRs”) before the USPTO,
initiated by other individuals or entities not party to this litigation. (Mot. Stay, ECF No. 16.)
Attached to FleetCam’s motion are exhibits relating to the reexamination requests. (ECF Nos.
16-2 through 16-14.) FleetCam contends that a stay is warranted because: (1) there are pending
USPTO investigations on five of the nine Asserted Patents; (2) this action is in the early stages of
litigation; (3) resolution of the USPTO investigations would simplify many of the issues in this
litigation, including the scope of discovery, motion practice, and trial, even if the USPTO does
not cancel any of the asserted claims; and (4) Fleet Connect would not be unduly prejudiced
because a stay would encourage settlement discussions and because Fleet Connect would enjoy
the same benefits as FleetCam if the issues in this litigation are simplified and streamlined. (See
Mot. Stay.)
On December 23, 2025, Fleet Connect filed its opposition to the motion to stay, and
attached as exhibits documentation relating to the underlying patents, a recent USPTO
disposition regarding one of the Asserted Patents, and 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. 19, 19-1 through 19-6.) Fleet Connect opposes a stay on the basis that: (1) only four
out of the nine of the Asserted Patents are subject to current USPTO proceedings (which
includes one currently on appeal to the Patent Trademark and Appeal Board); (2) FleetCam is
not a party to those proceedings and would not be bound by rulings in them; (3) the USPTO
investigations will not simplify the issues because many of the Asserted Patents are unrelated to
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 2 of 9 PageID #:
<pageID>

3
one another; (4) the scope of discovery in this action would not be limited by the outcome of
those proceedings; and (5) an indefinite stay would unduly prejudice Fleet Connect. (See Opp.)
FleetCam filed its reply on January 6, 2026. (ECF No. 23.)
LEGAL STANDARD
Courts must “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) (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. Id. 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). In this context, courts consider the following non-exclusive factors in
assessing whether the totality of the circumstances weighs in favor of a stay: “(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. “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 totality of the circumstances, including the three CDX factors,
FleetCam has failed 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.
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 3 of 9 PageID #:
<pageID>

4
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 this litigation. Out of the nine Asserted Patents at issue, only four
remain subject to an active ex parte reexamination or further appellate review by the USPTO.1
FleetCam did not bring those EPR proceedings and “has not agreed to be bound by the outcome
of [them].” (Opp. at 3.) FleetCam argues merely that the EPR proceedings “[have] the potential
to reduce the scope of discovery, motion practice, and eventually trial . . . .” (Mot. Stay at 6)
(emphasis added). Any USPTO finding that is unfavorable to FleetCam’s position, therefore,
may remain subject to challenge in this litigation, and all arguments remain available to
FleetCam regardless of the outcome of the EPR proceedings. 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).
FleetCam additionally points to another case in this District where, in the face of similar
estoppel-based arguments, the court reasoned that it “will still benefit from the . . . reexamination
record.” (Reply at 2 (citing Lederer v. Newmatic Sound Sys., Inc., No. 10-cv-0271, 2011 WL
31189, at *3 (E.D.N.Y. Jan. 4, 2011).) Lederer is distinguishable, however, because it only
involved one patent and the potential for the USPTO investigation to simplify the issues was
therefore substantially higher than it is here, where only four of nine patents are subject to further
USPTO review. 2011 WL 31189, at *1. The additional cases on which FleetCam relies are
1 While FleetCam asserts that “five of the nine Asserted Patents have ordered reexaminations
before the USPTO that are currently underway,” it appears that at least one of those
reexaminations has been resolved. (See Opp. at 2, n.5.) FleetCam has not shown
otherwise. Therefore, only four Asserted Patents remain subject to further review by the
USPTO.
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 4 of 9 PageID #:
<pageID>

5
distinguishable for the same reason. See Reply at 2–3; see also OrthoArm Inc. v. MidAtlantic
Dental, Inc., No. CV 11-7489, 2013 WL 12317880, at *1 (D.N.J. Mar. 14, 2013) (only one
patent at issue); Softview Computer Prods. Corp. v. Haworth, Inc., No. 97-cv-8815, 2000 WL
1134471, at *1 (S.D.N.Y. Aug. 10, 2000) (same).
FleetCam also contends that reexamination may simplify the issues even for the Asserted
Patents not subject to reexamination because “the reexamination records are relevant to other
patents currently at issue.” (Mot. Stay at 10.) This argument is unavailing. As Fleet Connect
points out—and FleetCam does not contest in on reply—most of the Asserted Patents are not
related to one another, and only two are members of the same common line of patents. (See Opp.
at 8–9.) FleetCam’s authority on this issue only addresses related patents, and is therefore
inapposite. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015)
(addressing related patents); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir.
1999) (same). Accordingly, FleetCam has not shown that reexamination may simplify the issues
even for Asserted Patents that are not subject to reexamination.
In this context, even if USPTO findings as to certain patents may later impact this
litigation in some manner, 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-JRG, 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.,
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 5 of 9 PageID #:
<pageID>

6
2014 WL 2854656, at *4; see also Wiesel v. Apple Inc., No. 19-CV-7261, 2021 WL 5038764, at
*3 (E.D.N.Y. Oct. 29, 2021). Here, this action is in the early stages of proceedings; FleetCam 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,
‘[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)); 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.
A. Timing of the Review Request
Documentation submitted by FleetCam demonstrates that the EPR requests were all filed
prior to initiation of this litigation. (Mot. Stay at vi; see also ECF Nos. 16-2 through 16-14.) The
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 6 of 9 PageID #:
<pageID>

7
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
FleetCam filed this motion to stay concurrently with its Answer and approximately three
months after Fleet Connect initiated this action on September 15, 2025. No deadlines have been
set in this action. The timing of the stay request does not suggest that Fleet Connect has suffered
or will suffer undue prejudice because 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 14.) Accordingly, it may take
years for a final determination in the EPR proceedings.
Moreover, the indefinite nature of the requested stay counsels against granting a stay.
Medina, 2022 WL 1555083, at *2 (“[S]tays of indefinite duration are generally disfavored.) The
grant of FleetCam’s requested indefinite stay would unduly prejudice Fleet Connect by
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 7 of 9 PageID #:
<pageID>

8
indefinitely delaying any relief in this action. See also Prestige Jewelry Int'l, Inc., 2012 WL
2899077, at *3 (“[C]ourts in this circuit have regularly found prejudice where a reexamination
would prolong the litigation.”).
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). Here, the parties have provided no information about whether they
compete against each other. In another action before this Court, however, the defendant had
established that Fleet Connect is “a non-practicing entity” and therefore could not be a
competitor. (Fleet Connect Solutions LLC v. Vehicle Tracking Solutions, LLC, No. 2:25-cv-
04453, ECF No. 16 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 FleetCam’s request for an indefinite stay weigh strongly in favor of 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 and the totality of the circumstances, the Court concludes that FleetCam’s
requested stay is unwarranted.
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 8 of 9 PageID #:
<pageID>

9
CONCLUSION
For the reasons set forth above, the Court denies FleetCam’s motion to stay the litigation
pending completion of a USPTO investigation regarding the validity of several of the nine
patents at issue in this action. The Parties shall contact the assigned magistrate judge for a
discovery schedule.
Dated: Central Islip, New York
January 26, 2026
/s/ Nusrat J. Choudhury
NUSRAT J. CHOUDHURY
United States District Judge
Case 2:25-cv-05178-NJC-LGD Document 24 Filed 01/26/26 Page 9 of 9 PageID #:
<pageID>