Brightex Bio-Photonics, LLC v. L'Oreal USA, Inc.

Background

Brightex sued L’Oreal for allegedly infringing two patents: U.S. Patent No. 9,542,595 and U.S. Patent No. 9,842,358. The court previously dismissed the infringement claims involving the ’358 Patent, entered a final judgment on those claims, and Brightex appealed that judgment to the Federal Circuit. The ’595 Patent is the only patent currently at issue in this case.

L’Oreal filed a petition for inter partes review, a Patent and Trademark Office process for reviewing patent claims, asking the agency to cancel claims of the ’595 Patent as invalid based on prior art. L’Oreal stipulated that, if review is instituted, it will not assert in the district-court litigation any invalidity ground that it raised or reasonably could have raised during that review.

Motion to Stay

L’Oreal moved to stay the case while the Patent and Trademark Office decides whether to institute inter partes review. The court considered three factors: the stage of discovery and whether a trial date had been set; whether review would simplify the issues; and whether a stay would unfairly harm Brightex.

The court found that the first factor favored a stay because discovery was at an early stage. Although the parties had exchanged documents and other disclosures, no depositions had occurred, no trial date had been set, claim-construction briefing had not begun, and no substantive motion practice had occurred concerning the ’595 Patent.

The second factor also favored a stay. The court found that review could narrow the case or make some or all of Brightex’s infringement claims moot. The court concluded that the possibility that the Patent and Trademark Office might decline to institute review did not justify denying the stay because any resulting delay was likely to be limited.

The third factor favored a stay because the court found no undue prejudice or tactical disadvantage to Brightex. L’Oreal filed its petition within the applicable one-year statutory period and moved for a stay within one month after filing the petition. The court also found that the parties were not competitors, Brightex sought only money damages, and Brightex had waited from the ’595 Patent’s issuance in January 2017 until November 2024 to bring the action.

Ruling

The court granted L’Oreal’s motion to stay. The action is stayed pending the Patent and Trademark Office’s decision on whether to institute inter partes review. If review is instituted, the stay will continue through the agency’s final written decision. The parties must notify the court when the agency decides whether to accept review and, if it does, when it issues a final written decision.

The court vacated all dates currently set in the case and scheduled a status conference for December 10, 2025, with a joint status report due December 3, 2025. The court vacated the previously scheduled motion hearing and case-management conference, and denied as moot the parties’ stipulation to change the motion-hearing date.