Key Points

• District of New Jersey Court denies motion to stay patent litigation pending ex parte reexamination when only one of six patents-in-suit remains under PTO review.
• Undue prejudice to a direct competitor weighed strongly against a stay in light of ongoing alleged infringement and the uncertain timeline of potential PTAB and Federal Circuit appeals.
• No meaningful simplification of issues found where most patents have emerged from reexamination and "only a small slice of the case" remains before the PTO.

When five of six patents-in-suit have already emerged from ex parte reexamination (EPR), a pending challenge to the last one is unlikely to justify putting the case on hold.

That’s the lesson to be gleaned from the District of New Jersey's recent denial of Kodak's motion to stay a patent infringement suit as the Court concluded that a stay pending reexamination needs a meaningful share of the case to remain before the PTO, especially in a dispute between direct competitors.

As we discussed in a prior alert, when a patent case involves both district court litigation and parallel U.S. Patent and Trademark (PTO) proceedings, a stay of the litigation is often an attractive option. But as the Fujifilm decision illustrates, that option can become limited as proceedings before the PTO develop

Background

On September 30, 2026, U.S. Magistrate Judge Jessica S. Allen denied Eastman Kodak Company's renewed motion to stay a patent infringement case brought by Fujifilm while ex parte reexamination (EPR) proceedings continued. Only one of the six patents-in-suit was still under review at the PTO.

The case involves six patents covering aspects of lithographic printing plates. Fujifilm sued in March 2024 alleging infringement of four patents, and Kodak added its own two patents through counterclaims in March 2025. In fall 2025, the parties each requested EPR of all six patents and filed competing stay motions. Fujifilm sought a stay limited to Kodak's patents. Kodak sought a stay of the entire case or, in the alternative, no stay at all.

The PTO granted review of all six patents and issued preliminary rejections against three Fujifilm patents and both Kodak patents. As a result, the Court administratively denied the initial cross-motions and ordered renewed briefing, which the parties submitted in April 2026.

While those motions were pending, the PTO's review again changed the picture. Five of the six patents, including all four Fujifilm patents and Kodak's '614 patent, survived EPR. Only Kodak's '063 patent remained under review. The examiner had rejected it on two grounds, and Kodak had filed a response seeking to overcome the rejection. During a conference, Kodak still argued that the whole litigation should be stayed until the '063 patent was resolved which Fujifilm opposed.

The Court advised that it would administratively terminate the pending motions to stay, but permitted Kodak leaver to file a formal motion to stay on an expedited basis to address why a stay remained warranted in view of the changed circumstances.

The Court's Analysis

The moving party bears the burden of showing that a stay is warranted. The Court applied the three factors that judges in the District of New Jersey commonly use in analyzing a motion to stay pending EPR:

• Undue prejudice or tactical disadvantage to the non-moving party.
• Simplification of the issues.
• The stage of the proceedings, including whether discovery is complete and a trial date has been set.

Prejudice weighed strongly against a stay.
The Court stressed that this factor is especially significant when the parties compete directly in the marketplace. It noted that Fujifilm alleged ongoing infringement in a head-to-head market and that none of Fujifilm's asserted patents were still subject to EPR. The Court rejected both of Kodak's counterarguments.

First, Kodak said Fujifilm had waited two years after its last patent issued to bring suit, so a short stay now would not be prejudicial. The Court found Fujifilm's approach reasonable: it enforced counterpart patents in Europe in 2023 and then sued in the United States in early 2024 as part of a “global enforcement campaign.” The Court found this “does not suggest any material delay in enforcing its rights” and that a 2024 filing decision does not bear on “the issue of prejudice given the current posture [of the case] and recent impactful changed circumstances.”

Second, Kodak argued there can be no prejudice from a stay because Fujifilm did not file a preliminary injunction motion. The Court explained that a party may elect not to pursue injunctive relief for many reasons, and that this choice does not mean a stay would cause it no prejudice.

The Court also found that the uncertain length of the remaining EPR added to the prejudice. The parties disagreed on how long the EPR process would take to resolve, with Kodak arguing it was likely to be “short” and Fujifilm asserting that EPR was only likely to be short if Kodak successfully overcame the PTO examiner’s final rejection. On the other hand, if Kodak did not overcome the rejection, potential appeals to the Patent Trial and Appeal Board and possibly the Federal Circuit could follow.

Kodak said it would not seek a stay pending a Federal Circuit appeal, but it made no such commitment about PTAB appeals. Thus, the “unclear timeline” for resolution of the EPR for a single patent added to the prejudice to Fujifilm. The Court also noted that Kodak had not identified any burden or prejudice it would face if the case went forward.

Simplification weighed significantly against a stay.
The Court reasoned that five of the six patents (which were no longer in the EPR process) would go through discovery and trial no matter what happened at the PTO. A stay therefore would not meaningfully simplify the case.

Citing decisions from the District of Delaware, the Court observed that “the simplification factor does not weigh in favor of a stay when only a small slice of the case remains subject to EPR review.”

Stage of the proceedings was neutral or only slightly favored a stay.
The Court noted that neither Markman proceedings nor a trial date had been set. However, the case had been pending for more than two years, a scheduling order had been entered, and the parties had exchanged contentions.

Thus, although “the parties have additional discovery to conduct and other proceedings to be scheduled, the current stage of the proceedings does not clearly warrant a stay.”

Weighing the three factors together, the Court denied the motion and ordered the parties to submit a proposed amended scheduling order within 14 days.

Paul W. Kalish and Jonathan J. Madara are members of the IP Litigation team in Fox Rothschild’s Princeton, NJ office and write about patent litigation decisions in the District of New Jersey. Contact Paul at pkalish@foxrothschild.com or 609.895.6751 and Jonathan at jmadara@foxrothschild.com or 609.844.7428.

This information is intended to inform firm clients and friends about legal developments, including the decisions of courts and administrative bodies. Nothing in this alert should be construed as legal advice or a legal opinion. Readers should not act upon the information contained in this alert without seeking the advice of legal counsel. Views expressed are those of the authors and not necessarily this law firm or its clients.