The opinion
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 24-cv-21226-RUIZ/TORRES
EDWIN A. HERNANDEZ and
EGLA CORP.,
Plaintiffs,
v.
STINGRAY GROUP INC., et al.,
Defendants.
___________________________________________/
ORDER ON DEFENDANTS’ MOTION TO EXTEND STAY
This cause comes before the Court on Defendants, Stingray Music USA, Inc.
(“Stingray”); AT&T Enterprises, LLC (“AT&T”); Millicom International Services,
LLC (“Millicom”); and Blue Stream Communications, LLC’s (“Blue Stream”)
(collectively, “the Movants”) partially opposed Motion to Extend the Current Stay.
[D.E. 299]. Plaintiffs and the non-moving Defendants, Mood Media, LLC (“Mood
Media”), have filed responses [D.E. 303, 310], and the Movants have filed a reply.
[D.E. 323]. The Motion, therefore, is ripe for disposition.1 After careful review of the
briefing and relevant authorities, and for the reasons set forth below, the Motion is
GRANTED in part and DENIED in part.
1 On March 10, 2025, the Honorable Rodolfo A. Ruiz II referred all pre-trial matters
to the Undersigned Magistrate Judge for disposition. [D.E. 203].
I. BACKGROUND
On April 24, 2025, the Court stayed this case after Plaintiffs’ counsel was
terminated. In the pending Motion, the Movants seek to extend that stay as to all
claims, given that the Patent Trial and Appeal Board (“PTAB”) has commenced an
inter partes review of all claims of Plaintiffs’ asserted patents. Alternatively, the
Movants request at least a stay of Plaintiffs’ patent claims.
Plaintiffs and Mood Media, meanwhile, partially oppose the Motion. They
agree that the patent claims in this case (Counts 3, 4, and 5) should be stayed pending
the PTAB’s inter partes review. But they argue that as to the remaining state law
claims—Counts 1 and 2 (trade-secret misappropriation), and Count 6 (breach of
contract)—the stay should not be extended.
II. ANALYSIS
We will first assess whether a stay is appropriate for the patent claims, before
assessing whether Plaintiffs’ state law claims should also be stayed.
A. Patent Claims
“Courts have inherent power to manage their dockets and stay proceedings,
including the authority to order a stay pending conclusion of a PTO” proceeding.
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). Moreover, “a number
of courts reason that such stays should be liberally granted when there is a pending
administrative proceeding pending before the USPTO.” Automatic Mfg. Sys., Inc. v.
Primera Tech., Inc., No. 6:12-CV-1727-ORL-37, 2013 WL 1969247, at *1 (M.D. Fla.
May 13, 2013) (citing Sabert Corp. v. Waldington N. Am., No. 06–5423, 2007 WL
2705157, at *6 (D.N.J. Sept.14, 2007)). In assessing a motion to stay, courts consider
three factors: “(1) whether the stay will unduly prejudice or present a clear tactical
disadvantage to the nonmoving party; (2) whether the stay will simplify issues in
question and trial of the case; and (3) whether discovery is complete and whether a
trial date has been set.” Targus Int'l LLC v. Grp. III Int'l, Inc., No. 20-21435-CIV,
2021 WL 542675, at *2 (S.D. Fla. Jan. 8, 2021) (citing Roblor Mktg. Grp., Inc. v. GPS
Indus., Inc., 633 F. Supp. 2d 1341, 1347 (S.D. Fla. 2008)).
All parties agree that the patent claims in this case should be stayed pending
the PTAB’s inter parties review of the asserted patents. Further, the PTAB’s review
is not merely a possibility, as it was when the Movants initially filed a motion for stay
[D.E. 184]; rather, the PTAB has already initiated its inter parties review.
In light of this, each relevant factor weighs in favor of a stay. That is, (1) no
party will be prejudiced, as the only potentially-prejudiced party would be Plaintiffs,
who agreed to the stay; (2) a stay of the patent issues could certainly simplify the
issues for trial, as the inter partes review may obviate the need for claim construction,
and perhaps the need to decide the patent claims altogether, and (3) discovery is not
yet complete and trial is not yet on the horizon (and, even if this factor weighed
slightly against a stay, that does not overcome the overwhelming impact of the
previous two factors). See Andersons, Inc. v. Enviro Granulation, LLC, No. 8:13-CV-
3004-T-33MAP, 2014 WL 4059886, at *4 (M.D. Fla. Aug. 14, 2014) (granting motion
for stay pending a potential inter parties review, because, the court founds, “the
litigants and the Court [would otherwise] invariably expend significant time and
resources conducting discovery, engaging in claim construction and preparing for
trial”).
Accordingly, the Motion is granted to the extent that it seeks to stay the patent
claims (Counts 3, 4, and 5) in this case. See Targus Int'l LLC, 2021 WL 542675, at *2
(“In sum, the Court finds that a stay may prevent unnecessary expenditure of
substantial resources and that, should the PTAB render a final decision on the inter
partes review, it will help streamline this case and, at a minimum, allow the parties
to more effectively focus their claims.”); KPR U.S., LLC v. Lifesync Corp., No. 22-CV-
60468-RAR, 2022 WL 4598640, at *2 (S.D. Fla. Sept. 30, 2022) (quoting Targus, 2021
WL 542675, at *1) (granting motion to stay pending PTAB proceedings and noting
that “‘[s]tays pending such reviews are granted routinely in order to avoid
inconsistent results, obtain guidance from the PTAB, or avoid needless waste of
judicial resources’”).
B. Non-Patent Claims
As to the remaining, non-patent claims, Mood Media and Plaintiffs argue that
each relevant factor weighs against a stay. The Movants, meanwhile, maintain that
a stay of all proceedings is the most efficient and proper course of action.
1. Whether a stay will simplify the issues
As to this first factor, a stay would not serve to simplify the non-patent claims.
Indeed, the trade secret and breach of contract claims do not implicate the asserted
patents and are distinct from the patent claims. The patents’ potential invalidity has
no bearing on these state law claims. Accordingly, this factor weighs in favor of
denying the Motion as to the non-patent claims. See MiMedx Grp., Inc. v. Liventa
Bioscience, Inc., No. 1:14-CV-1178-MHC, 2015 WL 13907479, at *4 (N.D. Ga. Apr. 6,
2015) (finding that this factor weighed against a stay because, in part, “there are non-
patent claims at issue in the litigation, which will be in no way affected by any IPR”).
2. Whether discovery is complete and a trial date set
Typically, “‘[t]he earlier the stage of proceedings, the greater the reason to
grant a stay.’” Epic Tech, LLC v. Pen-Tech Assocs., Inc., No. 1:20-CV-2428-MHC, 2020
WL 8258736, at *3 (N.D. Ga. Sept. 28, 2020) (quoting Surfcast, Inc. v. Microsoft Corp.,
No. 2:21-cv-333-JDL, 2014 WL 6388489, at *2 (D. Me. Nov. 14, 2014)).
Here, discovery is well underway, a trial date is set, and Mood Media has
already filed a motion for summary judgment [D.E. 304] (and the Stingray
Defendants seek to do the same [D.E. 328]). The case, therefore, is no longer in its
infancy—indeed, the non-patent claims are potentially on the brink of disposition.
Consequently, this factor weighs in favor of denying the Motion as to the non-
patent claims. See MiMedx Grp., Inc. v. Liventa Bioscience, Inc., No. 1:14-CV-1178-
MHC, 2015 WL 13907479, at *3 (N.D. Ga. Apr. 6, 2015) (finding this factor weighed
against a stay because “this case is not in its initial stages and a significant portion
of discovery has been served and briefs have been filed”); Cooper-Levy v. City of
Miami, No. 22-CV-21939, 2023 WL 4105531, at *2 (S.D. Fla. June 21, 2023) (finding
this factor weighed against a stay because the case was in an “advanced litigation
posture”).
3. Whether any party is prejudiced
Next, we assess prejudice. Crucially, Mood Media: (1) is a defendant to only
the non-patent claims, and (2) has already filed a motion for summary judgment. To
stay all claims, then, would heavily prejudice Mood Media. They are a party to this
case only because of the state law claims, and are actively seeking expedient
disposition.
As Mood Media points out, Mood Media is entitled to a timely resolution of this
case, and “the case is now at a stage where Mood Media can seek judgment as a
matter of law and be awarded its’ attorneys fees.” [D.E. 303 at 2]. The Movants have
not provided a persuasive reason to delay Mood Media’s efforts, considering that the
patent claims have no legitimate bearing on the non-patent claims. See ThermoLife
Int'l, LLC v. Hi-Tech Pharms., Inc., No. 1:15-CV-00892-ELR, 2019 WL 5597311, at
*3 (N.D. Ga. Sept. 9, 2019), report and recommendation adopted, 2019 WL 5550001
(N.D. Ga. Oct. 3, 2019)) (finding that this factor weighs in favor of a stay “[b]ecause
this delay and uncertainty unduly prejudices Defendants from having their day in
this Court,” especially without a compelling reason justify that delay).
And the Movants’ best argument against prejudice is that “[t]he merits of
[Mood Media’s] motion for summary judgment will not fade over the next few months
….” [D.E. 323 at 2]. This is not sufficient reason for the Court to institute a stay of
the non-patent claims. And further, there is no guarantee that the PTAB will finalize
its review in the “next few months”; as Mood Media posits in its response, the PTAB’s
written decision could certainly take much longer. See Payrange, Inc. v. Kiosoft
Techs., LLC, No. 20-20970-CIV, 2020 WL 9158402, at *2 (S.D. Fla. Nov. 23, 2020)
(citing Patent Asset Licensing, LLC v. Bright House Network, LLC, 2016 WL 4431574,
at *2 (M.D. Fla. Aug. 22, 2016)) (“If the PTAB institutes an inter partes review, it
must issue a final written decision either cancelling or upholding the claims within
one year from the date of the decision to institute an inter partes review.”)
Mood Media has provided a persuasive argument that it would face undue
delay of the disposition of the state law claims (which do not hinge on the inter pares
review), while the Movants provide no compelling reason why that delay would be
justified. Thus, this factor also weighs against a stay of the non-patent claims.
4. Conclusion
In sum, the factors that weigh in favor of staying the patent claims simply do
not translate to the distinct, non-patent claims. Further, Mood Media—a defendant
to only the non-patent claims—faces undue delay if a stay is implemented. This
factor, coupled with an unpersuasive showing that a stay of the non-patent claims is
warranted, leads the Court to deny the Motion to the extent that it seeks to stay the
non-patent claims.
III. CONCLUSION
For the reasons set forth above, the Movants’ Motion to Extend the Stay [D.E
299] is GRANTED in part and DENIED in part.
Plaintiffs’ patent claims (Counts 3, 4, and 5) shall remain stayed until the
PTAB issues its’ inter partes review. At that time, the parties shall file a motion to
lift the stay.
The remainder of the Motion is denied; as to Plaintiffs’ non-patent claims
(Counts 1, 2, and 6), the Court’s scheduling order [D.E. 302] remains in full effect.
DONE and ORDERED in Chambers at Miami, Florida this 6th day of
August, 2025.
/s/ Edwin G. Torres
EDWIN G. TORRES
United States Magistrate Judge
.