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Judge Grants Stay in NoTubes Lawsuit

Published July 28, 2009

ROCHESTER, NY (BRAIN)—A federal judge granted a stay late last month in a patent infringement lawsuit between the parent company of Stan’s NoTubes and Specialized.

The delay will give the U.S. Patent and Trademark Office time to re-examine the validity of patent in question: NoTubes’ 846 patent for a tubeless wheel rim.

K.G. Motors, Inc. sued Specialized last September, claiming Specialized infringed the 846 patent by manufacturing and selling certain tubeless wheels and rims, including the company’s Roval brand wheels. K.G. Motors said the technology in the patent was invented by NoTubes’ founder and owner Stan Koziatek.

Specialized requested the stay last December after the U.S. Patent Office granted its request to re-examine the 846 patent. Specialized argued that the re-examination process would likely result in the narrowing or rejection of NoTubes’ patent claims, and therefore simplify the issues in the case and reduce litigation costs for both sides.

NoTubes, however, countered that if the stay were granted Specialized, by virtue of its larger size and more substantial resources, would continue to infringe on NoTubes’ patent and unfairly gain a larger share of the market, threatening NoTubes’ viability.

The judge in the case, Marian W. Payson, disagreed.

In her July 22 decision to grant the stay, Payson said that NoTubes’ assertion that the stay would harm its business wasn’t supported by any facts about the size of Specialized, its resources or revenues, its share of the tubeless market or the effect that the sales of the allegedly infringed product has had on NoTubes’ business. Also, in an earlier court hearing Specialized said that it was no longer manufacturing the wheel rims and would stop selling them after this year.

Payson granted the stay until further notice from the court and directed attorneys on both sides to contact the court in writing within seven days of a decision by the U.S. Patent Office on the re-examination of the patent. Also, Specialized is required to give NoTubes at least four weeks notice if it intends to resume manufacturing or selling the wheels after Dec. 31.

—Nicole Formosa

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