Posted On: February 12, 2013 by Gregory J. Brodzik

Judge Sleet grants defendants’ motion to stay litigation pending post-grant review and orders stay for defendants that did not join motion

On June 20, 2012, plaintiff Market-Alerts Pty. Ltd. filed six lawsuits, each alleging that multiple defendants infringe U.S. Patent No. 7,941,357, which “addresses a method of informing users of stock market events.” Defendants from the 12-780, 12-781, 12-782, and 12-783 actions moved the Court to stay litigation “pending post-grant review pursuant to § 18(b) of the AIA,” and Chief Judge Sleet granted that motion in a recent opinion. Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P., et al., C.A. No. 12-780-GMS, at 4, 4 n.3, 18 (D. Del. Feb. 5, 2013). Judge Sleet also ordered that the two other related actions, 12-784 and 12-785, be stayed despite the fact that defendants from those actions did not join the motion to stay. Id. at 18.

Prior to filing the motion to stay, several defendants petitioned for post-grant review of plaintiff’s asserted patent under 35 U.S.C. § 321 and § 18 of the AIA, which provides authority “to reexamine the validity of covered business method patents (‘CBM review’).” Id. at 4-5. In his opinion, Judge Sleet relied on § 18(b), which sets forth the factors that the Court must consider when determining whether to stay litigation during the pendency of the post-grant review proceedings. Id. at 6. As Judge Sleet explained, the § 18(b) test “closely resembles” the test to assess a “motion to stay pending inter partes or ex parte reexamination.” Id. However, § 18(b) additionally considers “whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.” Id. at 6 (quoting 35 U.S.C. § 18(b)(1)).

Judge Sleet found that, under § 18(b), staying the actions was appropriate because there was a reasonable chance that the petition would be granted and that one or more of the claims could be invalidated. See id. at 9-12. In addition, a stay was appropriate because the cases were in their “earliest possible stage.” Id. at 13. Judge Sleet did consider the fact that the CBM review was in its early stages, weighing against a stay, but Judge Sleet found that “the potential for excessive prejudice [was] reduced by the fact that the parties do not directly compete with each other, and there is no evidence of dilatory motive on the part of the defendants.” Id. at 16. In order to “reduce the burden of litigation on the parties and on the court” if the Court were to stay only 4 of the 6 related cases, Judge Sleet stayed all 6 related actions, as “an exercise of [the Court’s] discretion and in the interests of judicial and litigant economy.” Id. at 17.

Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P., et al., C.A. No. 12-780-GMS (D. Del. Feb. 5, 2013) by