Judge Sue L. Robinson recently decided defendant’s motion to stay in Versata Software, Inc., et al. v. Callidus Software, Inc., C.A. No. 12-931-SLR (D. Del. May 8, 2014). In its discussion, the Court also indicated that it will now allow no more than two patents to be presented to any one jury at trial. See id. at 5 n.7
Plaintiffs’ three patents-in-suit are covered business method (“CBM”) patents, and defendant has challenged their validity before the PTAB pursuant to Section 18 of the AIA. Id. at 2. However, defendant “chose to seek limited review before the PTAB on a subset of the patent claims at issue.” Id. at 4.
The PTAB had granted review of the patents and must issue its final written decision on or before March 2015, but may extend the deadline up to six months. Id. at 2. The trial in this case is scheduled for October 2015, soon after what would be the PTAB’s extended deadline to issue a final decision.
Under these facts, the Court was “not convinced” that post-grant review of only a subset of claims would meaningfully simplify the litigation. Id. at 4. The Court observed that defendant was using a stay “as both a sword and a shield” given the fact that defendant was also asserting its patents against plaintiffs, thus “moving forward on its interests but denying [plaintiffs] the opportunity to do the same, thus presenting a clear tactical advantage for . . . the moving party.” Id. Furthermore, defendant was “defending against the asserted claims of infringement aggressively, having engaged the court and [plaintiff] in a preliminary motion practice [namely, motions to dismiss and/or transfer, id. at 2] before resorting to the administrative avenue for relief and the resulting stay motion. Under the circumstances of this case, [defendant’s] tactics have actually increased the burdens of litigation, rather than reduced them.” Id. at 4.
The Court did grant the motion to stay with regard to one of plaintiff’s three patents. In a footnote, the Court explained that it “now allows no more than two patents to be presented to any one jury at trial, meaning that [plaintiff] would not have moved forward with all three patents to trial in any event.” Id. at 5 n.7.