This case was stayed pending a reexamination at the PTO and, although the stay was lifted in 2013, there had been “no activity since October 2013, while the parties continue[d] with inter partes review and covered-business-method review proceedings.” In March 2015, however, the plaintiff filed a “motion to reopen discovery to gather information concerning the prior art status of a particular reference.” Judge Sleet recently denied that motion. Fifth Market, Inc. v. CME Group, Inc., et al., C.A. No. 08-520-GMS, Or. at 1 (D. Del. July 31, 2015).
Judge Sleet explained his view of the request: “Understandably, the parties have been postponing the litigation of this case while the USPTO reviews the patents-in-suit and after appeals are exhausted. Thus, in the court’s view, this case is effectively, if not formally, stayed. And despite showing no interest in reviving its case in district court, the plaintiff now requests that the court order discovery to aid its efforts before the USPTO. The court declines to do so. . . . In short, [the motion] is improper for a number of reasons . . . . The court will not reopen discovery in this matter unless agreed upon by both parties or better justification is provided.” Id. at 2 n.1. Although the plaintiff claimed it needed the discovery into the alleged prior art for purposes of the IPR and this suit, Judge Sleet found that “plaintiff has made no challenge to the [reference] in this matter, to this court. . . . And the defendants are correct to note that the Protective Order between the parties forecloses the use of discovery materials ‘for any purpose other than prosecuting or defending claims in this action.’” Id. Furthermore, Judge Sleet found that there were procedures for the plaintiff to obtain this discovery in the PTO and that, if those procedures would not allow such discovery, the Court would not “undermine the procedures in place by offering an avenue to circumvent the rules.” Id.