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Judge Burke grants in part motion to stay pending resolution of motion to dismiss


In a recent Memorandum Order, Magistrate Judge Christopher J. Burke granted defendants’ motion to stay pending resolution of defendants’ motion to dismiss, which asserts four patents-in-suit are patent ineligible under 35 U.S.C. § 101. International Business Machines Corp. v. The Priceline Group Inc., C.A. No. 15-137-LPS-CJB (D. Del. Aug. 18, 2015). As to the action’s status, Judge Burke noted that “the matter is in its infancy.” Id. at 2. With regard to “undue prejudice,” Judge Burke explained that “there is no evidence that Defendants are pursuing an inappropriate tactical advantage by filing their motion at this time.” Id. Further, while Judge Burke was not particularly persuaded that plaintiff would be unduly prejudiced because of the “potential effect on its patent licensing efforts,” Judge Burke did acknowledge that “were a stay granted” the “delay in the resolution of the action . . . could be significant enough to work to Plaintiff’s detriment.” Id. As to simplification of the issues for trial, Judge Burke noted that on the one hand, “grant of the Motion to Dismiss might result in significant simplification, were it to resolve the case entirely or do so with regard to a significant number of patents or claims.” Id. On the other hand, as Judge Burke explained, “the likelihood of total or even substantial simplification is tempered by the fact Plaintiff has asserted a significant number of patents and claims.” Id.

Judge Burke acknowledged that in this instance, “whether a stay is warranted presents a close question for the Court,” and ultimately determined that stay was warranted, in part. Id. at 2-3. That is, Judge Burke determined that “in light of the parties’ respective showings,” the parties should complete initial disclosures prior to postponing further discovery pending resolution of the motion to dismiss.  Id. at 3.

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