During Congressional debate on the AIA, Senator Charles Schumer opined that "it is nearly impossible to imagine a scenario in which a district court would not issue a stay" in favor of a concurrent CBM proceeding. 157 Cong. Rec. S1053 (daily ed. Mar. 1, 2011). Until recently, Senator Schumer's words rang true—every motion to stay brought under § 18 was granted, with a few denials issued where the Patent Trial and Appeal Board ("PTAB") had not yet decided whether to institute. These denials were issued without prejudice with leave to refile if the PTAB instituted the review.
However, in VirtualAgility, Inc. v. SalesForce.com, Inc., No. 2:13-cv-00011-JRG (E.D. Tex. Jan. 8, 2014), Judge Gilstrap of the Eastern District of Texas issued the first denial of a CBM-related stay motion without leave to refile. Notably, while the motion itself was filed before the PTAB instituted review, the court denied it almost two months after the PTAB instituted CBM review of all claims of the only patent-in-suit.
The court's opinion weighed the four factors courts "shall" consider under § 18 when deciding CBM-related stay motions. See AIA § 18(b)(1). The court's analysis of these factors is summarized below.
Defendants have already filed for an immediate interlocutory appeal to the Federal Circuit, as provided for by § 18.
Denial of CBM-Related Stay: |
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Factor |
Analysis |
Weight in Favor of Stay |
Weight Against Stay |
1. Whether stay will simplify issues and streamline trial; |
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"essentially neutral, if not slightly against" |
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2. Whether discovery is complete and trial date is set; |
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"in favor" |
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3. Whether stay will unduly prejudice the non-moving party; |
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"heavily against" |
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4. Whether stay will reduce the burden of litigation. |
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"slightly in favor" |
* All quotations are to the Court's opinion.
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