United States District Court, S.D. California
ORDER: (1) GRANTING DEFENDANT'S MOTION TO STAY PENDING COVERED BUSINESS METHOD PATENT REVIEW; (2) VACATING HEARING DATE
GONZALO P. CURIEL, District Judge.
On June 3, 2013, Plaintiff Unisone Strategic IP, Inc. ("Plaintiff") filed a complaint for patent infringement, alleging defendant Life Technologies Corporation's ("Defendant") software infringed U.S. Patent No. 6, 996, 538 (the "538 patent"), which Plaintiff allegedly owns by assignment. (ECF No. 1.) On November 15, 2013, after Plaintiff filed the currently operative First Amended Complaint ("FAC"). (ECF No. 21.) On April 2, 2014, the Court stayed this case pending reexamination proceedings. (ECF No. 35.) On November 24, 2014, reexamination proceedings concluded with the certificate reflecting amended claims. (ECF No. 50.) On January 7, 2015, the Court lifted the stay pursuant to the conclusion of reexamination proceedings. (ECF No. 53.)
Before the Court is Defendant's Motion to Stay Pending Covered Business Method Review. (ECF No. 55.) Plaintiff opposes. (ECF No. 58.) The Leahy-Smith America Invents Act (the "AIA") provides a "transitional program" to review covered business method ("CBM") patents. AIA § 18. The AIA further grants district courts authority to stay proceedings, pending CBM review before the U.S. Patent and Trademark Office (the "USPTO"), upon the consideration of four factors:
(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
(B) whether discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
Id. § 18(b)(1); VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1310 (Fed. Cir. 2014). The parties have fully briefed the motion. (ECF Nos. 55, 58, 59.) The Court finds the motion suitable for disposition without oral argument pursuant to Civil Local Rule 7.1(d)(1). Upon review of the moving papers, admissible evidence, oral argument, and applicable law, the Court GRANTS Defendant's Motion to Stay Pending CBM Review.
The first factor considers whether a stay will simplify the issues. AIA § 18(b)(1)(A). The CBM review in this case challenges 15 of the 96 claims in the 538 patent. (ECF No. 58-4, Ex. B, at 1.) Plaintiff argues that this factor does not favor a stay because: (1) "only 18%" of the claims are being challenged, and (2) the CBM review challenges the claims based on patentability. (ECF No. 58, at 3.) However, CBM review of less than all of a patent's claims can still simplify the issues. Versata Software, Inc. v. Callidus Software, Inc., 771 F.3d 1368, 1371-73 (Fed. Cir. 2014) vacated on other grounds by ___ F.3d ___, 2015 WL 981523 (Fed. Cir. Feb. 27, 2015). Additionally, CBM review precludes a petitioner from raising invalidity arguments in federal courts that it raises during CBM review. AIA § 18(a)(1)(D). Thus, because a determination by the USPTO of Defendant's 35 U.S.C. § 101 invalidity argument will preclude Defendant from making that argument to this Court, a stay pending CBM review will simplify the issues in this case.
B. Discovery and Trial Date
The second factor considers whether discovery is complete and a trial date has been set. AIA § 18(b)(1)(B). Discovery has not commenced in this case and a trial ...