Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 1 of 18 PageID #: 449
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`I I I
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`MARKET -ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`BLOOMBERG FINANCE L.P., et al,
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`Defendants.
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`MARKET-ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`THE CHARLES SCHWAB CORP., et al,
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`Defendants.
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`MARKET-ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`E*TRADE CLEARING LLC, et al,
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`Defendants.
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`MARKET-ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`TD AMERITRADE HOLDING CORP., et al,
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`Civil Action No. 12-780-GMS
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`Civil Action No. 12-781-GMS
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`Civil Action No. 12-782-GMS
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`Civil Action No. 12-783-GMS
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 2 of 18 PageID #: 450
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`Defendants.
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`MARKET-ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`OM SECURITIES, LLC d/b/a
`TRADE MONSTER, et al,
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`Defendants.
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`MARKET-ALERTS PTY. LTD.,
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`Plaintiff,
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`v.
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`ESIGNAL.COM, INC., et al,
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`Defendants.
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`Civil Action No. 12-784-GMS
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`Civil Action No. 12-785-GMS
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`2
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 3 of 18 PageID #: 451
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`Adam W. Poff, Esquire and Pilar G. Kraman, Esquire ofYOUNG, CONAWAY, STARGATT &
`TAYLOR, LLP, Wilmington, Delaware, and Adrian M. Pruetz, Esquire, Andrew Y. Choung,
`Esquire, Erica Van Loon, Esquire, and Jessica Wood, Esquire of GLASER, WElL, FINK,
`JACOBS, HOWARD, AVCHEN & SHAPIRO LLP, Los Angeles, California. Attorneys for
`Plaintiff.
`
`David E. Moore, Esquire, Richard L. Horwitz, Esquire, and Bindu A. Palapura, Esquire of
`POTTER, ANDERSON & CORROON LLP, Wilmington, Delaware, and Michael Levin,
`Esquire, and Maneesh Gupta, Esquire of WILSON, SONSINI, GOODRICH & ROSATI PC,
`Palo Alto, California, and Larry L. Shatzer, Esquire of WILSON, SONSINI, GOODRICH &
`ROSATI PC, Washington, DC, and Brian D. Range, Esquire of WILSON, SONSINI,
`GOODRICH & ROSATI PC, Austin, Texas, and Robert P. Lord, Esquire, Tammy J. Terry,
`Esquire, and Aly Z. Dossa, Esquire of OSHA LIANG LLP, Houston, Texas. Attorneys for
`Moving Defendants.
`
`OPINION
`
`February ..5___, 2013
`Wilmington, Delaware
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`3
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 4 of 18 PageID #: 452
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`,..
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`I.
`
`INTRODUCTION
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`On June 20, 2012, the plaintiff, Market-Alerts Pty. Ltd. ("Market-Alerts"), brought the
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`above-captioned six lawsuits against multiple defendants, 1 alleging infringement of U.S. Patent
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`No. 7,941,357 (the '"357 Patent"). On October 15, 2012, several of the defendants (the
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`"petitioning defendants") filed a Petition for Post-Grant Review of the '357 Patent under 35
`U.S.C. § 321 and§ 18 ofthe America Invents Act (the "AlA"). (D.I. 16, Ex. Bi On November
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`9, 2012, the Bloomberg defendants, the E*TRADE defendants, the TD Ameritrade defendants,
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`and Thinkorswim Group, Inc. 3 moved to stay this litigation pending post-grant review pursuant
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`to § 18(b) of the AlA. (D.I. 14.) The Schwab defendants and optionsXpress defendants then
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`1 The 12-780 action names the following defendants: Bloomberg Finance LP, Bloomberg LP, and
`Bloomberg Inc. (collectively, the "Bloomberg defendants").
`The 12-781 action names: (1) The Charles Schwab Corporation, Charles Schwab & Co., Inc., and Schwab
`Holdings, Inc. (collectively, the "Schwab defendants"); (2) optionsXpress Holdings Inc. and optionsXpress, Inc.
`(collectively, the "optionsXpress defendants"); (3) Tradeking Group Inc., Tradeking Holdings LLC, Tradeking LLC
`(collectively the "Tradeking defendants"); (4) Recognia Inc. and Recognia US Inc. (collectively, the "Recognia
`defendants"); and (5) Lightspeed Financial Inc. and Lightspeed Trading LLC (collectively, the "Lightspeed
`defendants").
`·
`The 12-782 action names: E*TRADE Clearing LLC, E*TRADE Financial Corporation, and E*TRADE
`Securities LLC (collectively, the "E*TRADE defendants").
`The 12-783 action names: (1) TD Ameritrade Holding Corp., TD Ameritrade IP Company, Inc., and TD
`Ameritrade, Inc. (collectively, the "TD Ameritrade defendants"); and (2) Thinkorswim Group, Inc.
`The 12-784 action names: OM Securities LLC and optionMonster Holdings Inc.
`The 12-785 action names: eSignal.com Inc., IBG LLC, Interactive Brokers Corporation, Interactive Data
`LLC, and Interactive Data Corporation.
`
`2 Unless otherwise noted, all docket item citations are to Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P., et
`a/., No. 12-780-GMS.
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`3 The court refers to those defendants who filed or joined in the original motion to stay (D.I. 14) as the
`"moving defendants." To summarize, those parties are: (1) the Bloomberg defendants; (2) the Schwab defendants;
`(3) the optionsXpress defendants; (4) the E*TRADE defendants; (5) the TD Ameritrade defendants; and (6)
`Thinkorswim Group, Inc. This represents all the defendants in the 12-780, 12-782, and 12-783 actions. None of the
`defendants in the 12-784 and 12-785 actions have joined in the motion to stay. In the 12-781 action, the following
`defendants also have failed to join in the motion: (1) the Tradeking defendants; (2) the Recognia defendants; and (3)
`the Lightspeed defendants. All defendants, however, agree that a stay is appropriate in this case, and none opposes
`entry of a stay. (D.I. 24 at 5.)
`
`4
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`

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`J l . I
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 5 of 18 PageID #: 453
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`filed a separate motion to stay on December 21, 2012. (No. 12-781, D.I. 38.) On January 4,
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`2013, they withdrew that request and joined in the pending, November 9, 2012 motion to stay.
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`(No. 12-781, D.I. 42.) That motion is presently before the court, and, for the reasons that follow,
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`the court will order that all six actions be stayed pending post-grant review.
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`II.
`
`BACKGROUND
`
`Market-Alerts claims to be the exclusive owner of all rights to the '357 Patent, which is
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`entitled "Trading System." (D.I. 1 at ,-r 8.) Claim 1 of the '357 Patent recites:
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`A method of informing users of stock market events, comprising the steps of: (a)
`receiving real-time stock market data on a network of computers; (b) receiving on
`the network of computers instructions from a user to specify watch data defining
`an event, the watch data including a stock market technical analysis request
`specifying technical analysis formulae to be applied to the real-time stock market
`data; (c) using the network of computers to periodically apply the user-spe"cified
`watch data including the stock market technical analysis formulae to the real-time
`stock market data in real-time to ascertain whether a valid response to the watch
`data has occurred based on the real-time stock market data, thereby determining
`an occurrence of the event defined by the user-specific watch data; and (d)
`causing a real-time notification by the network of computers to be provided to the
`user via a remote communications device upon the occurrence of the event
`defined by the user-specified watch data, the real-time notification directed to a
`remote communications device of the user so that the user can then provide
`instructions for share market transaction on an instantaneous basis.
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`(Id., Ex. A at 9.) Market-Alerts alleges that each of the defendants infringes the'357 Patent by
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`"provid[ing] or operat[ing] real-time stock trading products and/or services, which fall within the
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`scope of the '357 Patent claims." (D.I. 24 at 3.)
`
`III.
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`STANDARD OF REVIEW
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`Section 18 of the AlA provides for the establishment of transitional post-grant review
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`proceedings to reexamine the validity of covered business method patents ("CBM review").
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`Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18, 125 Stat. 284,329-31 (2011). The
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`5
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 6 of 18 PageID #: 454
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`AlA also considers the effect of these proceedings on related patent infringement actions and
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`authorizes the district courts to stay such parallel litigation under certain circumstances.
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`Specifically§ 18(b)(l) provides:
`
`If a party seeks a stay of a civil action alleging infringement of a patent under
`section 281 of title 35, United States Code, relating to a transitional proceeding
`for that patent, the court shall decide whether to enter a stay based on-
`( 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.
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`!d. § 18(b)(1).
`
`This statutory test closely resembles the stay analysis courts have applied in assessing a
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`motion to stay pending inter partes or ex parte reexamination by the Patent and Trademark
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`Office (the "PTO"). See, e.g., SenoRx, Inc. v. Hologic_, Inc., No. 12-173-LPS-CJB, 2013 WL
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`144255, at *2 (D. Del. Jan. 11, 2013) (applying three~factor stay test that asks "(1) whether
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`granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly
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`whether discovery is complete and a trial date has been set; and (3) whether a stay would cause
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`the non-movant to suffer undue prejudice from any delay, or allow the movant to gain a clear
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`tactical advantage"); Ever Win Int'l Corp. v. Radioshack Corp., No. 11-1104-GMS-CJB, 2012
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`WL 4801890, at *2 (D. Del. Oct. 9, 2012) (same). The substantial difference between the test set
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`forth in § 18(b )(1) and that employed by courts in the ordinary patent reexamination context is
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`the inclusion of a fourth factor, which requires the court to consider "whether a stay, or the
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`denial thereof, will reduce the burden of litigation on the parties and on the court." §
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`6
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`

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`I I
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 7 of 18 PageID #: 455
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`18(b)(1)(D). This additional consideration was included, in part, to ease the movant's task of
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`demonstrating the need for a stay.4
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`The AlA was signed into law on September 16, 2011, and CBM review came into effect
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`one year later, in September 2012.
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`IV. DISCUSSION
`
`The petitioning defendants have sought post-grant review of the '357 Patent as a covered
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`business method patent under 35 U.S.C. § 321 and§ 18 ofthe AlA. The moving defendants now
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`request a stay of this litigation pending the resolution of those CBM review proceedings. 5 The
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`court will discuss each of the statutory stay factors outlined in § 18(b) below, addressing the
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`4 Section 18 of the AlA was added through an amendment proposed by Senator Charles Schumer, which
`was included in the larger managers' amendment advanced by Senators Leahy and Grassley. See 157 Cong. Rec.
`S1030-32 (daily ed. Mar. 1, 2011) (statement of Sen. Patrick Leahy). During Congressional debate on the AlA,
`Senator Schumer himselfl_'rovided a thorough discussion of this section. 157 Cong. Rec. S1363-65 (daily ed. Mar.
`8, 2011) (statement of Sen. Charles Schumer).
`Senator Schumer first made clear that the intent of the fourth stay factor was to "place[]a very heavy thumb
`on the scale in favor of a stay being granted." !d. at S 1363. He then explained the need for express inclusion of this
`factor:
`
`Due to low grant rates for stays [pending PTO ex parte reexamination] in several jurisdictions, this
`amendment instructs courts to apply the four-factor test first announced in Broadcast Innovation,
`L.L.C. v. Charter Communications [No. 03-2223-ABJ-BNB, 2006 WL 1897165 (D. Colo. July 11,
`2006)] when evaluating stay motions. The amendment employs the Broadcast Innovation test,
`rather than other multifactor tests employed by other district courts, because this test properly
`emphasizes a fourth factor that is often ignored by the courts: "whether a stay will reduce the
`burden oflitigation on the parties and on the court." Too many district courts have been content to
`allow litigation to grind on while a reexamination is being conducted, forcing the parties to fight in
`two fora at the same time. This is unacceptable, and would be contrary to the fundamental purpose
`of the Schumer-Kyl amendment to provide a cost-efficient alternative to litigation.
`!d. at S1364.
`
`5 One preliminary issue is whether the statutory stay analysis set forth in § 18(b) is triggered upon a party's
`petition for post-grant review or only upon the Patent Trial and Appeal Board's ("PTAB's") institution of such
`review. (D.I. 19 at 8; D.l. 22 at 6.) The AlA states that "the court shall decide whether to enter a stay based on [the
`four enumerated factors]" whenever "a party seeks a stay of a civil action alleging infringement of a patent . . .
`relating to a transitional proceeding for that patent." § 18(b)(l) (emphasis added). Since the PTO has recognized
`that "the proceedings begin with the filing of a petition," the court fmds that the relevant stay provisions apply when
`the petition is first filed. Office Patent Trial Practice Guide, 77 Fed. Reg. 48757 (Aug. 14, 2012) (emphasis added).
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`7
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 8 of 18 PageID #: 456
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`parties' specific arguments where applicable. 6
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`A.
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`Issue Simplification
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`Section 18(b )(1 )(A) instructs the court to consider "whether a stay, or the denial thereof,
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`will simplify the issues in question and streamline the trial." Id. As the court has previously
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`recognized, staying an infringement case pending administrative review of the patent-in-suit's
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`validity can simplify litigation in several ways:
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`(1) all prior art presented to the court at trial will have been first considered by the
`PTO with its particular expertise, (2) many discovery problems relating to the
`prior art can be alleviated, (3) if patent is declared invalid, the suit will likely be
`dismissed, (4) the outcome of the [administrative review] may encourage a
`settlement without further involvement of the court, (5) the record of the
`[administrative review] would probably be entered at
`trial, reducing the
`complexity and the length of the litigation, ( 6) issues, defenses, and evidence will
`be more easily limited in pre-trial conferences and (7) the cost will likely be
`reduced both for the parties and the court.
`
`Gioello Enters. Ltd. v. Mattei, Inc., No. 99-375-GMS, 2001 WL 125340, at *1 (D. Del. Jan. 29,
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`2001).
`
`The moving defendants reference the high rates of claim amendment and cancellation in
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`the inter partes reexamination context to suggest that granting a stay here will narrow the issues
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`. before the court. 7 (D.I. 15 at 7.) Market-Alerts responds that a stay will not achieve the goal of
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`issue simplification because (1) the limited scope of CBM review proceedings ensures that
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`6 As Market-Alerts acknowledges, judicial decisions considering a motion to stay pursuant to§ 18(b) of the
`AlA "are virtually nonexistent." (D.I. 19 at 7.) The court thus draws from its experience in the ordinary PTO
`reexamination context in considering the three common stay factors. This is consistent with the legislative history
`of the AlA, which suggests that the additional "burden of litigation" factor represents the sole statutory modification
`to the analysis-the court fmds no indication that Congress intended to alter the way in which district courts assess
`the first three factors. See 157 Cong. Rec. Sl363-64 (daily ed. Mar. 8, 2011) (statement of Sen. Charles Schumer).
`
`7 Statistics published by the PTO indicate that 3 77 reexamination certificates were issued between
`November 29, 1999, the beginning of inter partes reexamination, and June 30, 2012. Of those, only 11% confirmed
`all claims. On the other hand, all claims were canceled or disclaimed in 42% of cases, and at least some claims were
`amended in the remaining 47%. (D.I. 16, Ex. Gat 1.)
`
`8
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`

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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 9 of 18 PageID #: 457
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`certain issues will remain in litigation even after the administrative process is complete and (2)
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`the CBM review is unlikely to result in claim cancellation or amendment (D.I. 19 at 16-17.)
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`Of course, these two worries collapse into each other to some degree.
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`In raising its
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`"scope" concern, Market-Alerts claims that "at least the issues of infringement, other invalidity
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`defenses, damages and other equitable defenses will still have to be litigated even if the PTO
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`grants CBM Review." (!d.) Implicit in this argument is an assumption that CBM review will
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`not result in the cancelation of all claims of the '357 Patent-if that were to occur, it would
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`effectively end these cases and extinguish any concerns about the scope of the review process.
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`The merit of Market-Alerts' scope argument thus depends, in part, on the strength of the
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`petitioning defendant's administrative challenge itself,8 and, on that broader point, Market-Alerts
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`contends that the petition for CBM review is unlikely to be granted or to succeed. (!d. at 8-15.)
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`1. Likelihood ofPetition Being Granted
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`Market-Alerts first suggests that the petition for review will not even be granted because
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`the claims of the '357 Patent fall within a statutory exception for "technological inventions."
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`The AlA permits CBM review only for "covered business method patents," which it defines as
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`"patent[ s] that claim[] a method or corresponding apparatus for performing data processing or
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`other operations used in the practice, administration, or management of a financial product or
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`service, except that the term does not include patents for technological inventions." § 18(d)(l)
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`(emphasis added). Pursuant to rulemaking authority delegated by § 18( d)(2) of the AlA, the
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`PTO has further clarified that,
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`8 The court recognizes that any assessment of the likelihood of patent claims being cancelled during a
`future administrative proceeding is inherently speculative. See Texas MP3 Techs., Ltd. v. Samsung Elecs. Co., No.
`2:07-CV-52, 2007 WL 2319372, at *2 n.2 (E.D. Tex. Oct. 3, 2007) (noting that "final disposition of any
`reexamination proceeding is unknown"). Such preliminary evaluations, however, are often demanded by the "issue
`simplification" factor.
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`9
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`

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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 10 of 18 PageID #: 458
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`[i]n determining whether a patent is for a technological invention solely for
`purposes of the Transitional Program for Covered Business Methods . . . the
`following will be considered on a case-by-case basis: whether the claimed subject
`matter as a whole recites a technological feature that is novel and unobvious over
`the prior art; and solves a technical problem using a technical solution.
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`37 C.P.R. § 42.301(b) (2012). As the PTO has noted, this definition is consistent with the
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`legislative history of the AlA. Transitional Program for Covered Business Method Patents-
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`Definitions of Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
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`48735 (Aug. 14, 2012) (quoting, inter alia, 157 Cong. Rec. S1364 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Charles Schumer) ("The 'patents for technological inventions' exception only
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`excludes those patents whose novelty turns on a technological innovation over the prior art and
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`are concerned with a technical problem which is solved with a technical solution and which
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`requires the claims to state the technical features which the inventor desires to protect.")).
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`Market-Alerts contends that the '357 Patent falls within this technological invention
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`exception because "the 357 Patent claims, as a whole, a set of technological features th;:tt are
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`novel and unobvious over the prior art. Moreover, the widespread adoption of the patented
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`invention within the industry, particularly by the big brokerages, directly evidences the value of
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`the patented invention as a technical solution." (D.I. 19 at 11.) The court, however, believes that
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`the '357 Patent likely does not meet the requirements of the statutory exception. The plain
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`language of the PTO definition makes clear that when a party seeks to invoke the "technological
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`invention" exception, it must do more than demonstrate that the method being claimed is novel-
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`it must show that the "technological feature" itself is novel and unobvious. Here, the court
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`presumes that the claimed "technological features" of the '357 Patent are the "network of
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`computers" and the "remote communications device." As such, and despite Market-Alerts'
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`10
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 11 of 18 PageID #: 459
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`generalized protests to the contrary, neither a "network of computers" nor a "remote
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`communications device" strikes the court as particularly novel. 9 Put simply, it seems likely that
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`the petition for CBM review will be granted. 10
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`2. Likelihood of Administrative Challenge Succeeding
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`Market-Alerts next contends that, even if the petition is granted, the defendants' validity
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`challenge will fail before the PTAB. (D.I. 19 at 13-15.) Its principal argument on this point
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`relates to the petitioning defendants' submission of material obtained through the Internet
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`Archive's "Wayback Machine" as prior art. 11 (!d. at 13.) The court, however, is unimpressed by
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`9 The court's assessment is consistent with the PTO's explanation that a patent neither conveys a
`"technological invention" through "[m]ere recitation of known technologies, such as computer hardware,
`communication or computer networks, software, memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM or point of sale device" nor simply by "reciting the
`use of known prior art technology to accomplish a process or method, even if that process or method is novel and
`non-obvious." Office Patent Trial Practice Guide, 77 Fed. Reg. 48764 (Aug. 14, 2012).
`It also comports with the PTO's statement that "patents subject to covered business method patent review
`are anticipated to be typically classifiable in Class 705. It is anticipated that the number of patents in Class 705 that
`do not qualify as covered business method patents would approximate the number of patents classified in other
`classes that do qualify." Transitional Program for Covered Business Method Patents-Definitions of Covered
`Business Method Patent and Technological Invention, 77 Fed. Reg. 48735 (Aug. 14, 2012). Tellingly, the '357
`Patent falls within Class 705. (D.I. 1, Ex. A at 2.)
`
`10 Market-Alerts also points to statements made during Congressional debates that indicate a heightened
`standard for granting a petition and instituting CBM review. Specifically, Senator Schumer observed that "to
`initiate a post issuance review under the new post grant or transitional prQceedings, it is not enough that the request
`show a substantial new question of patentability but must establish that 'it is more likely than not that at least [one]
`of the claims challenged in the petition is unpatentable."' 157 Cong. Rec. S5428 (daily ed. Sept. 8, 2011) (statement
`of Sen. Charles Schumer). Indeed, this test is now codified at 37 C.F.R. § 42.208(c) (2012) and 35 U.S.C. § 324(a).
`The heightened standard, however, does not alter the court's conclusion-for substantially the same reasons
`discussed in Section IV.A(2) below, the court believes the petitioning defendants will likely be able to make this
`threshold showing.
`
`11 Judge Kelly of the U.S. District Court for the Eastern District of Pennsylvania describes the Wayback
`Machine and its operation as follows:
`[T]he Internet Archive is a nonprofit organization that has created an online library of digital
`media in an effort to preserve digital content for future reference. Its digital database is equivalent
`to a paper library, but is filled with digital media like websites instead of books ... Internet
`Archive's database provides users with the ability to study websites that may have been changed or
`no longer exist. The chronological records are compiled by routinely taking screenshots of
`websites as they exist on various days. Internet Archive collects images through a process called
`crawling. A crawler or robot is an automated program that scours the Internet and takes pictures of
`11
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`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 12 of 18 PageID #: 460
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`this line of attack. While the admissibility of Wayback-generated webpages remains somewhat
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`uncertain, 12 Market-Alerts makes no attempt to discredit the additional printed publications
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`presented by the defendants as prior art. (D.I. 22 at 8.) The court believes there is at least a
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`reasonable chance that the PT AB will ultimately invalidate or cause Market-Alerts to amend
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`some or all ofthe claims of the '357 Patent, and such a result would have simplifying effects on
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`this litigation regardless of the scope limitations of CBM review. As such, this factor weighs
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`lightly in favor of granting the motion to stay.
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`B.
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`Stage of Litigation
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`The second factor, which has the court consider how far litigation has already progressed,
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`likewise favors a stay. America Invents Act§ 18(b)(1)(B). Staying a case at an early juncture
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`"can be said to advance judicial efficiency and maximize the likelihood that neither the [ c ]ourt
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`nor the parties expend their assets addressing invalid claims." SenoRx, Inc., 2013 WL 144255, at
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`every web page that it is instructed to visit ... Any person with a web browser can search Internet
`Archive's database of archived images. Searching the database is accomplished via the Wayback
`Machine, which Internet Archive provides on its website. The Wayback Machine is an
`information retrieval system that allows the user to request archived screenshots of web pages that
`may be contained on the database ... The image appears in the user's web browser just like a live
`website would appear, however, the user is not viewing a live website. Instead, the user sees the
`static version of the website that is stored in Internet Archive's database. The Wayback Machine
`only provides a window into the past where users can see what a website looked like on a specific
`date.
`Healthcare Advocates, Inc. v. Harding, Earley, Follmer, & Frailey, 497 F. Supp. 2d 627, 631 (E.D. Pa. 2007).
`
`12 The courts and agencies that have considered the reliability of documents generated by the Wayback
`Machine have reached varying conclusions. It appears that, while these documents have been deemed inadmissible
`for certain purposes, see Novak v. Tucows, Inc., No. 06-1909-JFB-ARL, 2007 WL 922306, at *5 (E.D.N.Y. Mar. 26,
`2007) (striking webpages from evidence because they represented hearsay and were not properly authenticated
`pursuant to Rule 901 of the Federal Rules ofEvidence), they have generally been accepted as evidence of prior art in
`the patent context, see, e.g., Keystone Retaining Wall Sys., Inc. v. Basalite Concrete Prods., LLC, No. 10-4085-PJS(cid:173)
`JJK, 2011 WL 6436210, at *9 n.9 (D. Minn. Dec. 19, 201 I); Ex parte Rowse, No. 2010-5057, 2011 WL 3876553, at
`*2 (B.P.A.I. Aug. 30, 2011); Ex parte Krivulka & Mazur, No. 2010-003098, 2010 WL 3820666, at *4 (B.P.A.I.
`Sept. 28, 2010); Ex parte Shaouy & Trevathan, No. 2007-0987, 2007 WL 1591662, at *3 (B.P.A.I. May 24, 2007) .
`Regardless, given the additional printed prior art offered by the moving defendants (and ignored by Market-Alerts),
`the court need not resolve this issue here.
`
`12
`
`

`

`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 13 of 18 PageID #: 461
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`*5 (internal quotation omitted). On the other hand, when confronted with a motion to stay in the
`
`later stages of a case, "the [ c ]ourt and the parties have already expended significant resources on
`
`the litigation, and the principle of maximizing the use of judicial and litigant resources is best
`
`served by seeing the case through to its conclusion." Id.
`
`As the moving defendants accurately point out, these actions are "still at the earliest
`
`possible stage. No conferences with the [ c ]ourt have occurred; no schedules have been set; no
`
`substantive motions have been filed; and the [ c ]ourt has issued no substantive rulings." This
`
`factor thus weighs strongly in favor of a stay. 13 See Abbott Diabetes Care, Inc. v. Dexcom, Inc.,
`
`No. 06-514-GMS, 2007 WL 2892707, at *5 (Sept. 30, 2007) (finding that a stay pending PTO
`
`reexamination was warranted "where the court has not yet conducted a Rule 16(2)(b) scheduling
`
`conference, no scheduling Order is in place, no discovery has taken place, and little time has yet
`
`to be invested in the litigation").
`
`C.
`
`Undue Prejudice
`
`·The court is next instructed to consider the potential for a stay to unduly prejudice the
`
`plaintiff or place it at a clear tactical disadvantage. America Invents Act § 18(b )(1 )(C). In the
`
`context of a motion to stay pending reexamination, the court has previously noted that waiting
`
`for the administrative process to run its course risks prolonging the final resolution of the dispute
`
`and thus may result in some inherent prejudice to the plaintiff. See Textron Innovations, Inc. v.
`
`Taro Co., No. 05-486-GMS, 2007 U.S. Dist. LEXIS 100102, at *8 (D. Del. Apr. 25, 2007). The
`
`court also recognizes, however, that the potential for delay does not, by itself, establish undue
`
`13 Apparently attempting to contest this "stage of litigation" factor, Market-Alerts notes that the PTO may
`not grant the petition and actually institute post-grant review until April22, 2013. (D.I. 19 at 17.) It then points out
`(I d.) Though the court appreciates this
`that at least another year will pass before the PTO issues a decision.
`argument, it is a point more appropriately addressed under the "undue prejudice" stay factor below.
`
`13
`
`

`

`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 14 of 18 PageID #: 462
`
`prejudice. See Enhanced Sec. Research, LLC v. Cisco Sys., Inc., No. 09-571-JJF, 2010 WL
`
`2573925, at *3 (D. Del. June 25, 2010); Wall Corp. v. BondDesk Grp., LLC, No. 07-844-GMS,
`
`2009 WL 528564, at *2 (D. Del. Feb. 24, 2009). Rather, in determining whether a plaintiff
`
`might be unacceptably prejudiced by a stay, the court turns to additional considerations including
`
`the timing of the stay request, the timing of the administrative review request, the status of the
`
`review proceedings, and the relationship between the parties. See, e.g., Boston Scientific Corp. v.
`
`Cordis Corp., 777 F. Supp. 2d 783, 789 (D. Del. 2011); Vehicle IP, LLC v. Wal-Mart Stores,
`
`Inc., No. 10-503-SLR, 2010 WL 4823393, at *2 (D. Del. Nov. 22, 2010).
`
`In these actions, neither the timing of the CBM review petition nor the timing of the stay
`
`request suggest any inappropriate dilatory motive on the defendants' part. The petition was filed
`
`on October 15, 2012, less than one month after the review program went into effect, and the
`
`motion to stay was filed on November 9, 2012. (D.I. 15 at 4.)
`
`The relationship between the parties is also considered, as "[ c ]ourts are generally
`
`reluctant to stay proceedings where the parties are direct competitors." Boston Scientific Corp.,
`
`777 F.2d at 789; see also ImageVision.Net, Inc. v. Internet Payment Exch., Inc., No. 12-054-
`
`GMS-MPT, 2012 WL 5599338, at *~5 (D. Del. Nov. 15, 2012); Vehicle IP, LLC v. Wal-Mart
`
`Stores, Inc., No. 10-503-SLR, 2010 WL 4823393, at *2 (D. Del. Nov. 22, 2010). In such cases,
`
`"there is a reasonable chance that delay in adjudicating the alleged infringement will have
`
`outsized consequences to the party asserting infringement has occurred, including the potential
`
`for loss of market share and an erosion of goodwill." SenoRx, Inc. v. Hologic, Inc., No. 12-173-
`
`LPS-CJB, 2013 WL 144255, at *5 (D. Del. Jan. 11, 2013). There is no evidence, however, that
`
`Market-Alerts directly competes with any of the defendants' accused products, (D.I. 15 at 10
`
`14
`
`

`

`Case 1:12-cv-00780-GMS Document 25 Filed 02/05/13 Page 15 of 18 PageID #: 463
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`n.5), and its own responsive brief indicates that, at this point, patent infringement litigation
`
`represents its primary business, (D.I. 19 at 6). As such, this consideration does not suggest that a
`
`stay would cause Market-Alerts undue prejudice.
`
`Finally, the court examines the status of the administrative review. In order to make that
`
`assessment here, however, it first is necessary to understand the expected timeline for CBM
`
`review proceedings. The PTO provides the following summary:
`
`Generally,