`
`
`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`)
`No. 10 C 715 (Consolidated with:
`)
`10 C 716, 10 C 718, 10 C 720,
`)
`10 C 721, 10 C 726, 10 C 882,
`)
`10 C 883, 10 C 884, 10 C 885,
`)
`10 C 929, 10 C 931)
`)
`
`)
` Judge Virginia M. Kendall
`)
`)
`)
`)
`)
`
`
`
`
`
` Plaintiff,
` v.
`
`BCG PARTNERS, INC.,
`
` Defendant.
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`In early 2010, Plaintiff Trading Technologies International, Inc. (“TT”) filed a number of
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`cases in this District alleging infringement of various patents concerning electronic trading
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`software used on electronic commodity exchanges. The Court consolidated these cases in 2011.
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`(See Dkt. No. 73.) After a number of amended pleadings, early summary judgment practice, and
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`an appeal to the Federal Circuit, Defendants TradeStation (“TS”) and IBG (collectively
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`“Defendants”) filed the instant motion seeking a stay of this case pursuant to Section 18(b) of the
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`America Invents Act (“AIA”) pending the United States Patent and Trademark Office’s (“PTO”)
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`review of a number of the asserted patents. (See Dkt. Nos. 667, 675, 679, 682, 708, 726, 745.)
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`For the following reasons, the Court grants the motion to stay. (Dkt. No. 667.) The consolidated
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`cases are stayed in their entirety.
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`BACKGROUND
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`
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`The instant motion stems from a number of petitions filed by the Defendants with the
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`PTO seeking review under the transitional program for covered business method patents (“CBM
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`review”) of U.S. Patent Nos. 6,766,304 (“the ‘304 Patent”); 6,772,132 (“the ‘132 Patent”);
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`Page 1 of 14
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`TRADING TECH EXHIBIT 2414
`TRADESTATION ET AL. v. TRADING TECH
`CBM2015-00172
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`
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`Case: 1:10-cv-00715 Document #: 757 Filed: 05/09/16 Page 2 of 14 PageID #:32733
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`7,676,411 (“the ‘411 Patent”); 7,685,055 (“the ‘055 Patent”); 7,693,768 (“the ‘768 Patent”);
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`7,813,996 (“the ‘996 Patent”); 7,904,374 (“the ‘374 Patent”); 7,212,999 (“the ‘999 Patent”);
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`7,533,056 (“the ‘056 Patent”); 7,783,556 (“the ‘556 Patent”) (collectively, the “CBM Patents”).1
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`Defendants challenged the patentability of the CBM Patents arguing, among other things, that
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`they are patent ineligible under 35 U.S.C. § 101. (See, e.g., Dkt. No. 726-1 at 11 (challenging
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`the ‘768 Patent on Section 101 grounds).) The PTO has instituted CBM reviews of the
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`challenged claims after determining that the petitions for (1) the ‘304 Patent, (2) the ‘132 Patent,
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`(3) the ‘411 Patent, (4) ‘056 Patent, (5) the ‘556 Patent, and (6) the ‘055 Patent demonstrate that
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`it is more likely than not that all of the challenged claims are patent ineligible under 35 U.S.C. §
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`101. The PTO will issue a decision regarding whether to institute additional CBM reviews for
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`the ‘996 and ‘999 Patents by August 19, 2016. Finally, the PTO must issue decisions on the
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`petitions for the ‘768 Patent by October 20, 2016 and the ‘374 Patent by October 4, 2016. (See
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`also Dkt. No. 745 at 2 (summarizing status of patents-in-suit).) In sum, at least one patent from
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`all three of the patent families at issue has a CBM review instituted or a CBM petition pending
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`against it.
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`
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`The PTO additionally granted IBG’s motions to join the CBM reviews that have already
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`been instituted. (Dkt. No. 726-2, 726-3.) Accordingly, all parties will be bound by the results of
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`the CBM proceedings. Defendants further represent that they “expect to file as co-petitioners or
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`request joinders in every CBM as permitted by law.” (Dkt. No. 726 at 1.)
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`
`
`
`
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`1 The Defendants have not filed petitions for CBM review for only two out of the twelve asserted patents, i.e.
`7,725,382 (“the ‘382 Patent”) and 7,412,416 (“the ‘416 Patent”). However, Defendants have represented to the
`Court, both in briefing and in open court, that they intend to file petitions for the remaining two patents shortly.
`(See, e.g., Dkt. No. 726 at 2 (“Defendants are preparing petitions for the remaining two patents and will submit those
`to the Patent Office…”); Dkt. No. 745 at 2 (chart stating that CBM review “will be filed shortly.”).)
`2
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`LEGAL STANDARD
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`Section 18 of the AIA provides for the establishment of transitional post-grant review
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`proceedings to reexamine the validity of covered business method patents. Leahy-Smith
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`America Invents Act, Pub. L. No. 112-29, § 18, 125 Stat. 284 (Sept. 16, 2011). The AIA also
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`establishes protocol with respect to related patent infringement actions and authorizes the district
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`courts to stay such parallel litigation under certain circumstances. Specifically, § 18(b)(1) states:
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`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--
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`(A) whether a stay, or the denial thereof, will simplify the
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`issues in question and streamline the trial;
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`(B) whether discovery is complete and whether a trial date
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`has been set;
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`(C) whether a stay, or the denial thereof, would unduly
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`prejudice the nonmoving party or present a clear tactical
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`advantage for the moving party; and
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`(D) whether a stay, or the denial thereof, will reduce the
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`burden of litigation on the parties and on the court.
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`Id. The statutory test thus 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 PTO. See, e.g., Genzyme
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`Corp. v. Cobrek Pharm., Inc., No. 10 CV 00112, 2011 WL 686807, at *1 (N.D. Ill. Feb. 17,
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`2011) (applying three-factor stay test that considers “whether a stay will (1) unduly prejudice or
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`tactically disadvantage the non-moving party, (2) simplify the issues in questions and streamline
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`the trial, and (3) reduce the burden of litigation on the parties and on the court”); JAB Distribs.,
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`LLC v. London Luxury, LLC, No. 09 C 5831, 2010 WL 1882010, at *1 (N.D. Ill. May 11, 2010).
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`
`
`The fourth factor was included, in part, to favor the granting of stays. See, e.g., Segin
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`Sys., Inc. v. Stewart Title Guar. Co., 30 F. Supp. 3d 476, 480 (E.D. Va. 2014) (fourth factor
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`
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`3
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`Case: 1:10-cv-00715 Document #: 757 Filed: 05/09/16 Page 4 of 14 PageID #:32735
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`“designed to place a thumb on the scales in favor of a stay”); Market-Alerts Pty. Ltd. v.
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`Bloomberg Fin. L.P., 922 F. Supp. 2d 486, 489-90 (D. Del. 2013) (fourth factor included “to
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`ease the movant’s task of demonstrating the need for a stay”). Congress signed the AIA into law
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`on September 16, 2011, and CBM review process came into effect in September 2012.
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`DISCUSSION
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`
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`The Defendants seek a stay of the litigation contending that the PTO’s determinations
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`regarding the CBM patents will streamline this case and simplify the issues before the Court.
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`The Defendants further argue that a stay is appropriate as the PTO has already instituted CBM
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`reviews for six patents, petitions for four more patents are already pending before the PTO, and
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`that petitions for the remaining two patents will be filed shortly. TT, in opposing the stay,
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`contends that the Defendants overstate the significance of CBM reviews, are using the stay
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`provision to gain an unfair advantage, and that the Court, rather than the PTO, is in the best
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`position to promptly evaluate the asserted patents under Section 101.
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`A.
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`Simplification of the Issues
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`
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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.” Pub. L. No. 112-29, § 18(b)(1)(A).
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`Staying a patent infringement case pending administrative review of the asserted patents’ validity
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`can simplify litigation in several ways:
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`1. All prior art presented to the Court will have been first
`considered by an expert PTO examiner;
`2. The reexamination may alleviate discovery problems relating to
`the prior art;
`3. The suit will likely be dismissed if the reexamination results in
`effective invalidity of the patent;
`4. The outcome of the reexamination may encourage settlement;
`5. The record of the reexamination would likely be entered at trial
`and thus reduce the complexity and length of the litigation;
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`4
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`6. The reexamination will facilitate limitation of issues, defenses,
`and evidence in pre-trial conferences;
`7. Litigation costs to the parties and the Court will likely be
`reduced.
`
`Genzyme, 2011 WL 686807, at 3-4 (quoting Emhart Indus., Inc. v. Sankyo Seiki Mfg. Co., Ltd.,
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`No. 85 C 7565, 1987 WL 6314, at 2 (N.D. Ill. Feb. 2, 1987); see also, e.g., Tap Pharm. Prods.,
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`Inc. v. Atrix Labs., Inc., No. 03 C 7822, 2004 WL 422697, at *1 (N.D. Ill. Mar. 3, 2004) (stay
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`warranted because “[t]here is a significant chance that the PTO will either invalidate this patent
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`or drastically decrease its scope [due to reexamination] . . . [creating] a very real possibility that
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`the parties will waste their resources litigating over issues that will ultimately be rendered moot
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`by the PTO’s findings”).
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`
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`Here, the PTO, through instituting CBM reviews for the ‘304 Patent, the ‘132 Patent, the
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`‘411 Patent, the ‘056 Patent, the ‘556 Patent, and the ‘055 Patent has expressly determined that
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`all of the challenged claims in those patents are more likely than not unpatentable. (See Dkt.
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`Nos. 669-13, 669-14, 675-1, 679-1, 682-1.) The benefits of a stay certainly exist where all of the
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`claims are under review, and would even exist if only some of the litigated claims were
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`undergoing review. See, e.g, Versata Software, Inc. v. Dorado Software, Inc., No. 2:13-cv-
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`00920-MCE-DAD, 2014 WL 1330652, at *3 n.2 (E.D. Cal. Mar. 27, 2014) (staying case where
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`CBM review granted for only one of three asserted patents and for less than all claims);
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`Destination Maternity Corp. v. Target Corp., 12 F. Supp. 3d 762, 769 (E.D. Pa. 2014) (“courts
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`have found significant potential for issue simplification even in cases where some but not all of
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`the asserted claims are subject to PTO review”); Genzyme, 2011 WL 686807, at *3 (stay
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`warranted even though “certain issues may remain in dispute even upon conclusion of the
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`reexamination proceedings”). Even assuming that the PTO chooses not to institute any of the
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`pending applications for review, the already instituted CBM reviews could potentially dispose of
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`
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`5
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`six patents (and all of their collective asserted claims) entirely, weighing heavily in favor of a
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`stay. This finding is bolstered by the fact that the PTO, through CBM proceedings, routinely
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`finds reviewed patents unpatentable. (See Dkt. No. 669 at 7 (Defendants citing statistics
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`indicating that “forty-three out of forty-five final written decisions on Section 101 grounds
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`invalidated all instituted claims, one invalidated some claims, and in the last case the patentee
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`surrendered the original claims through amendment.”).) Although TT argues that these statistics
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`are meaningless as “Defendants have failed to establish that any of the decisions they cite are
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`even closely related to this case,” see Dkt. No. 691 at 13, this counterargument does nothing to
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`controvert the fact a significant majority of CBM reviews lead to findings of unpatentability.
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`See, e.g., Norred v. Medtronic, Inc., No. 13-2061-EFM/TJJ, 2014 WL 554685, at *3 (D. Kan.
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`Feb. 12, 2014) (finding that factor weighed in favor of stay “based on the historical statistics
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`cited by Defendants and the Court's understanding of the bases for Defendants' petitions filed
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`with the PTAB, the Court finds that there are issues in this cases which would likely be
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`simplified or eliminated altogether if the PTAB grants Defendants' petitions for an inter partes
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`review.”).
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`
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`Moving beyond the patents that are already under instituted CBM reviews, the fact that
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`the Defendants have filed four additional petitions – and have represented to the Court on
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`multiple occasions that they plan to file petitions for the two remaining patents – also counsel in
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`favor of granting a stay of these proceedings.2 As an initial point, this undermines TT’s principal
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`argument in opposing the stay, i.e. “the CBM review will not dispose of the entire litigation.”
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`2 In its Sur-Reply, TT argues that the Court should ignore the Defendants’ statements that they are going to file
`CBM petitions for every patent in suit on the grounds that the Defendants improperly raised the issue for the first
`time in their Reply brief. (Dkt. No. 715-1 at 2.) However, given that TT has had the opportunity to reply, any
`impropriety has been resolved. See, e.g., Busenbark v. Panhandle E. Pipe Line Co., No. 1:13-CV-01663-WTL, 2014
`WL 6977204, at *2 (S.D. Ind. Dec. 8, 2014) (“In light of the fact that the Defendant has been given the proper
`opportunity to reply to Plaintiffs' Declaration in its surreply to Plaintiffs' motion to enforce the settlement agreement,
`any impropriety of Plaintiffs' having used the Declaration to introduce new evidence in a reply brief has been
`resolved, and the Court will not strike any portion of Plaintiffs' Declaration.”).
`6
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`Page 6 of 14
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`(See Dkt. No. 691 at 14.) While it is certainly the case that merely filing a petition for CBM
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`review in no way ensures that a CBM review will in fact follow (or that even if a review were to
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`follow, the patent would be found unpatentable), it is equally the case that the burden on the
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`Court and the parties would be significantly lessened if any (or all) of these petitions led to
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`additional CBM institutions.
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`
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`TT’s argument that a stay is inappropriate as only some subset of the patents may be
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`subjected to CBM reviews similarly misses the point. Even if it comes to fruition that only
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`eight3 or some similar number of patents survive CBM review, the cancellation of the other
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`patents or claims “could significantly alter this action by clarifying and narrowing the claims and
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`defenses available” to the parties here. Versata, 2014 WL 1330652, at *2. The fact that the PTO
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`is reviewing only a subset of the asserted patents, with the potential of additional institutions in
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`the future, does not eliminate the benefit of a stay in order to avoid duplicitous litigation on
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`potentially moot claims and issues. See VirtualAgility, 759 F.3d at 1314 (disposing of the entire
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`litigation is “the ultimate simplification of issues”); see also, e.g., Old Reliable Wholesale, Inc. v.
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`Cornell Corp., 635 F.3d 539, 548 (Fed. Cir. 2011) (“PTO has acknowledged expertise in
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`evaluating prior art and assessing patent validity”); SenoRx, Inc. v. Hologic, Inc., No. 12-173-
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`LPS-CJB, 2013 WL 144255, at *4 (D. Del. Jan. 11, 2013) (courts benefit from the PTO’s
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`analysis of prior art that is later presented in litigation regardless of the outcome of the review).
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`Furthermore, at least one patent from each of the asserted patent families is now under review,
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`lending credence to the Defendants’ contentions that the underlying claims, although different,
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`may be reviewed for the same abstract idea, i.e. “providing information for market trades.” (Dkt.
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`No. 669 at 8.) Indeed, the very purpose of the AIA is to avoid litigation on patents and claims
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`that may themselves become moot through CBM review. See, e.g., JAB Distribs., 2010 WL
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`3 TT raised this as a hypothetical number in its own briefing. (See Dkt. No. 691 at 14.)
`7
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`Page 7 of 14
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`1882010, at *1. As such, and because the Court may, in its discretion, decide to institute a stay
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`even before the PTO acts on such petitions, see Intellectual Ventures II LLC v. JPMorgan Chase
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`& Co., 781 F.3d 1372, 1378-79 (Fed. Cir. 2015) (“[i]mportantly, moreover, our conclusion that
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`we do not have jurisdiction over an interlocutory appeal before the PTAB grants a petition and
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`institutes a CBMR proceeding does not affect the district court's ability to exercise its discretion
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`in deciding a motion to stay at any time; i.e., our holding does not prevent a district court from
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`choosing to decide a motion before the PTAB acts on a CBMR petition.”), the first factor
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`counsels in favor of granting a stay.
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`
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`B.
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`Stage of Litigation
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`“Staying a case at an early juncture can be said to advance judicial efficiency and
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`maximize the likelihood that neither the Court nor the parties expend their assets addressing
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`invalid claims.” Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10 C 715, 2015 WL
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`1396632, at *4 (N.D. Ill. Mar. 25, 2015), appeal dismissed (July 27, 2015) (citations omitted).
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`“On the other hand, when confronted with a motion to stay in the later stages of a case, ‘the
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`[c]ourt and the parties have already expended significant resources on the litigation, and the
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`principle of maximizing the use of judicial and litigant resources is best served by seeing the case
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`through to its conclusion.’” See, e.g., Mkt.-Alerts Pty., 922 F. Supp. 2d at 494 (quoting SenoRx,
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`2013 WL 144255, at *5 (“On the other hand, when a request for reexamination comes after
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`discovery is complete or nearly complete, and a trial is imminent, a stay is less likely to be
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`granted”)).
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`
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`Although this case has been pending before this Court for six years, due to previous stays
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`in proceedings, early summary judgment motion practice, an appeal to the Federal Circuit, and
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`8
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`Page 8 of 14
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`the parties’ numerous discovery conflicts4, this case is still in its early stages substantively.
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`While discovery is slightly further along than it was when the Court instituted the prior stay, the
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`case still stands with significant discovery yet to be completed5, claim construction has not
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`occurred, and a trial date has yet to be set. In such cases, a stay is appropriate. See, e.g.,
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`Smartflash LLC v. Apple Inc., 621 F. App'x 995, 1005-06 (Fed. Cir. 2015) (“Despite the
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`substantial time and effort already spent in this case, the most burdensome task is yet to come. A
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`determination from the PTAB that all the asserted claims are patent ineligible will spare the
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`parties and the district court the expense of any further litigation, including a trial.”);
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`VirtualAgility, 759 F.3d at 1317 (stage of litigation factor favored stay where no trial date had
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`been set, fact discovery had yet to be completed, and claim construction statements had yet to be
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`filed); Versata, 2014 WL 1330652, at *3 (factor supported stay in part because neither a
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`Markman claim construction nor a trial date had been set).
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`In opposition, TT contends that the case is not in its infancy, pointing to the amount of
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`written discovery that has been issued and the fact that this is a six-year-old litigation. Yet, TT
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`takes the exact opposite position in its co-pending motion to file a third amended complaint in
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`which it seeks to add even more patents and claims to this litigation, actions which will only add
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`to the amount of work to be done between now and a potential trial. (See, e.g., Dkt. No. 643 at 4
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`(TT stating “[w]ith nearly two years before a trial could occur, and several months of discovery
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`yet to transpire…there can be no prejudice to Defendants.”); Dkt. No. 654 at 3 (TT stating
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`4 The parties have filed numerous discovery motions, and in particular motions to compel, throughout the discovery
`process. Even in the instance where the parties were able to agree to a stipulation to moot a motion to compel, see
`Dkt. No. 709 (joint stipulation regarding source code production), the Defendants subsequently filed a motion
`alleging that TT was not acting pursuant to the stipulation. (See Dkt. No. 720 at 2 (“While the parties have now
`agreed on a Joint Stipulation Regarding Source Code Production (Dkt. No. 709) (Mar. 29, 2016), and the
`Defendants have agreed to produce their source code pursuant to this stipulation, TT refuses to undertake a mutual
`production.”).) That motion is now pending before the Court and is in the midst of briefing. (Dkt. No. 728.)
`5 Although written discovery is underway, see Dkt. No. 691 at 11, there has been no oral discovery (the first
`deposition notices were sent only in early February), infringement, invalidity, and responsive charts have yet to be
`finalized, and third party discovery has not begun. (Dkt. No. 669 at 10-11.)
`9
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`“[a]lthough the case is old, discovery is in its infancy” and “while the case is over five years old,
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`discovery is in its very early stages because of the early summary judgment briefing and two
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`subsequent appeals that occurred in this case. Indeed, for the first time, a discovery schedule for
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`the consolidated case has been established, with the parties recently exchanging initial
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`disclosures and TT serving its initial infringement contentions on Defendants….”). TT “cannot
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`have it both ways” and given the Court’s finding on this issue above, TT’s counterargument is
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`rejected. See, e.g., McCluney v. Jos. Schlitz Brewing Co., 515 F. Supp. 700, 702 (E.D. Wis.
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`1981). The stage of the litigation therefore supports a stay.
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`C.
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`Undue Prejudice or Tactical Advantage
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`“When assessing the third factor in determining whether to grant a stay pending CBM
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`review, courts consider a variety of factors to determine the prejudice to the non-movant,
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`including the timing of the stay request, the status of review proceedings, and the relationship
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`between the parties.” Trading Techs., 2015 WL 1396632, at *5. Although the potential for
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`delay “does not, by itself, establish undue prejudice,” the Court recognizes that “that waiting for
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`the administrative process to run its course risks prolonging the final resolution of the dispute
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`and thus may result in some inherent prejudice to the plaintiff.” See, e.g., Mkt.-Alerts, 922 F.
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`Supp. 2d at 494 (emphasis in original). The Defendants argue that, while it is certainly the case
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`that any delay may prejudice the Plaintiff (though not unduly so), they are seeking a stay to allow
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`the CBM proceedings to act as an “alternative to litigation – exactly as Congress intended.”
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`(Dkt. No. 669 at 14.) TT primarily contends that it will be prejudiced because the Defendants
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`improperly waited to file their CBM petitions to gain a tactical advantage and because the parties
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`are direct competitors. (Dkt. No. 691 at 9-10.)
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`It is certainly the case that the timing of the CBM petitions that underlie the motion to
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`stay, filed some three-and-a-half years after the CBM proceeding was introduced, the early stage
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`of the CBM proceedings, and the fact that the parties are direct competitors all counsel in favor
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`of denying the stay. In fact, Defendants fail to address TT’s contention that they could have filed
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`the petitions, raising the same exact issues, years in advance. In addition, that TT and the
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`Defendants are direct competitors in this space can support a finding of undue prejudice.
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`VirtualAgility, 759 F.3d at 1318 (“competition between parties can weigh in favor of finding
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`undue prejudice.”). TT surmises, based on the above, that the Defendants’ motivation in filing
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`the “CBMs [has] never been about the merits, but instead about the gamesmanship and delay.”
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`(Dkt. No. 715-1 at 4.) However, based on the PTO’s high patent invalidation rates through CBM
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`proceedings and the fact that the Defendants present reasons for why they only recently filed
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`(and are still filing) the CBM petitions – principally the amount of money required to institute
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`the proceedings and the time needed to prepare the petitions following the TT and TD
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`Ameritrade settlement – a finding of dilatory intent or other gamesmanship is inappropriate.
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`Defendants’ decisions to not join TD Ameritrade’s prior CBM petitions similarly do not cause
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`alarm because Defendants have argued on multiple occasions that they did not have intimate
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`knowledge of TD Ameritrade’s CBM preparations.6 TT’s argument that it will suffer prejudice
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`in the event of a stay because of evidentiary loss is likewise unpersuasive.7 See VirtualAgility,
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`6 TT’s argues that the Defendants “choice in not joining in any of TD’s earlier-filed CBM Petitions, despite having
`plenty of chances, and despite TD and IB even being represented by the same counsel, was an obvious dilatory
`move.” (Dkt. No. 691 at 9) (emphasis in original). Yet, Defendants clearly state that TD Ameritrade was
`“represented in [the] CBM proceedings by separate and different counsel not present in this litigation” and further
`state that they did not receive any drafts of the petitions nor did the Defendants and TD “discuss the bases, grounds,
`or arguments raised in the petitions.” (Dkt. No. 708 at 10 n. 7.) As such, based on the disputed record, the Court
`declines to find any dilatory intent.
`7 The Court is cognizant of TT’s contentions that the petitions will take anywhere between 12-24 more months to be
`completed and that such a delay will cause it undue prejudice. (Dkt. No. 691 at 15.) At the same time, TT’s
`pending motions to amend to add more parties, more patents, and more claims to this litigation run contrary to its
`delay concerns. Its actions further undermine its contention that the Court, rather than the PTO, will be able to
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`759 F.3d at 1319 (“It is undoubtedly true . . . that with age and the passage of time, memories
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`may fade and witnesses may become unavailable. Without more, however, these assertions are
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`not sufficient to justify a conclusion of undue prejudice.”).
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`Moreover, TT’s allegations that it will suffer undue prejudice continue to be undermined
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`by its failure to pursue a preliminary injunction and its decision to bring this infringement action
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`six to seven years after the Defendants released their accused technology. (Dkt. No. 708 at 13.)
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`TT’s decision to forego seeking a preliminary injunction is particularly detrimental to its claim.
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`See, e.g., Trading Tech., 2015 WL 1396632, at *5 (“TT's cries of undue prejudice are belied by
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`its approach to this litigation. TT never sought a preliminary injunction and waited more than a
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`year after TD Ameritrade released its accused technology to institute its infringement action.”);
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`VirtualAgility, 759 F.3d at 1319-20 (while not dispositive, “patentee’s delays in pursuing suit and
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`seeking preliminary injunctive relief belie its claims that it will be unduly prejudiced by a stay”);
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`see also, e.g., Zillow, 2013 WL 5530573, at *6 (“attempts by a patentee to argue undue prejudice
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`are undermined if the patentee has elected not to pursue preliminary injunctive relief”); Ever Win
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`Intern. Corp. v. Radioshack Corp., 902 F. Supp. 2d 503, 511 (D. Del. 2012) (“Plaintiff never
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`sought a preliminary injunction, which suggests that any prejudice to Plaintiff that might result
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`from delaying
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`the ultimate
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`resolution of
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`this dispute
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`is not as severe as
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`it
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`contends.”); BodyMedia, Inc. v. Basis Science, Inc., No. 12–cv–133 (GMS), 2013 WL 2462105,
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`at *1, n. 1 (D. Del. June 06, 2013); Hill–Rom Servs., Inc. v. Stryker Corp., No. 1:11–cv–1120–
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`JMS–DKL, 2012 WL 5878087, at *2 (S.D. Ind. Nov. 20, 2012) (“[A]ttempts by a patentee to
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`argue undue prejudice are undermined if it has elected not to pursue a preliminary injunction.”);
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`decide these issues more quickly, particularly as it continues to seek to add more disputes to this litigation. In any
`event, while the potential delay is notable, it is outweighed by the other considerations discussed herein.
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`JAB Distribs., 2010 WL 1882010, at *4 (“Plaintiff’s claim that it will suffer irreparable harm is
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`undermined by the fact that its complaint . . . does not seek preliminary injunctive relief”).
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`D.
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`Burden of Litigation
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`At least one court has found that the fourth factor was designed to place “a very heavy
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`thumb on the scale in favor of a stay being granted” where a review has been instituted. See,
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`e.g., Landmark Tech., LLC v. iRobot Corp., No. 6:13CV411 JDL, 2014 WL 486836, at *4 (E.D.
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`Tex. Jan. 24, 2014) (“if a proceeding against a business method patent is instituted, the district
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`court would institute a stay of litigation unless there were an extraordinary and extremely rare set
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`of circumstances not contemplated in any of the existing case law related to stays pending
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`reexamination.”) (quoting 157 Cong. Rec. S1363-64 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Charles Schumer)). Moreover, if the PTO “cancels all or some of the claims, then those claims
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`will no longer be at issue,” reducing the litigation burden on the Court and the parties. See, e.g.,
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`Ignite USA, LLC v. Pac. Mkt. Int'l, LLC, No. 14 C 856, 2014 WL 2505166, at *4 (N.D. Ill. May
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`29, 2014) (“Again, if the USPTO cancels all or some of the claims, then those claims will no
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`longer be at issue.”); Black & Decker Inc. v. Positec USA, Inc., No. 13 C 3075, 2013 WL
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`5718460, at *1 (N.D. Ill. Oct. 1, 2013) (“a stay at this early stage of the litigation could
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`significantly limit litigation expenses and streamline the proceedings, particularly should the
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`PTO invalidate the claim at issue”). As discussed above, there is high likelihood at that least six
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`of the asserted patents will be found unpatentable. Four more petitions are already pending and
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`two are, based on the Defendants’ representations, soon to be filed. While it is true that the
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`nature of this litigation has been “stop-and-go,” both parties have been responsible for the near-
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`constant delays. Moreover, given that a good portion – and potentially each and every one – of
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`the asserted patents may be under CBM review, the Court is well within its discretion to find a
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`stay appropriate to lessen the burden of litigation. Accordingly, the Court concludes that a likely
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`reduced litigation burden also favors a stay of the consolidated cases.
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`CONCLUSION
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`For the reasons stated herein, the Court grants the Defendants’ Motion to Stay and stays
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`the consolidated cases in their entirety. (Dkt. No. 667.) Status hearing is set for October 13,
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`2016 at 10:00 a.m. The parties are directed to inform the Court of each CBM review order
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`within two days of the order being entered.
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`________________________________________
`Virginia M. Kendall
`United States District Court Judge
`Northern District of Illinois
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`Date: 5/9/2016
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