Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 1 of 21
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`
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`Plaintiff,
`
`Defendant.
`
`
`
`TRADESTATION TECHNOLOGIES, INC.,
`
`
`
`v.
`
`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.
`
`
`
`
`TRADESTATION TECHNOLOGIES
`International, inc.,
`
`
`
`v.
`
`TRADESTATION TECHNOLOGIES, INC.,
`TRADESTATION SECURITIES, INC.,
`TRADESTATION GROUP, INC., and
`IBFX, INC.
`
`
`
`
`
`
`
`
`Counterclaimant,
`
`Counterclaim Defendants.
`
`
`
`Case No. 0:16-cv-60296-WJZ
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`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`TRADESTATION’S MOTION TO STAY
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`Page 1 of 21
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`TRADING TECH EXHIBIT 2415
`IBG ET AL. v. TRADING TECH
`CBM2015-00179
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`

`

`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 2 of 21
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`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .......................................................................................................... ii
`
`I.
`
`Introduction .......................................................................................................................... 1
`
`II.
`
`Statement of Facts ................................................................................................................ 2
`
`A.
`
`B.
`
`C.
`
`This Lawsuit Has Been Pulled into TT’s Web of Litigation ...................................2
`
`CBM Reviews on TT’s GUI Patents .......................................................................3
`
`35 U.S.C. § 101 and Alice ........................................................................................5
`
`III.
`
`This Case Should Be Stayed ................................................................................................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Legal Standard Favors A Stay ..........................................................................6
`
`Factor 1: A Stay Will Greatly Simplify the Issues ..................................................7
`
`Factor 2: The Relatively Early Stage of the Substance of the Litigation
`Favors a Stay ............................................................................................................9
`
`Factor 3: A Stay Will Not Unduly Prejudice TT or Present a Clear Tactical
`Advantage to TradeStation ....................................................................................10
`
`E.
`
`Factor 4: A Stay Will Reduce the Burden on the Parties and the Court ................11
`
`IV. Conclusion ......................................................................................................................... 12
`
`CERTIFICATE OF CONFERENCE ............................................................................................ 13
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`CERTIFICATE OF SERVICE ..................................................................................................... 15
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`SERVICE LIST ............................................................................................................................ 16
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`
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`i
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`Page 2 of 21
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`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 3 of 21
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ACQIS, LLC v. EMC Corp.,
`109 F. Supp. 3d 352 (D. Mass. 2015) ......................................................................................... 7
`
`Alice Corp. Pty. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ............................................................................................................ 5, 8
`
`Benefit Funding Sys. LLC v. Advance Am. Cash Advance Centers Inc.,
`767 F.3d 1383 (Fed. Cir. 2014) .................................................................................................. 8
`
`Chart Trading Dev., LLC v. Tradestation Grp., Inc.,
`No. 6:15-CV-1136-JDL, 2016 WL 1246579 (E.D. Tex. Mar. 29, 2016) ................................... 6
`
`Destination Maternity Corp. v. Target Corp.,
`12 F. Supp. 3d 762 (E.D. Pa. 2014) ............................................................................................ 8
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) .................................................................................................................... 5
`
`iMTX Strategic LLC v. Vimeo LLC,
`No. C 15-00592 JSW et al., 2015 WL 4089911 (N.D. Cal. July 6, 2015) ................................. 6
`
`JLIP, LLC v. Jetavation Inc., et. al.,
`No. 14-61618-CIV-ZLOCH, ECF No. 31 (S.D. Fla. Apr. 29, 2015) ....................................... 12
`
`Knauf Insulation, LLC v. Johns Manville Corp.,
`No. 1:15-CV-00111-WTL-MJD, 2015 WL 7084079 (S.D. Ind. Nov. 13, 2015) ....................... 6
`
`Landmark Tech., LLC v. iRobot Corp.,
`No. 6:13CV411 JDL, 2014 WL 486836 (E.D. Tex. Jan. 24, 2014) ....................................... 7, 9
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ................................................................................................................ 5
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................................................. 8
`
`Mkt.-Alerts Pty. Ltd. v. Bloomberg Fin. L.P.,
`922 F. Supp. 2d 486 (D. Del. 2013) .................................................................................. 7, 8, 10
`
`MPEG, Inc. v. Hewlett-Packard Comp.,
`No. 2:15CV73, 2015 WL 5567085 (E.D. Va. Sept. 21, 2015) ................................................... 6
`
`Old Reliable Wholesale, Inc. v. Cornell Corp.,
`635 F.3d 539 (Fed. Cir. 2011) .................................................................................................... 7
`
`ii
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`
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`Smartflash LLC v. Apple Inc.,
`621 F. App’x 995 (Fed. Cir. 2015) ........................................................................................... 10
`
`Software Rights Archive, LLC v. Facebook, Inc.,
`No. C-12-3970 RMW et al., 2013 WL 5225522 (N.D. Cal. Sept. 17, 2013) ............................. 6
`
`Tel. Sci. Corp. v. Asset Recovery Sols., LLC,
`No. 15 C 5182, 2016 WL 47916 (N.D. Ill. Jan. 5, 2016) ........................................................... 7
`
`Trading Techs. Int’l, Inc. v. BCG Partners, Inc.,
`--- F. Supp. 3d ---, No. 10 C 715, 2016 WL 2622301 (N.D. Ill. May 9, 2016) ................. passim
`
`Trading Techs. Int’l, Inc. v. BCG Partners, Inc.,
`No. 10 C 715, 2015 WL 1396632 (N.D. Ill. Mar. 25, 2015) .................................................... 11
`
`Unisone Strategic IP, Inc. v. Life Techs. Corp.,
`No. 3:13-cv-1278-GPC-JMA, 2015 WL 1606341 (S.D. Cal. Apr. 8, 2015) .............................. 7
`
`Versata Software, Inc. v. Dorado Software, Inc.,
`No. 2:13-cv-00920-MCE-DAD, 2014 WL 1330652 (E.D. Cal. Mar. 27, 2014) ........................ 8
`
`Statutes
`
`35 U.S.C. § 101 ....................................................................................................................... 4, 5, 8
`
`35 U.S.C. § 324 ............................................................................................................................... 3
`
`35 U.S.C. § 326(a)(11) .................................................................................................................... 4
`
`AIA § 18(a)(1)(B) ........................................................................................................................... 3
`
`AIA § 18(a)(1)(D) ........................................................................................................................... 8
`
`AIA § 18(b)(1) ............................................................................................................................ 1, 6
`
`AIA § 18(b)(1)(A)........................................................................................................................... 7
`
`AIA § 18(b)(1)(D)......................................................................................................................... 11
`
`Regulations
`
`37 C.F.R. § 42.207(b) ..................................................................................................................... 4
`
`37 C.F.R. § 42.208 .......................................................................................................................... 3
`
`37 C.F.R. § 42.300(a)...................................................................................................................... 4
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48757 (Aug. 14, 2012) .......................................................................................... 4
`
`iii
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48768 ..................................................................................................................... 4
`
`Other Authorities
`
`157 Cong. Rec. S1053 (daily ed. Mar. 1, 2011) ....................................................................... 1, 11
`
`157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) ................................................................... 3, 6, 11
`
`Michelle K. Lee, PTAB Update: Proposed Changes to Rules Governing
`PTAB Trial Proceedings, Director’s Forum: A Blog from USPTO’s Leadership,
`United States Patent and Trademark Office,
`http://www.uspto.gov/blog/director/entry/ptab_update_proposed_changes_to
`(Aug. 19, 2015) ........................................................................................................................... 4
`
`
`
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`iv
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`
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`I.
`
`Introduction
`
`Plaintiff and Counterclaim-Defendants TradeStation Technologies,
`
`Inc., et al.
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`(“TradeStation”), pursuant to § 18(b)(1) of the America Invents Act (“AIA”) and the Court’s
`
`inherent power to manage its docket, move for a stay of this lawsuit so that the Patent Trial and
`
`Appeal Board (“PTAB”) can complete its review of pending petitions for Patent Covered
`
`Business Method Reviews (CBM), which will likely directly impact the counterclaims asserted
`
`in this action and should substantially narrow the issues in this case with regard to the eight
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`patents asserted by Defendant and Counterclaimant Trading Technologies International, Inc.
`
`(“TT”).1
`
`TradeStation has filed CBM petitions against two of the eight patents in the
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`counterclaims. In addition, five of the other patents asserted in the counterclaim originate from a
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`patent which is part of a twelve-patent case in Chicago that has been stayed pending review of
`
`eleven CBM petitions. One of the Chicago case patents is in this case (‘416), the others are
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`related to the same GUI subject matter. fact, TT tried to add three of the counterclaim patents to
`
`the Chicago case. Attached as Exhibit A is a chart showing the relationship among the asserted
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`patents in the two litigations.
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`Moreover, the two newly-asserted patents in TT’s amended counterclaims were added
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`just days after a Northern District of Illinois judge stayed TT’s lawsuit in Chicago involving
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`related patents. Staying the instant action will ensure that all of these related matters will be
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`resolved either at the PTAB or narrowed by its final written decisions.
`
`All factors weigh heavily in favor of a stay pursuant to § 18(b)(1) of the AIA and the
`
`Court’s own discretion to grant a stay. There is no doubt that granting the stay will allow for a
`
`simplification of the issues. A stay will streamline the trial. Discovery is at its early stages so
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`the economy to be achieved is enormous. There will be no prejudice to TT since it is seeking
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`money and any delay can be compensated by money damages. Grant of a stay will fulfill
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`Congress’ intent to provide for a specialized, expedited and economical agency forum to
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`determine validity and other issues and to reduce the complexity and expense of patent litigation.
`
`
`1 The CBM procedures “allow companies that are the target of one of these frivolous business
`method patent lawsuits to go back to the PTO and demonstrate . . . that the patent shouldn’t have
`been issued in the first place.” 157 Cong. Rec. S1053 (daily ed. Mar. 1, 2011).
`
`1
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`
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`II.
`
`Statement of Facts
`
`A.
`
`This Lawsuit Has Been Pulled into TT’s Web of Litigation
`
`TT has been pursuing a program of litigation and licensing graphical user interface
`
`patents in the brokerage industry since 2004. TT has spawned multiple lawsuits against
`
`numerous parties, six Federal Circuit appeals and over a dozen administrative actions.
`
`TT first sued TradeStation (along with others) in 2010 in Chicago (the “Chicago case”)
`
`for infringement of ten patents related to graphical user interfaces. See Trading Techs. Int’l, Inc.
`
`v. BCG Partners, Inc., --- F. Supp. 3d ---, No. 10 C 715, 2016 WL 2622301, at *1 (N.D. Ill. May
`
`9, 2016) (attached as Exhibit B). This case has now been stayed in light of the PTAB’s finding
`
`in multiple petitions that the challenged graphical user interface patents in each instance are more
`
`likely than not invalid (among other reasons). See id. at *3. Other petitions remain pending.
`
`In February 2016, TradeStation sued TT here for infringement of U.S. Patent No.
`
`7,379,909 (“the ’909 patent”), which is directed to a system and method that allows a trader to
`
`write a trading strategy, back test the trading strategy and then automate that trading strategy to
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`automatically generate entry and exit orders based on that strategy. See ECF No. 1, Ex. A.
`
`TradeStation’s patent is not related in any way to TT’s graphical user interface patents. This suit
`
`was instituted soon after TradeStation discovered from a TT published advertisement that TT is
`
`seeking to offer a product feature which TradeStation believes directly infringes the ‘909 patent.
`
`However, in a lengthy counterclaim, TT has asserted eight patents that, as in Chicago, are
`
`directed to graphical user interfaces (“GUIs”) for electronic trading. See ECF No. 34 (Amended
`
`Complaint and Counterclaims). Three of these patents were pulled by TT from the co-pending
`
`litigation in Chicago (as mentioned, two of the eight were added here after the court in Chicago
`
`stayed that case).
`
`As shown by the chart below, five of the patents in this lawsuit (‘424, ‘247, ‘724, ‘929,
`
`and ‘566) all derive from one of the patents in the Chicago case (‘132), which is now being
`
`reviewed by the PTAB. The Chicago case also has a patent by Singer, which likewise is being
`
`reviewed by the PTAB. Two patents by Friesen are pending in Chicago, which are both being
`
`reviewed by the PTAB. Like the Singer and Friesen patents here, they relate to graphical user
`
`interfaces.
`
`2
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`
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`Importantly, TT’s patent infringement counterclaims are an attempt to avoid the stay in
`
`the Chicago case. As discussed in the Chicago Court’s May 9, 2016 Order, TradeStation had
`
`filed CBM petitions in the U.S. Patent and Trademark Office (“PTO”). See Trading Techs.,
`
`2016 WL 2622301, at *1. The first six of these petitions have been accepted for review
`
`(“instituted”) on six of TT’s graphical user interface patents on the bases that it is more likely
`
`than not that they are invalid. See id. Five more petitions are pending and another will be filed
`
`shortly.
`
`TradeStation has likewise now filed petitions for CBM on two of the graphical interface
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`patents in this case, the ‘416 (also in the Chicago case) and the ‘247 (related to the ‘132 patent in
`
`the Chicago case).
`
`B.
`
`CBM Reviews on TT’s GUI Patents
`
`The CBM procedures were enacted by Congress and designed to “provide a cheaper,
`
`faster alternative to district court litigation” over their validity. 157 Cong. Rec. S1363 (daily ed.
`
`Mar. 8, 2011). A party that is already engaged in litigation may petition the PTAB for review.
`
`See AIA § 18(a)(1)(B). If the PTAB determines that it is “more likely than not” that one or more
`
`challenged claims are invalid, it then “institutes” the CBM review and conducts an inter partes
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`administrative trial. 35 U.S.C. § 324; 37 C.F.R. § 42.208. At the conclusion of the trial, the
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`PTAB issues a “final written decision.” These decisions address claim construction issues, as
`
`well as validity or patentability defenses. An unsuccessful petitioner is barred from re-litigating
`
`the same defense in district court. The loser may appeal directly to the Federal Circuit Court of
`
`Appeals.
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`There are currently thirteen CBMs pending on TT’s GUI patents. Of these, the PTAB
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`has already instituted reviews in six cases. A common element in its institution decisions is that
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`3
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`
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`the PTAB has determined that it is more likely than not that all challenged patent claims are
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`invalid under 35 U.S.C. § 101. See, e.g., CBM2015-00161, Paper No. 29 at 2 (attached as
`
`Exhibit C) (“it is more likely than not that the challenged claims are unpatentable under
`
`35 U.S.C. § 101.”). The pending CBMs on TT’s GUI patents and their current status are
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`summarized below, along with the latest date for the PTAB to issue its final written decisions
`
`(assuming that it does not grant an unprecedented extension of up to six months):2
`
`Patent No.
`
`CBM
`
`6,766,304
`6,772,132
`7,676,411
`7,693,768
`7,725,382
`7,813,996
`7,904,374
`7,685,055
`7,533,056
`7,212,999
`7,412,416
`7,783,556
`7,818,247
`
`
`
`CBM2015-00161
`CBM2015-00182
`CBM2015-00181
`CBM2016-00054
`(To be filed)
`CBM2016-00031
`CBM2016-00051
`CBM2016-00009
`CBM2015-00179
`CBM2016-00032
`CBM2016-00086
`CBM2016-00040
`CBM2016-00087
`
`Status
`
`Date Filed
`or
`Instituted
`Instituted 1/27/2016
`Instituted 3/3/2016
`Instituted 3/7/2016
`Filed
`4/12/2016
`
`
`Filed
`2/9/2016
`Filed
`3/29/2016
`Instituted 4/28/2016
`Instituted 2/24/2016
`Filed
`2/9/2016
`Filed
`6/3/2016
`Instituted 4/4/2016
`Filed
`6/7/2016
`
`Final
`Written
`Decision
`1/12/2017
`3/3/2017
`3/7/2017
`12/12/2017
`
`10/9/2017
`11/29/2017
`4/28/2017
`2/24/2017
`10/9/2017
`2/3/2017
`4/4/2017
`2/7/2017
`
`Of the above-listed patents subject to CBM review, TT has asserted the ’247 and ’416
`
`Patents as counterclaims in this case. Copies of the Petitions for CBM Review of the ‘247 and
`
`
`2 The PTAB is required by statute to expeditiously complete CBM reviews. After a petition has
`been filed, the patent owner has at most three months to provide a preliminary response. See 37
`C.F.R. § 42.300(a); id. § 42.207(b). After that, within three months the PTAB will decide
`whether to institute review. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48757 (Aug.
`14, 2012). After that, within one year (or eighteen months with good cause), the PTAB must
`issue a final written decision. See id. at 48768; 35 U.S.C. § 326(a)(11). As indicated, the PTAB
`may extend this deadline by six months upon a showing of “good cause.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48768; 35 U.S.C. § 326(a)(11). However, TradeStation is not
`aware of any instance where the PTAB has granted such an extension. See Michelle K. Lee,
`PTAB Update: Proposed Changes to Rules Governing PTAB Trial Proceedings, Director’s
`Forum: A Blog from USPTO’s Leadership, United States Patent and Trademark Office,
`http://www.uspto.gov/blog/director/entry/ptab_update_proposed_changes_to (Aug. 19, 2015)
`(“the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within
`the mandated time frame of one year.”).
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`4
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`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 10 of 21
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`‘416 are attached as Exhibits D and E. The first CBM decision listed above, on TT’s 6,766,304,
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`patent, CBM2015-00161, is also attached as Exhibit C. It states that the graphical user interface
`
`is not likely patentable. Also attached is the institution decision for the ‘132 patent, from which
`
`the five “Brumfield Patents” in this case were derived Exhibit F, and it too finds the graphical
`
`user interface not likely patentable. Finally, this case includes GUI patents by Singer and
`
`Friesen and institution decisions on a patent by Singer from the Chicago case which is attached
`
`as Exhibit G, and one of two institution decisions on patents by Friesen is attached as Exhibit H:
`
`likewise, the PTAB found the graphical user interfaces in these patents more likely than not
`
`unpatentable.
`
`C.
`
`35 U.S.C. § 101 and Alice
`
`Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process,
`
`machine, manufacture, or composition of matter, or any new and useful improvement thereof,
`
`may obtain a patent therefor . . . .” However, the Supreme “Court has long held that this
`
`provision contains an important implicit exception. ‘[L]aws of nature, natural phenomena, and
`
`abstract ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
`
`Ct. 1289, 1293 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
`
`The Supreme Court’s 2014 seminal Alice decision represented a dramatic shift in the
`
`Court’s § 101 jurisprudence that has led to findings of invalidity for many business software
`
`patents. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). In Alice, the Court held that
`
`common business practices do not become eligible for patenting simply because they are
`
`implemented on a generic computer. See id. at 2352 (“We hold that the claims at issue are drawn
`
`to the abstract idea of intermediated settlement, and that merely requiring generic computer
`
`implementation fails to transform that abstract idea into a patent-eligible invention.”); id. at 2358
`
`(“Stating an abstract idea while adding the words ‘apply it with a computer’” is not enough for
`
`patent eligibility).
`
`The powerful combination of Alice and the CBM review procedures has been applied by
`
`the PTAB to review numerous business method patents like those asserted by TT in this case.
`
`Historically, 94% (67 out of 71) of final written decisions for CBMs instituted on § 101 grounds
`
`invalidated all patent claims at issue, three had mixed findings, and in the last case the patentee
`
`surrendered all of its claims through amendment. See Ex. I (statistics from Lex Machina).
`
`5
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`
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`III. This Case Should Be Stayed
`
`A.
`
`The Legal Standard Favors A Stay
`
`Because Congress intended for the CBM procedures to “provide a cheaper, faster
`
`alternative to district court litigation,” Congress enacted a liberal stay provision that “places a
`
`very heavy thumb on the scale in favor of a stay being granted.” 157 Cong. Rec. S1363 (daily
`
`ed. Mar. 8, 2011) (emphasis added); AIA § 18(b)(1). Pursuant to § 18(b)(1) of the AIA, a
`
`district court “shall decide whether to enter a stay based on” 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.
`
`“It is congressional intent that a stay should only be denied in extremely rare circumstances.”
`
`157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011).
`
`As an initial matter, it is appropriate for courts to consider § 18(b)(1) in deciding whether
`
`to enter a stay based on a CBM petition even before the PTAB has made an initial decision to
`
`accept the petition for CBM review. See, e.g., Chart Trading Dev., LLC v. Tradestation Grp.,
`
`Inc., No. 6:15-CV-1136-JDL, 2016 WL 1246579, at *5-6 (E.D. Tex. Mar. 29, 2016) (applying
`
`AIA § 18(b)(1) and expressly considering “the strong language proffered in the legislative
`
`history” in ordering a stay based on pending CBM petitions); see also Audio MPEG, Inc. v.
`
`Hewlett-Packard Comp., No. 2:15CV73, 2015 WL 5567085 (E.D. Va. Sept. 21, 2015); iMTX
`
`Strategic LLC v. Vimeo LLC, No. C 15-00592 JSW et al., 2015 WL 4089911 (N.D. Cal. July 6,
`
`2015). However, even if the Court were not required it to consider the four statutory factors
`
`before the CBM review has been formally instituted, the Court may nevertheless consider them
`
`in exercising its inherent discretion to stay the case. See, e.g., Knauf Insulation, LLC v. Johns
`
`Manville Corp., No. 1:15-CV-00111-WTL-MJD, 2015 WL 7084079, at *1 (S.D. Ind. Nov. 13,
`
`2015) (considering four statutory factors in exercising court’s inherent power to stay a case); see
`
`also Software Rights Archive, LLC v. Facebook, Inc., No. C-12-3970 RMW et al., 2013 WL
`
`5225522, at *2, 6 (N.D. Cal. Sept. 17, 2013) (ordering discretionary stay based on IPR that was
`
`6
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`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 12 of 21
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`not yet instituted); Tel. Sci. Corp. v. Asset Recovery Sols., LLC, No. 15 C 5182, 2016 WL 47916,
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`at *2 (N.D. Ill. Jan. 5, 2016) (considering “whether a stay will reduce the burden of litigation on
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`the parties and the court” in exercising inherent power to stay).
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`District courts have granted stays even when only some patents or some claims of patents
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`in suit have been brought to the PTAB because there are many benefits to streamlining litigation
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`and achieving economy beyond the final judgment on the specific patents challenged. See, e.g.,
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`ACQIS, LLC v. EMC Corp., 109 F. Supp. 3d 352, 354 (D. Mass. 2015) (case stayed based on
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`IPRs for two of eleven asserted patents); Unisone Strategic IP, Inc. v. Life Techs. Corp., No.
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`3:13-cv-1278-GPC-JMA, 2015 WL 1606341, at *1 (S.D. Cal. Apr. 8, 2015) (case stayed based
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`on petitions filed against 18% of claims raised by Plaintiff). Moreover, in these circumstances,
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`where CBM review has already been instituted on so many closely-related TT patents, a stay is
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`even more called for.
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`B.
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`Factor 1: A Stay Will Greatly Simplify the Issues
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`The first statutory factor instructs courts to consider “whether a stay, or the denial
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`thereof, will simplify the issues in question and streamline the trial.” AIA § 18(b)(1)(A). As
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`numerous courts have recognized, “staying an infringement case pending administrative review
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`of the patent-in-suit’s 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 the 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.
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`Mkt.-Alerts Pty. Ltd. v. Bloomberg Fin. L.P., 922 F. Supp. 2d 486, 490-91 (D. Del. 2013)
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`(citation omitted); Landmark Tech., LLC v. iRobot Corp., No. 6:13CV411 JDL, 2014 WL
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`486836, at *2 (E.D. Tex. Jan. 24, 2014) (quoting Mkt.-Alerts, 922 F. Supp. 2d at 491). See also
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`Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 548 (Fed. Cir. 2011) (“PTO has
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`acknowledged expertise in evaluating prior art and assessing patent validity.”).
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`The PTAB will likely invalidate the ’247 and ’416 Patents, simplifying all associated
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`issues with regard to those patents and allowing them to be removed from this case. See
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`7
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`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 13 of 21
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`CBM2016-00086 (’247 Patent), Ex. D; CBM2016-00087 (’416 Patent), Ex. E. The ’247 and
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`’416 Patents’ claims are directed to trading GUIs similar to those that the PTAB has already
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`found to be more likely than not ineligible under § 101 and Alice. See institution decisions
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`attached as Exhibits C, F-H. And in the very unlikely event that these patents survive, the issues
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`would still be simplified in various ways, not the least of which being that upon a final PTAB
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`decision TradeStation would be stopped from asserting “any ground that [TradeStation] raised”
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`during the administrative trial. AIA § 18(a)(1)(D) (alteration added); see, e.g., Benefit Funding
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`Sys. LLC v. Advance Am. Cash Advance Centers Inc., 767 F.3d 1383, 1387 (Fed. Cir. 2014) (“If,
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`on the other hand, the claims are determined to be directed to patentable subject matter,
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`Appellees will be estopped from challenging that determination in district court.”). Moreover,
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`the PTAB is tethered to many of the same considerations as the district courts in claim
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`construction. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
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`The efficiencies from the CBM reviews on the ’247 and ’416 Patents alone cause the first
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`factor to weigh in favor of a stay, regardless of whether the other Counterclaim Patents are ever
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`subject to CBM reviews. Indeed, “[t]he benefits of a stay certainly exist where all of the claims
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`are under review, and would even exist if only some of the litigated claims were undergoing
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`review.” Trading Techs., 2016 WL 2622301, at *3 (emphasis in original). See also, e.g.,
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`Versata Software, Inc. v. Dorado Software, Inc., No. 2:13-cv-00920-MCE-DAD, 2014 WL
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`1330652, at *3 n.2 (E.D. Cal. Mar. 27, 2014) (staying case where CBM review granted for only
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`one of two asserted patents and for less than all claims); Destination Maternity Corp. v. Target
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`Corp., 12 F. Supp. 3d 762, 769 (E.D. Pa. 2014) (“courts have found significant potential for issue
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`simplification even in cases where some but not all of the asserted claims are subject to PTO
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`review.”).
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`In addition, a stay would also simplify the issues for the other Counterclaim Patents that
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`are not currently subject to CBMs. By staying this case now, the Court allows not just the CBMs
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`on the patents in this case, but also the other CBMs on eleven related or similar patents from the
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`Chicago case to be used to streamline this case. The PTAB has already instituted six
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`administrative trials and will likely institute the other seven in the coming months. Once these
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`proceedings conclude, this Court can evaluate the validity of the remaining Counterclaim Patents
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`in light of the PTAB’s final written decisions. Notably, positions TT takes in litigating all of
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`these patents before the PTAB will be admissible in this case. See Mkt.-Alerts, 922 F. Supp. 2d at
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`8
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`Case 0:16-cv-60296-WJZ Document 39 Entered on FLSD Docket 06/10/2016 Page 14 of 21
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`491 (“the record of the [administrative review] would probably be entered at trial, reducing the
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`complexity and the length of the litigation.”). These final decisions are to begin issuing no later
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`than January 2017. See Section II(B), supra. Holdings by the PTAB on whether the types of
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`graphical user interfaces here running on standard computer systems are patentable will assist the
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`Court in analyzing this same issue as to TT’s patents in this suit. (TradeStation has also filed a
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`Motion to Dismiss TT’s patents contemporaneously with this Motion to Stay. That Motion to
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`Dismiss could be taken up after the stay if the Court wants the benefit of the PTAB’s analysis of
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`issues on related patents).
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`Finally, in the spirit of judicial economy and to be consistent with the efficiency goals of
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`CBM reviews, TradeStation is willing to stay its own case for the same amount of time as the
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`case is stayed for the CBMs. (An “anonymous” ex parte re-examination was filed against
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`TradeStation’s ‘909 patent, so issues regarding TradeStation’s patent might also be vetted during
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`the period of stay).
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`C.
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`Factor 2: The Relatively Early Stage of the Substance of the Litigation
`Favors a Stay
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`“Staying a case at an early juncture can be said to advance judici