Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P.

922 F. Supp. 2d 486, 2013 WL 443973
CourtDistrict Court, D. Delaware
DecidedFebruary 5, 2013
DocketCivil Action Nos. 12-780-GMS, 12-781-GMS, 12-782-GMS, 12-783-GMS, 12-784-GMS, 12-785-GMS
StatusPublished
Cited by18 cases

This text of 922 F. Supp. 2d 486 (Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Market-Alerts Pty. Ltd. v. Bloomberg Finance L.P., 922 F. Supp. 2d 486, 2013 WL 443973 (D. Del. 2013).

Opinion

OPINION

SLEET, Chief Judge.

I. INTRODUCTION

On June 20, 2012, the plaintiff, Market-Alerts Pry. Ltd. (“Markeb-Alerts”), [488]*488brought the above-captioned six lawsuits against multiple defendants,1 alleging infringement of U.S. Patent No. 7,941,357 (the “'357 Patent”). On October 15, 2012, several of the defendants (the “petitioning defendants”) filed a Petition for PosN Grant Review of the '357 Patent under 35 U.S.C. § 321 and § 18 of the America Invents Act (the “AIA”). (D.I. 16, Ex. B.)2 On November 9, 2012, the Bloomberg defendants, the E*TRADE defendants, the TD Ameritrade defendants, and Thinkorswim Group, Inc.3 moved to stay this litigation pending post-grant review pursuant to § 18(b) of the AIA. (D.I. 14.) The Schwab defendants and optionsXpress defendants then filed a separate motion to stay on December 21, 2012. (No. 12-781, D.I. 38.) On January 4, 2013, they withdrew that request and joined in the pending, November 9, 2012 motion to stay. (No. 12-781, D.I. 42.) That motion is presently before the court, and, for the reasons that follow, the court will order that all six actions be stayed pending post-grant review.

II. BACKGROUND

Market-Alerts claims to be the exclusive owner of all rights to the '357 Patent, which is entitled “Trading System.” (D.I. 1 at ¶ 8.) Claim 1 of the '357 Patent recites:

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 [489]*489the user-specified 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.

{Id., Ex. A at 9.) Market-Alerts alleges that each of the defendants infringes the'357 Patent by “provid[ing] or operat[ing] real-time stock trading products and/or services, which fall within the scope of the '357 Patent claims.” (D.I. 24 at 3.)

III. STANDARD OF REVIEW

Section 18 of the ALA provides for the establishment of transitional post-grant review proceedings to reexamine the validity of covered business method patents (“CBM review”). Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18, 125 Stat. 284, 32931 (2011). The ALA also considers the effect of these proceedings on related patent infringement actions and authorizes the district courts to stay such parallel litigation under certain circumstances. Specifically § 18(b)(1) 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.

Id. § 18(b)(1).

This statutory test closely resembles the stay analysis courts have applied in assessing a motion to stay pending inter partes or ex parte reexamination by the Patent and Trademark Office (the “PTO”). See, e.g., SenoRx, Inc. v. Hologic, Inc., No. 12-173-LPS-CJB, 2013 WL 144255, at *2 (D.Del. Jan. 11, 2013) (applying three-factor stay test that asks “(1) whether granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly whether discovery is complete and a trial date has been set; and (3) whether a stay would cause the non-movant to suffer undue prejudice from any delay, or allow the movant to gain a clear tactical advantage”); Ever Win Int’l Corp. v. Radioshack Corp., 902 F.Supp.2d 503, 505-06, 2012 WL 4801890, at *2 (D.Del.2012) (same). The substantial difference between the test set forth in § 18(b)(1) and that employed by courts in the ordinary patent reexamination context is the inclusion of a fourth factor, which requires the court to consider “whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.” § 18(b)(1)(D). This additional consideration was included, in part, to ease the [490]*490movant’s task of demonstrating the need for .a stay.4

The AIA was signed into law on September 16, 2011, and CBM review came into effect one year later, in September 2012.

IV. DISCUSSION

The petitioning defendants have sought post-grant review of the '357 Patent as a covered business method patent under 35 U.S.C. § 321 and § 18 of the AIA. The moving defendants now request a stay of this litigation pending the resolution of those CBM review proceedings.5 The court will discuss each of the statutory stay factors outlined in § 18(b) below, addressing the parties’ specific arguments where applicable.6

A. Issue Simplification

Section 18(b)(1)(A) instructs the court to consider “whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial.” Id. As the court has previously recognized, staying an infringement case pending administrative review of the patent-in-suit’s validity can simplify litigation in several ways:

[491]

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Bluebook (online)
922 F. Supp. 2d 486, 2013 WL 443973, Counsel Stack Legal Research, https://law.counselstack.com/opinion/market-alerts-pty-ltd-v-bloomberg-finance-lp-ded-2013.