Trading Techs. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 716, 718, 720, 721, 726, 882-85, 929 & 931, Slip Op. (N.D. Ill. May 9, 2016) (Kendall, J.).

Judge Kendall granted defendants’ motion to stay plaintiff Trading Technologies’ (“TT”) patent case after institution of covered business method review (“CBM”) of claims from each asserted patent family in this case involving trading software.

The Court considered each of the four statutory factors, as follows:

  1. Simplification of the Issues: The Patent Office instituted CBMs involving six of the patents-in-suit which requires a determination that the instituted claims are more likely than not unpatentable. While the Patent Office had not yet ruled on CBM petitions for the remaining patents-in-suit, the potential that all of the asserted claims in six patents-in-suit could be terminated would simplify the issues in the case.
  2. Stage of the Litigation: While the case had been pending for six years and had undergone early summary judgment and a Federal Circuit appeal, the case was still in its early stages because of, among other things, the parties’ “numerous discovery conflicts.” While written discovery was underway, no depositions had been taken. Also, TT had sought to add additional patents and claims to the cases.
  3. Undue Prejudice/Tactical Advantage: The fact that TT and the defendants were competitors weighed against a stay, as did defendants several year delay in filing the CBM petitions. But TT’s decision not to seek a preliminary injunction weighed against a finding that it was prejudiced by a stay. And while a stay could result in some memory loss for individual witnesses, there was no reason to believe that any document discovery would be lost.
  4. Burden of Litigation: The Court held that the burden of litigation warranted a stay. Six of the twelve patents had CBMs instituted. Four more had CBM petitions pending and defendants stated that they intended to file CBM petitions regarding the remaining two patents. So, the litigation could at least be significantly reduced by the instituted CBMs and possibly entirely negated.