Judge Forrest Grants Stay Following Filing of CBM Petition


Capital Dynamics AG et al. v. Cambridge Associates, LLC

Case Number: 1:13-cv-07766-KBF (Dkt. 42) Judge Forrest granted defendant Cambridge Associate’s motion to stay the case pending the outcome of a Covered Business Method review at the USPTO. (The patent in suit is U.S. Patent No. 7,698,196, entitled “Method and system for modeling and benchmarking private equity and applications of same”.) Although the petition for CBM had not yet been granted, and, according to the court, “statistics concerning CBM reviews specifically are not yet available,” the PTO has granted more than 83% of the CBM petitions it has decided upon, and has either cancelled or amended at least one claim 92% of the time in IPR proceedings. The court looked at the 4 factors for a stay identified in section 18 of the America Invents Act:

(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.

In light of the high kill USTPO’s rate and the early stage of the instant action, the court concluded these factors weigh in favor of a stay.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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