The stay provisions of America Invents Act § 18(b) related to covered business method patent review1 (“CBM review”) were recently applied in Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P. et al., C.A. No. 12-780-GMS (D. Del.). On February 5, Judge Sleet granted defendants’ motion to stay litigation in light of a pending petition for CBM review. This advisory addresses the key takeaways from the Court’s opinion—one of the first to grant a stay under AIA § 18—of which litigants and potential litigants should be mindful.

On June 20, 2012, Market-Alerts filed six patent-infringement lawsuits against multiple defendants. On October 15, several defendants filed a petition for CBM review of the asserted patent. Shortly thereafter, a subset of defendants filed a motion to stay litigation under AIA § 18(b)(1), which states:

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.