41 F. Supp. 3d 414
D. Del.2014Background
- Versata sued Callidus in July 2012 for infringement of the patents-in-sdt, all of which are CBM patents.
- Callidus filed CBM petitions in August 2013 under AIA § 18(a); PTAB granted review on March 4, 2014.
- PTAB scheduled a hearing for October 22, 2014 and must issue a final decision by March 4, 2015, with possible six-month extension.
- Estoppel applies to issues raised by the petitioner in later litigation under AIA § 18(a)(1)(D).
- Discovery through August 22, 2014; trial date set for October 19, 2015; Callidus sought review on a subset of claims.
- PTAB will not address all asserted claims in the ’024 and ’304 patents; Callidus proceeded with CBM on selected claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Should the court grant a complete stay pending CBM review? | CBM review will simplify issues and reduce litigation burdens. | CBM review will streamline proceedings and reduce burdens. | No complete stay; partial stay denied as to the ’024/’304 patents pending CBM review. |
| Will PTAB review of a subset of claims meaningfully simplify the case? | Subset review will eliminate contested claims and streamline trial. | Subset review does not meaningfully simplify the litigation. | Insufficient simplification; court denied full stay; limited impact in timeline. |
| Would a stay cause undue prejudice or provide a tactical advantage to Callidus? | No undue prejudice; stay would level the playing field. | Stay would give Callidus a tactical advantage while delaying Versata's actions. | Clear tactical advantage to moving party; weighed against a full stay; no stay for the contested patents. |
| Does the timing of PTAB review near trial support staying proceedings for the contested patents? | Near-term PTAB decision will reduce post-trial complexity. | Timing does not justify a broad stay and may not alter trial parameters. | PTAB timing unlikely to significantly limit trial scope; court granted a stay only for the ’326 patent. |
| Should the court remand or adjust trial scope given CBM review on subset of claims? | Amendments might be accommodated within the schedule. | Amendments must comply with statutory limits and do not warrant a full stay. | Court will determine whether and how to accommodate amendments within the schedule; limited to two patents before trial. |
Key Cases Cited
- Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013) ( CBM-like considerations and transitional program analysis cited)