Statutory Criteria for Deciding Whether or Not to Grant a Stay in Co-Pending CBM Proceedings: Parallels to IPR Considerations

As discussed in a recent entry, courts look at three significant factors in deciding whether or not to grant a stay during co-pending inter partes review (IPR) proceedings:

(A) whether a stay will simplify the issues in question and trial of the case; (B) whether discovery is complete and whether a trial date has been set; and (C) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party.

In addition, at least one court has explicitly considered a fourth factor:

(D) the court’s ability to control its docket.

These factors largely parallel the statutory criteria courts must consider when determining whether or not to enter a stay during post-grant review of covered business methods (CBM). Specifically, Section 18(b) of the America Invents Act states that 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.

In addition to setting forth specific criteria that courts must consider in deciding whether to grant a stay in a CBM case, Section 18(b) also provides an opportunity for earlier resolution of on-going disputes relating to stays. In particular, Section 18(b)(2) provides that “a party may take an immediate interlocutory appeal from a district court’s decision” to grant or deny a stay to the Federal Circuit.