United States District Court, D. Delaware
R. Fallon United States Magistrate Judge.
before the court in this patent infringement action is
Defendant Apple Inc.'s ("Apple") motion to stay
this litigation pending the resolution of its petitions for
inter partes review ("IPR") and covered
business method review ("CBM"). (D.I. 90) For the
following reasons, Apple's motion to stay is denied
21, 2017, Plaintiff Universal Secure Registry, LLC
("USR") filed a complaint against Visa Inc., Visa
U.S.A., Inc. (together, "Visa"), and Apple
(together with Visa, "Defendants") asserting
infringement of United States Patent Nos. 8, 577, 813
("the '813 patent"), 8, 856, 539 ("the
'539 patent"), 9, 100, 826 ("the '826
patent"), and 9, 530, 137 ("the '137
patent") (collectively, the
"patents-in-suit"). (D.I. 1) USR is the owner by
assignment of the patents-in-suit. The patents-in-suit relate
to systems, methods, and apparatus "for authenticating
... the identity of individuals . . . seeking access to
certain privileges ... and for selectively granting
privileges ... in response to such identifications."
('813 patent, col. 1:37-42; '539 patent, col.
1:16-19; '826 patent, col. 1:36-42; '137 patent, col.
August 25, 2017, Defendants filed a motion to dismiss
USR's complaint asserting that USR failed to state a
claim upon which relief could be granted under Fed.R.Civ.P.
12(b)(6). (D.I. 16) On September 19, 2017, Defendants filed a
motion to transfer the case arguing that USR's
allegations do not have a "material connection to the
District of Delaware." (D.I. 21; D.I. 22) The court
denied both motions on September 19, 2018.
April 10, 2018, the court issued a scheduling order requiring
that all discovery be completed on or before July 2, 2019.
(D.I. 57 at 1) The Joint Claim Construction Chart is due on
December 14, 2018, and the claim construction hearing is set
for March 6, 2019. (Id. at 9) A jury trial is
scheduled to begin on July 20, 2020. (Id. at 12)
filed eleven IPR and CBM petitions with the Patent Trial and
Appeal Board ("PTAB") regarding the patents-in-suit
in April and May of 2018. (D.I. 92, Exs. B-K; D.I. 93, Ex. L)
Apple's IPR and CBM petitions challenge all of the
independent claims of the patents-in-suit, every claim of the
'137, '539, and '813 patents, and all of the
pertinent claims of the '826 patent. (D.I. 92, Ex. A) The
PTAB will determine whether to institute proceedings
regarding Apple's IPR and CBM petitions in October and
November of 2018. 77 Fed. Reg. 48, 756, 48, 757 (Aug. 14,
2012). If the PTAB institutes proceedings on Apple's
petitions, final decisions on the merits of the petitions
would issue by November of 2019. 35 U.S.C. §§
316(a)(l 1), 326(a)(l 1). Visa filed its own IPR petitions
against the '539 patent on July 3, 2018. (D.I. 106 at
2, 2018, the PTAB instituted an IPR proceeding on claim 1 of
the '813 patent based on a petition filed on October 16,
2017 by Unified Patents, Inc., a nonparty to this suit. (D.I.
77, Ex. A) On August 24, 2018, USR filed a contingent motion
to amend all challenged claims of the '813 patent
pursuant to 37 C.F.R. § 41.121 in the IPR proceeding
instituted on May 2, 2018. (9/17/18 Apple Presentation,
Slides 3, 12-13) The PTAB is expected to deliver a decision
on the merits of the IPR proceeding regarding the '813
patent in May of 2019.
August 10, 2018, USR served its initial infringement
contentions against Defendants, asserting infringement of
sixty-two claims across the four patents-in-suit. (D.I. 122)
In USR's preliminary response to Apple's CBM petition
regarding the '539 patent, USR indicated that it had
filed statutory disclaimers with respect to sixteen claims,
thirteen of which were asserted in the present litigation.
(D.I. 129, Ex. B at 18) Of the forty-nine asserted claims
remaining, the PTAB has instituted IPR proceedings on 19
claims of the '813 patent based on Unified Patents'
petition. Apple's nine pending petitions cover
forty-three asserted claims, and Visa's pending petitions
cover an additional three asserted claims. Consequently,
forty-six of the forty-nine remaining asserted claims are
covered by pending IPR and CBM petitions.
2018, USR indicated its intention to amend the complaint to
add two new patents and one pending patent application from
the same patent family to the instant litigation. (D.I. 119,
Ex. G) United States Patent Application No. 14/814, 740 is
not expected to issue until mid-November 2018. The operative
scheduling order in the present case sets a deadline of
November 30, 2018 for amendment of pleadings. (D.I. 57 at
¶ 1) The parties are to exchange a list of disputed
claim terms on November 9, 2018, and a Markman
hearing is scheduled for March 6, 2019. (Id. at
has discretionary authority to grant a motion to stay.
454 Life Scis. Corp. v. Ion Torrent Sys., Inc., C.A.
No. 15-595-LPS, 2016 WL 6594083, at *2 (D. Del. Nov. 7, 2016)
(citing Cost Bros., Inc. v. Travelers Indem. Co.,
760 F.2d 58, 60 (3d Cir. 1985)). Courts consider three
factors in deciding how to exercise this discretion: (1)
whether a stay will simplify the issues for trial; (2) the
status of the litigation, particularly whether discovery is
complete and a trial date has been set; and (3) whether a
stay would cause the non-movant to suffer undue prejudice
from any delay or allow the movant to gain a clear tactical
advantage. Id. (citing Advanced Microscopy Inc.
v. Carl Zeiss Microscopy, LLC, C.A. No. 15-516-LPS-CJB,
2016 WL 558615, at *1 (D. Del. Feb. 11, 2016)). The court
considers an additional factor, "whether a stay ... will
reduce the burden of litigation on the parties and on the
court," when considering a motion to stay pending a CBM
review. Benefit Funding Sys. LLC v. Advance Am. Cash
Advance Ctrs., Inc., 767 F.3d 1383, 1384 (Fed. Cir.
2014) (quoting America Invents Act, Pub. L. No. 112-29,
§ 18(b)(1)(D), 125 Stat. 284, 32-31 (2011)