United States District Court, D. Massachusetts
MEMORANDUM & ORDER
INDIRA TALWANI, District Judge.
The plaintiff, athenahealth Inc. ("Athena"), brings this suit against the defendant, Carecloud Corporation ("Carecloud"), for patent infringement. Presently at issue is Carecloud's Motion to Stay Litigation Pending Covered Business Method Review of U.S. Patent No. 7, 617, 116 [#43]. For the following reasons, the Motion is ALLOWED IN PART and DENIED IN PART. The Motion is ALLOWED insofar as this court stays this case, except as to claim construction briefing, until the date of the Patent Trial and Appeal Board's determination regarding whether to grant Covered Business Method review of the patent at issue. The Motion is DENIED with regard to claim construction briefing.
The Parties are providers of web-based services and software for optimizing medical practice management, including, among other things, medical practice billing and revenue cycle management. Athena owns U.S. Patent Number 7, 617, 116 ("the 116 patent") for Practice Management and Billing Automation System. Athena claims that Carecloud has infringed the 116 patent, and Carecloud refutes that claim.
On June 5, 2014, Carecloud filed the motion to stay, seeking to stay this action pending the Patent Trial and Appeal Board's (the "Patent Board's") final decision on the Covered Business Method review of the 116 patent. On July 3, 2014, this court held a hearing on the motion and took the matter under advisement.
The Leahy-Smith America Invents Act ("AIA" or the "Act") sets forth the procedure for Covered Business Method review. Covered Business Method review is available to parties being sued or charged with infringement on a patent that involves a financial product or service. After a petitioner files for Covered Business Method review, the respondent has up to three months from the notice of the filing of the petition to file a preliminary response. Then, the Patent Board must decide whether to review the claim within three months after receiving the respondent's response to the claim. If the Patent Board agrees to undertake Covered Business Method review, both parties to a patent dispute are involved in Covered Business Method review, which takes place before a panel of three administrative patent judges. At the conclusion of the review, the Patent Board issues a final written decision regarding the patentability of the patent claims under review. Either party may appeal the Patent Board's decision,  but the petitioner may not, in a separate civil action, assert any claim that the Patent Board ruled was invalid, as long as the petitioner raised or reasonably could have raised the ground for that claim during the Covered Business Method review.
The Act provides a four-factor test that a court must consider in determining whether to enter a stay during Covered Business Method review:
(A) whether a stay, or the denial thereof, will simply 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.
The Act does not explicitly address application of this test where the Patent Board has not yet granted Covered Business Method review. Some courts have found the inquiry premature,  and the Federal Circuit has ruled that this latter approach is not in error. Other courts have ...