SAP’s fight to dismiss Versata’s U.S. 6,553,350 patent assertion continues.  After SAP’s win in the PTAB on June 11, 2013, SAP filed a motion to stay the parallel Federal Circuit appeal on June 17th.  Now the Federal Circuit must decide whether to stay the ongoing appeal after upholding the district court judgment on damages and having remanding to that court on injunctive relief.  At stake is a nearly $400M judgment that SAP argues is based on invalid claims.

No one can accuse SAP of having delayed its efforts to challenge the patent under the provisions of the America Invents Act.  SAP’s counsel was the first petitioner to file a covered business method (CBM) patent review within minutes of the date it first became available on September 16, 2012.

SAP’s brief repeated the factors set forth by the AIA that are specific to CBM reviews.  SAP acknowledged that these factors were intended for use by a district court, but applied them by analogy to the Federal Circuit stay request:

Specific to CBM reviews, the AIA enumerates similar factors for determining whether to stay a case pending post-grant review. AIA § 18(b)(1), P.L. 112-29, 125 Stat. 284, 331 (2011) (factors include “(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.”).

SAP’s Motion to Stay at p. 5.

The motion goes on to repeat the often-quoted remarks by Senator Schumer that the AIA “places a very heavy thumb on the scale in favor of a stay being granted.”  157 Cong. Rec. S1363 (Mar. 8, 2011).

It will be interesting to see Versata’s reaction to SAP’s arguments and even more interesting to see what the Federal Circuit will decide.