Cases & Deals

SAS Institute wins stay of patent infringement litigation pending inter partes review of asserted patent in U.S. Patent & Trademark Office

Client(s) SAS Institute Inc.

On behalf of SAS Institute Inc. ("SAS"), Jones Day successfully obtained a stay of ongoing patent infringement litigation pending completion of a parallel inter partes review of the asserted patent in the U.S. Patent & Trademark Office ("USPTO"), with Magistrate Judge Jeffrey Gilbert of the U.S. District Court for the Northern District of Illinois issuing a stay order on May 8, 2013.

ComplementSoft, LLC filed suit in Chicago in September 2012 alleging that certain SAS software infringes U.S. Patent No. 7,110,936 ("the '936 patent"). The '936 patent is entitled "System And Method For Generating And Maintaining Software Code," and generally relates to an extensible, language independent software development tool having a graphical user interface.

In March 2013, Jones Day filed a petition for SAS seeking inter partes review ("IPR") of the '936 patent in the USPTO. SAS's IPR petition asks the Patent Trial & Appeal Board to review the validity of each claim of the '936 patent in view of prior art, including several prior art patents and publications not considered by the USPTO during the initial examination of the '936 patent.

Upon submission of the IPR petition to the USPTO, Jones Day filed a motion in the district court seeking a stay of the ongoing infringement litigation against SAS. After briefing and oral argument, Magistrate Judge Gilbert ordered a stay of the litigation--including all discovery--pending the completion of the inter partes review of the '936 patent in the USPTO.

The Jones Day team representing SAS both in the Chicago federal court and in the USPTO is led by John Marlott in the Firm's Chicago Office, and David Cochran and John Biernacki in the Cleveland Office.

The dispute illustrates how Jones Day, with one of the world's largest full-service IP practices, is uniquely suited to handle U.S. district court litigation as well as the new litigation-style Post Grant Review proceedings at the USPTO. Our combination of deep patent litigation experience and our thorough knowledge of the USPTO and its procedures makes Jones Day an ideal choice for patent disputes that potentially involve parallel proceedings in the U.S. district court and in the USPTO.

ComplementSoft, LLC v. SAS Institute Inc., Civil Action No. 1-12-cv-07372 (N.D. Ill.) (Magistrate Judge Gilbert)