IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

FIFTH MARKET, INC.,

Plaintiff,
v.
CME GROUP, INC., et al.,
Defendants.

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Civil Action No. 08-520-GMS

ORDER
WHEREAS, the plaintiff filed this action against the defendants on October 15, 2008,
alleging patent infringement of U.S. Patent Nos. 7,024,387 and 6,418,419 (collectively, "patentsin-suit");
WHEREAS, on May 20, 2011, the court granted the plaintiff's motion to stay litigation,
pending reexamination proceedings of the patents-in-suit before the U.S. Patent & Trademark
Office ("USPTO") (D.I. 182);
WHEREAS, on June 19, 2013, the court granted the plaintiff's motion to lift stay (D.I.
197);
WHEREAS, although this action is not currently stayed, there has been no activity since
October 2013, while the parties continue with inter partes review and covered-business-method
review proceedings before the USPTO;
WHEREAS, on March 25, 2015, the plaintiff filed a motion to reopen discovery to gather
information concerning the prior art status of a particular reference-the "NYMEX Document"
(D.I. 205);

WHEREAS, the court having considered the parties' written submissions and the
applicable law:
IT IS HEREBY ORDERED THAT the plaintiffs Motion to Reopen Discovery is
DENIED. 1

Dated: July __2[_, 2015

Discovery in this case closed on April 14, 2011. (D.I. 120.) "A schedule may be modified only for good
cause and with the judge's consent." Fed. R. Civ. P. 16(4)(4); see also Fed. R. Civ. P. 6(b)(l)(B) ("When an act
may or must be done within a specified time, the court may, for good cause, extend the time on motion made after
the time has expired ifthe party failed to act because of excusable neglect.").
Understandably, the parties have been postponing the litigation of this case while the USPTO reviews the
patents-in-suit and after appeals are exhausted. Thus, in the court's view, this case is effectively, if not formally,
stayed. And despite showing no interest in reviving its case in district court, the plaintiff now requests that the court
order discovery to aid its efforts before the USPTO. The court declines to do so.
The plaintiff weakly asserts that "[t]he discovery requested in this Motion is intended to be used to validate
or discredit the NYMEX Document as a prior art reference at the USPTO and in this suit." (D.I. 206 at 6.) But the
plaintiff has made no challenge to the NYMEX Document in this matter, to this court. Of course the USPTO's
treatment of the NYMEX Document as prior art will ultimately affect the resolution of this action, but only
indirectly. The plaintiff's suggestion that it seeks discovery for use "in this suit" is specious. And the defendants
are correct to note that the Protective Order between the parties forecloses the use of discovery materials "for any
purpose other than prosecuting or defending claims in this action." (D.I. 47, if 1 (emphasis added).)
Moreover, the plaintiff does not dispute that the USPTO has discovery procedures in place; indeed, it cites
and discusses the rules. (D.I. 205, Ex. A, ifir 35-37.) The court takes this opportunity to focus on one particular
provision: "The parties may agree to additional discovery between themselves. Where the parties fail to agree, a
party may move for additional discovery. The moving party must show that such additional discovery is in the
interests of justice .... " 37 C.F.R. 42.51(b)(2)(i). Counsel for the plaintiff explained: "[M]y reading of the
Board's rulings on discovery requests where the parties fail to agree, the requests are generally only granted for
limited document production of specific documents in very narrow discovery requests." (D.I. 205, Ex. A, if 37.)
The USPTO must regularly confront challenges to prior art references. Assuming counsel's reading is correct, the
court will not undermine the procedures in place by offering an avenue to circumvent the rules. Moreover, from
counsel's statement, the court cannot tell ifthe plaintiff has made such a motion to the USPTO. Thus, the court does
not credit the plaintiff's statement that "there has been no effective mechanism at the USPTO to conduct discovery
as to the whether the NYMEX Document qualifies as a proper prior art reference." (D.I. 205 at 6.)
The court agrees with the defendants' characterization of the plaintiff's motion. In short, it is improper for
a number of reasons, already identified. The court will not reopen discovery in this matter unless agreed upon by
both parties or better justification is provided.