Judge Sam Sparks of the U.S. District Court for the Western District of Texas recently raised eyebrows and questions by ordering the United States Patent and Trademark Office (PTO) to expedite a reexamination of three patents. In MONKEYmedia, Inc. v. Apple, Inc., 1-10-cv-00319 (W.D. Tex. July 25, 2011), after defendants moved for a stay as to three patents in reexamination proceedings, Judge Sparks responded to plaintiff’s arguments that the PTO was “notoriously slow” in reaching decisions in reexamination proceedings by ordering the PTO to expedite the reexamination and to “provide the results of its reexaminations to the parties and the Court” three months after the date of the order. Judge Sparks also ordered the parties to expedite their submissions to the PTO “to facilitate timely reexamination.”

Neither party had requested an expedited reexamination. On the contrary, after Judge Sparks’ order was issued, plaintiff’s counsel advised the court that plaintiff MONKEYmedia, Inc. intended to further slow the pace of the reexamination by filing a request for reconsideration of the PTO’s denial of MONKEYmedia’s request for an extension of time. Upon learning this news, Judge Sparks stayed the entire matter. The subsequent order quieted the legal blogosphere, but left unanswered the question of whether a federal district court judge has the authority to order the PTO to do anything in a case where the government is not a party.  

The issue arose when MONKEYmedia, Inc. filed a complaint asserting three patents against Apple Inc. in May 2010 (later amended to include three additional related patents). Several days before the hearing, defendants informed the court that two of the three related patents were under reexamination, and notified the court that defendants intended to file for a stay if the PTO granted a reexam request for the third patent. The PTO did order reexamination, and the defendants filed a motion to stay only as to the three related patents.  

Defendants argued that litigating the three patents under reexamination would be a waste of judicial resources, and that MONKEYmedia would not be unduly prejudiced as it was not in the business of making or selling any products covered by the patents. In its opposition, plaintiff made much of the slow pace of reexaminations, arguing that the reexamination would delay half of the case for approximately 6 ½ - 8 years. Plaintiff argued that the stay would endanger the very viability of the small company by forcing it to litigate two separate trials back to back.  

In a July 25, 2011 Order, Judge Sparks stated he did not wish to stay the trial indefinitely, but noted that a short stay may serve to clarify the issues, “particularly if the parties are as interested in the efficient resolution of this dispute as they both purport to be.” By expediting their submissions to the PTO, the parties could facilitate the reexamination and (somehow) shorten a 6 ½ - 8-year delay to a brief three months. Judge Sparks, perhaps acknowledging that his powers were in fact limited to the parties-in-suit, ordered the parties themselves to advise the PTO of the stay and the order for expedited review. It is unknown whether the order was ever conveyed to the PTO because plaintiff’s counsel promptly informed the court of plaintiff’s own efforts now to delay the reexamination proceedings, though plaintiff had argued against delay. In a July 27, 2011 Order, Judge Sparks explained that he had issued the July 25 Order because he “believed all parties would work together to achieve a quick and efficient reexamination of the patents,” but in this Order, Judge Sparks decided to stay the entire matter pending final reexamination (even though defendants had requested a stay as to only three of the patents-in-suit).

While the limits of Judge Sparks’ power over the PTO remain untested, the lesson could not be clearer: when complaining of the “notoriously slow” pace of the PTO to a court, it is best to not simultaneously use every tool at your disposal to further slow the process. Class dismissed.