In a very unusual order (and query whether enforceable), Judge Sparks of the Western District of Texas, ordered the PTO to expedite its reexamination of three patents asserted in MONKEYmedia, Inc. v. Apple Inc., et al., Case N. A-10-CA-319-SS (July 25, 2011 Order).
MONKEYmedia asserted that three "seamless expansion" patents were infringed. Because the patents were put into reexamination with all claims initially rejected, the defendants moved for a stay of the district court proceedings. MONKEYmedia opposed the stay arguing that "the PTO process is notoriously slow, and a potentially multi-year stay would significantly prejudice MONKEYmedia while serving no legitimate purpose."
In response, Judge Sparks stated that:
The Court has no intention to stay these cases indefinitely. However, a modest stay may serve to resolve or clarify the issues in the cases to a significant extent, particularly if the parties are as interested in the efficient resolution of this dispute as they both purport to be. Accordingly, this case shall be STAYED until Monday, October 24, 2011. The United States Patent and Trademark Office is ordered to expedite the reexamination of U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648, and to advise the Court and the parties in these cases of its results prior to October 24, 2011. The relevant parties in these causes shall likewise expedite their submissions, if any, to the PTO to facilitate timely reexamination; shall advise the PTO of this stay and the order for expedited review; and shall provide copies of this order to all appropriate personnel within the PTO.
IT IS ORDERED that Defendants' motions to stay are GRANTED AS MODIFIED;
IT IS FURTHER ORDERED that these cases are STAYED until Monday, October 24, 2011;
IT IS FINALLY ORDERED that the United States Patent and Trademark Office shall expedite reexamination of U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648, and shall provide the results of its reexamination to the parties and the Court before the above date.
It is not clear whether Judge Sparks' Order was binding on the PTO. Furthermore, as a matter of policy, his Order could create a precedent whereby all parties (at least defendants) would want entry of such an order, thus disrupting the PTO's management of its own docket. Interestingly, at least theoretically the PTO is already mandated to conduct reexaminations with "special dispatch." MPEP 2686.04.
But in the end, despite complaining of the "notoriously slow" PTO proceedings, MONKEYmedia indicated that it intended to slow-boat the reexamination to which the court responded:
Obviously, the PTO cannot expedite its reexamination if the parties drag their feet. This Court ordered an abbreviated stay in this case on the assumption all parties were interested in resolving matters quickly, and in the hope the case could retain its place on the Court's busy civil docket. MONKEYMedia in particular was adamant any delay would be both wasteful and inequitable. However, because MONKEYMedia is apparently no longer in any hurry, neither is the Court. This case will proceed when the PTO has fully reexamined the "seamless expansion" patents and come to a final conclusion, a process whose length will be dictated primarily by the actions of the parties before the PTO.
IT IS ORDERED that this case is STAYED pending final reexamination of the "seamless expansion" patents by the United States Patent and Trademark Office;
IT IS FINALLY ORDERED that all settings and deadlines in this case are VACATED until further order of the Court. (July 27, 2011 Order)
Which just goes to show if you want an expedited proceeding you best not monkey around.