Scott Daniels | July 29, 2011
Tuesday we reported that Judge Sam Sparks had granted a limited, three-month stay of the infringement action, MONKEYmedia v. Apple et al., A-10-CA-319 (W.D. Tex.), pending completion of reexaminations of the three patents-in-suit. And he ordered the PTO to expedite the reexaminations.
Now, however, Judge Sparks has had second thoughts. Someone informed him that the patentee MONKEYmedia had filed motions at the PTO for extensions of time to answer pending rejections, and that when the PTO denied the motions, MONKEYmedia had asked the PTO for reconsideration. (In fact, MONKEYmedia requested two-month extensions in two of the reexaminations and a one-month extension in the third).
In a second order dated Wednesday, Judge Sparks stated the obvious: “the PTO cannot expedite its reexamination if the parties drag their feet.” The Judge indicated that he had limited the stay in his first order to three months because “MONKEYmedia in particular was adamant [that] any delay would be both wasteful and inequitable.” The patentee’s requests for extensions of time in the reexaminations, however, have changed his sympathies on the matter. “[B]ecause MONKEYmedia is apparently no longer in a hurry, neither is the Court.” Accordingly, the Judge has extended the stay until the reexaminations “come to a final conclusion, a process whose length will be dictated primarily by the actions of the parties before the PTO.”
Clearly, Judge Sparks was irritated with what he perceived to be contradictory positions taken by MONKEYmedia in his court and at the PTO on the effect of reexamination delay. Still, the deadlines faced by a patentee in reexamination are often severe. And it is not necessarily inconsistent for a patentee to want extensions at the PTO and to resist a stay of its infringement litigation. In any event, all parties must consider the effect that their arguments in one forum would have in other forums.