Judge Sparks Orders PTO “to Expedite Reexamination”

Scott Daniels | July 26, 2011

Yesterday’s two-page stay order by Judge Sam Sparks in the MONKEYmedia cases is noteworthy in two respects.  First, he takes an interesting “compromise” approach to the issue of whether to stay a patent infringement action pending completion of reexamination proceedings at the PTO. 

MONKEYmedia sued Apple, Walt Disney and a series of other entertainment companies last year for infringement of three data storage patents, U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648. Apple replied to the suit by requesting reexamination of MONKEYmedia’s patents.   The PTO granted reexamination for each patent, and as of July 8th, has issued non-final rejections against all the MONKEYmedia claims.  On the basis of those rejections, Apple and the other defendants filed motions to stay the infringement actions. 

This issue of whether to stay pending completion of reexamination has come to have an enormous impact on the outcome of infringement litigation.  The issue has also sharply divided the nation’s trial judges, many tending to deny stays because of the significant delays inherent in reexamination, with others leaning toward granting stays because of the potential for simplification of issues at trial. 

In his order yesterday, Judge Sparks was clearly sensitive to the conflicting interests: “The Court has no intention to stay these cases indefinitely,” but “a modest stay may serve to resolve or clarify the issues in the cases to a significant extent….”  The Judge therefore stayed the cases for three months to October 24, 2011.  The Judge’s stay order balances the conflicting interests, since it comes only after the reexaminations have been demonstrated to be serious challenges to the patents, and since it is for a limited period.

In the second interesting aspect of his order, Judge Sparks “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 to the Court before” October 24, 2011” (emphasis added).  The Judge also ordered that “the parties in these causes shall likewise expedite their submissions, if any, to the PTO to facilitate timely reexamination…” 

Whether Judge Sparks has the power to order the PTO to expedite its schedule might be open to question.  It will be interesting to see whether the PTO challenges that aspect of the order, attempts to comply with it, or simply ignores it.  Certainly, though, the Judge has contributed to the case law on stays.

 

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