Judge to PTO: Faster! Faster! Faster

MONKEYmedia v. Apple (W.D. Tex. 2011)

In an interesting decision, W.D. Texas Judge Sam Sparks has ordered the USPTO to expedite the reexamination of the patents being asserted in litigation.

The case involves MONKEYmedia's U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648 that all relate to seamless expansion and contraction of a multimedia experience. In July 2010, Monkeymedia sued a host of defendants for infringement. The defendants include Apple, Sony, Paramount, Walt Disney, Universal, etc. In December 2010, the defendants of the lawsuit jointly filed ex parte requests for reexamination for two of the patents and then in May, 2011 filed an additional request for the '648 patent that had newly issued.

In the first two cases, the USPTO has issued an initial rejection of the patent claims under reexamination – prompting the defendants to request a stay in the litigation. In a two-page order, Judge Sparks granted a temporary stay of the litigation (Until October 24, 2011).

The surprising ruling from Judge Sparks was an order directed toward the non-party USPTO directing the federal agency to expedite the reexamination of those patents. He writes:

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 USPTO] shall provide the results of its reexamination to the parties and the Court before the above date.

In an e-mail, New Hampshire University Law School professor Tom Field suggested that the court read the case of Singer Co. v. P.R. Mallory & Co., 671 F.2d 232 (7th Cir. 1982). In that case, the lower court had ordered the Patent Office to stay its proceedings regarding a particular reissue application. On appeal, the Seventh Circuit held that "enjoining the Patent Office was particularly inappropriate." Judge Sparks' ruling is potentially distinguishable from Singer. Here, Judge Sparks is not attempting to interrupt Patent Office procedure with an injunction, but only to speed-it-up.

Professor Field also points out that the Court should first establish jurisdiction over the PTO before ordering the agency to act.

Via: WHDA blog; Jason Schultz; and Tom Field.

Posted on Jul 26, 2011 at 05:07 PM

http://www.patentlyo.com/patent/