Is the USPTO Obligated to Follow a District Court Order?
Last Friday, the patent infringement action MONKEYMedia Inc. v. Apple Computer, et al (WDTX) was stayed pending the outcome of several patent reexaminations (U.S. Patents 6,393,158; 7,467,218; and 7,890,648). Interestingly, the stay is of a limited duration, 3 months, to allow time for the reexaminations to progress. In order to ensure that the reexaminations advance, the Court ordered the parties to expedite their submissions to the USPTO. What sets this decision apart from other is that the Court also ordered the USPTO to “expedite” the reexamination proceedings. (Order here)
Aside from the legal debate about whether or not the Judge has jurisdiction over the PTO, and whether or not the USPTO will follow the Order….lost on many is the fact that the USPTO would already do what the judge is asking, Order or not.
As noted in MPEP 2286:
Where a< request for ex parte reexamination * indicates (A) that it is filed as a result of >an order by a court or< an agreement by parties to litigation which agreement is sanctioned by a court, or (B) that litigation is stayed for the filing of a reexamination request >, the request< will be taken up by the examiner for decision 6 weeks after the request was filed >, and all aspects of the proceeding will be expedited to the extent possible<. See MPEP § 2241. If reexamination is ordered, the examination following the statement by the patent owner under 37 CFR 1.530 and the reply by the requester under 37 CFR 1.535 will be expedited to the extent possible. Office actions in these reexamination proceedings will normally set a 1-month shortened statutory period for response rather than the 2 months usually set in reexamination proceedings. See MPEP § 2263. **>Response periods< may be extended only upon a >strong< showing of sufficient cause. See MPEP § 2265. >Action on such a proceeding will generally take precedence to any other action taken by the examiner.< See generally In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981).
While many would bemoan this provision as “…well that is what the PTO says, but that is not what happens,” the section also qualifies the commitment with the proviso that the proceeding “will be expedited to the extent possible.” Currently, the agency is under severe budget restraints and patent reexamination proceedings are being initiated in record numbers.
So, now we are back to the original question, is the USPTO bound by the October 24, 2011 deadline of the Order?
There would seem to be enough case law to protect the agency from District Court interference. Emerson Elec. Co.v. Davoil, Inc., 88 F.3d 1051 (Fed. Cir. 1996) (discussing conditions fo stay being predicated on reexamination action of parties) See also Patently-O discussion of Singer Co. v. P.R. Mallory & Co., 671 F.2d 232 (7th Cir. 1982) (Court may not order disruption of USPTO proceedings). An Order essentially asking the USPTO to drop everything else in favor of a particular reexamination would appear to cause a disruption of all other reexamination proceedings being handled by the CRU examiners responsible for these reexaminations.
Moreover, from a policy standpoint, compliance with the Order would very likely encourage every defendant to seek the same relief from their court when arguing in favor of staying their case. As the USPTO already does everything possible to expedite such cases, by their own rules, it would not appear to be in the USPTO’s best interest to cater to the wishes of individual judges in this regard.