Extension of Time Request in Patent Reexamination Angers Court

A few days back, I explained the very unusual, abbreviated stay entered in MONKEYMedia Inc. v. Apple Computer, et al (WDTX). In order to ensure that the parallel reexaminations advanced, the Court ordered the parties to expedite their submissions to the USPTO, in addition, the Court ordered the USPTO to “expedite” the reexamination proceedings.

Only a couple of days after issuing the original Order, the judge had a change of heart. No, not because his Order was stretching the bounds of his jurisdiction relative to the USPTO, but due to the “monkeying around” of MONKEYmedia (couldn’t resist).

It seems Monkey Media, prior to the Order, had requested an extension of time (60 days) to respond to an Office Action in at least one of the reexaminations. Interestingly, this would have reset the due date to October 15…giving the USPTO one week to decide the issues under the previous Order. (i.e., Court ordered resolution by October 24th). Yet, the request for extension was denied by the Office.

MONKEYmedia then informed the court, after the Order was issued, that they intended to seek reconsideration of their request. Needless to say, the court was not amused, modifying the previous Order as follows (Modified Order here):

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 that all parties were interested in resolving matters quickly and in the hope that 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 patents] and come to a final conclusion, a process whose length will be dictated primarily by the actions of the parties before the PTO.


This case was brought to my attention by the great Docket Navigator.