528.02 Time For Filing Motion
37 CFR § 2.127(e)(1) A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board. A motion for summary judgment, if filed, should be filed prior to the commencement of the first testimony period, as originally set or as reset, and the Board, in its discretion, may deny as untimely any motion for summary judgment filed thereafter.
For inter partes proceedings commenced on or after November 1, 2007, a motion for summary judgment generally may not be filed until after the moving party has made its initial disclosures. [ Note 1.] However, as provided in 37 CFR § 2.127(e)(1), the Board may entertain a summary judgment motion filed prior to initial disclosures that is based upon lack of jurisdiction, res judicata (claim preclusion), or collateral estoppel (issue preclusion). [ Note 2.]
Moreover, the motion for summary judgment should be filed before the opening of the first testimony period, as originally set or as reset. The motion for summary judgment is a pretrial device, intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact, and that it is entitled to judgment as a matter of law. [ Note 3.] In inter partes proceedings before the Board, trial commences with the opening of the first testimony period. [ Note 4.] See TBMP § 701. Therefore, a motion for summary judgment should be filed prior to the opening of the first testimony period, as originally set or as reset, and the Board, in its discretion, may deny as untimely any summary judgment motion filed thereafter. [ Note 5.] If testimony periods are reset prior to the opening of the plaintiff’s testimony period-in-chief, a motion for summary judgment filed before such testimony period commences is timely. [ Note 6.] Once the first testimony period commences, however, any summary judgment motion filed thereafter is untimely, even if filed prior to the opening of a rescheduled testimony period-in-chief for plaintiff, and even if no trial evidence has actually been introduced by the plaintiff in a previously open, but later reset trial period.
The Board will generally not consider a motion for summary judgment filed after the first testimony period commences unless (1) it involves a matter of res judicata (claim preclusion) or collateral estoppel (issue preclusion) or (2) was submitted by stipulation of the parties filed with the Board prior to the taking of any testimony or under the provisions of Accelerated Case Resolution (ACR). [ Note 7.] See TBMP § 528.05(a)(2). In fact, the Board often will deny a summary judgment motion on the basis of untimeliness without waiting to see whether the nonmoving party raises this objection in its response.
In certain situations, however, the Board may exercise its discretion to consider an untimely summary judgment motion if the circumstances warrant and judicial economy will be served thereby. [ Note 8.]
When a motion for summary judgment is filed, a brief in response, or a motion under Fed. R. Civ. P. 56(d) of the Federal Rules of Civil Procedure, must be filed within 30 days from the date of service of the motion. A reply brief, if any, must be filed within 15 days from the service date of the brief in response. The time for filing a reply brief will not be extended. [ Note 9.] The time for filing a responsive brief may be extended, but the time for filing a motion under Fed. R. Civ. P. 56(d) in lieu thereof, will not be extended. See TBMP § 528.06.
Parties are encouraged to contact the assigned Board attorney when a cross-motion for summary judgment is filed so that the Board attorney may issue an appropriate order clarifying brief due dates and page limits. [ Note 10.] SeeTBMP § 528.01
NOTES:
1. 37 CFR § 2.127(e)(1). See Qualcomm, Inc. v. FLO Corp., 93 USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature where movant had yet to serve initial disclosures).
2. 37 CFR § 2.127(e)(1); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion); Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1255 n.7 (TTAB 2009) ("if a party moves for summary judgment prior to the deadline for making initial disclosures it should indicate in its motion that the disclosures have been made, or are not required because the motion seeks judgment on claim or issue preclusion or on a jurisdictional issue"). See also 37 CFR § 2.120(a). For information concerning the application of issue or claim preclusion in Board proceedings at summary judgment, see Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1375-77 (Fed. Cir. 2008); Mayer/Berkshire Corp. v. Berkshire Fashions, 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005).
3. Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986); Hewlett-Packard Development Co. v. Vudu Inc., 92 USPQ2d 1630, 1631 (TTAB 2009).
4. See 37 CFR § 2.127(e)(1). See also Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1476 (TTAB 1992) (motion filed three days before testimony period opened was not untimely despite respondent’s claim that it would have conducted additional discovery if it had known petitioner was planning to file motion rather than go to trial); Von Schorlemer v. Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376, 1377-78 (TTAB 1986) (motion filed after trial period opens does not serve purpose of eliminating need for trial); and Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718 (TTAB 1985) (motion filed after close of applicant’s testimony period untimely).
5. See La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235-36 (Comm’r 1976) (motion filed before reset testimony period opened, but after previous testimony period opened was untimely; petition to Commissioner to reverse Board action denied).
8. See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1498 n.2 (TTAB 1986) (untimely cross-motions decided where parties acknowledged that both were untimely but Board granted request for a ruling thereon); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1300 n.2 (TTAB 1986) (untimely motion decided where nonmoving party did not object to timeliness and responded on merits and, moreover, motion was based on collateral estoppel), aff’d, 831 F.2d 306 (Fed. Cir. 1987); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 428 & n.2 (TTAB 1985) (untimely motion decided where no objection to timeliness was raised and delay was relatively insignificant).
10. 37 CFR § 2.127(e)(1). See, e.g., Cooper Technologies Co. v. Denier Electric Co., 89 USPQ2d 1478, 1479 (TTAB 2008) (the page limitation for a "brief in response to a motion" applies to a brief in which an opposition to a motion and a cross-motion are combined but address the same issues; in other words, one cannot exceed the page limitation for a brief by combining an opposition brief and cross-motion addressing the same issue).