528.06    Request For Discovery to Respond to Summary Judgment

Fed. R. Civ. P. 56(d) When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:

  • (1) defer considering the motion or deny it;
  • (2) allow time to obtain affidavits or declarations or to take discovery; or
  • (3) issue any other appropriate order.

37 CFR § 2.127(e)(1)   … A motion under Rule 56(f) of the Federal Rules of Civil Procedure, if filed in response to a motion for summary judgment, shall be filed within thirty days from the date of service of the summary judgment motion. The time for filing a motion under Rule 56(f) will not be extended. …

Please Note: Former subdivision (f) of Fed. R. Civ. P. 56 has been carried forward by the 2010 amendments to the Federal Rules of Civil Procedure as subdivision (d). Consequently, the reference to Fed. R. Civ. P. 56(f) in 37 CFR § 2.127(e)(1)  is to be read as a reference to present Fed. R. Civ. P. 56(d). The textual differences between current Rule 56(d) and former Rule 56(f) are purely stylistic. Case law developed under the earlier version remains authoritative. [ Note 1.]

A party that believes that it cannot effectively oppose a motion for summary judgment without first taking discovery may file a request with the Board for time to take the needed discovery. The request must be supported by an affidavit showing that the nonmoving party cannot, for reasons stated therein, present facts essential to justify its opposition to the motion. [ Note 2.]

In the event the moving party fails to support its Fed. R. Civ. P. 56(d) motion by an affidavit, the motion generally will be denied. It is not sufficient that a nonmoving party simply state in an affidavit supporting its motion under Fed. R. Civ. P. 56(d) that it needs discovery in order to respond to the motion for summary judgment; rather, the party must state therein the reasons why it is unable, without discovery, to present facts sufficient to show the existence of a genuine dispute of material fact for trial. [ Note 3.] If a party has demonstrated a need for discovery that is reasonably directed to obtaining facts essential to its opposition to the motion, discovery will be permitted, especially if the information sought is largely within the control of the party moving for summary judgment. [ Note 4.] The motion should set forth with specificity the areas of inquiry needed to obtain the information necessary to enable the party to respond to the motion for summary judgment. [ Note 5.]

In lieu of an affidavit, a party may submit a declaration meeting the requirements of 37 CFR § 2.20. [ Note 6.]

When a request for discovery under Fed. R. Civ. P. 56(d) is granted by the Board, the discovery allowed is limited to that which the nonmoving party must have in order to oppose the motion for summary judgment; this is so even if the nonmoving party had, at the time when the summary judgment motion was filed, broader requests for discovery outstanding, and those requests remain unanswered.

A request for Fed. R. Civ. P. 56(d) discovery, if filed, must be filed within 30 days of the date of service of the summary judgment motion. [ Note 7.] No extensions of time will be granted to file a motion under Fed. R. Civ. P. 56(d). The affidavit in support of the request may be signed either by the requesting party or by its counsel, as appropriate.

A request for Fed. R. Civ. P. 56(d) discovery should be clearly made, and certainly not buried somewhere in a responsive brief or other paper, and should not be filed as a "throw away" alternative accompanying a response to the motion for summary judgment on the merits. When a party faced with a summary judgment motion files a combined request for Fed. R. Civ. P. 56(d) discovery and response on the merits of the motion, the Board ordinarily will deem the Fed. R. Civ. P. 56(d) discovery request moot, and decide the summary judgment motion on the merits thereof. [ Note 8.] Moreover, if a party’s request for discovery under Fed. R. Civ. P. 56(d) is granted by the Board, and the party thereafter files a response to the summary judgment without taking the requested discovery, the filing of the Fed. R. Civ. P. 56(d) motion may be viewed as sanctionable conduct under Fed. R. Civ. P. 11. [ Note 9.]

NOTES:

 1.   See Fed. R. Civ. P. 56(a) Advisory Committee’s notes (2010 amendment); Godin v. Schencks, 629 F.3d 79, 90-91 n.19 (1st Cir. 2010) ("The substance of the rule has not materially changed.").

 2.   See Fed. R. Civ. P. 56(d); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1475 (Fed. Cir. 1992) (finding sufficient need for additional discovery); Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (unfocused requests for discovery; Rule56(f) makes no distinction between whether no discovery has been taken and whether additional discovery is needed); Avia Group International Inc. v. L.A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548, 1551 (Fed. Cir. 1988) (complaint that summary judgment was granted before it could take discovery unavailing where party failed to seek Rule 56(f) protection); Spectra Corp. v. Lutz, 839 F.2d 1579, 5 USPQ2d 1867, 1868-69 & n.4 (Fed. Cir. 1988) (discovery properly denied where plaintiff had conducted 11 months of discovery and was allowed to continue taking discovery pending decision on defendant’s motion for summary judgment and failed to file Rule 56(f) affidavit); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir. 1987) (mere assertion in brief of need for discovery insufficient); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1860 (TTAB 2007) (nonmoving party may respond to summary judgment motion by filing motion for Rule 56(f) discovery).

See also Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 n.13 (TTAB 1998) (assertion in response to summary judgment motion that opposers intend to conduct further discovery was not proper request for Fed. R. Civ. P. 56(f) discovery); Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1253 (TTAB 1995) (motion for Rule56(f) discovery denied where applicant also filed a response to the summary judgment motion on the merits); Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1476 (TTAB 1992) (failure to file Rule 56(f) motion creates presumption party did not consider such discovery essential); Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1924-25 (TTAB 1989) (Rule 56(f) declaration sufficient); Nature’s Way Products Inc. v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989) (mere unsupported assertion of desire to take deposition inadequate).

 3.   See Dyneer Corp. v. Automotive Products, 37 USPQ2d 1251, 1253 (TTAB 1995) (Rule56(f) motion denied where applicant failed to show need for discovery as to specific issues, not merely a showing that it deferred taking discovery it otherwise would have taken had it known a motion for summary judgment would be filed). See also cases cited in previous note.

 4.   See Orion Group Inc. v. Orion Insurance Co., 12 USPQ2d 1923, 1925-26 (TTAB 1989).

 5.   See Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736, 1739 (Fed. Cir. 1989) (unfocused requests for discovery are insufficient); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed. Cir. 1987) (mere assertion that discovery is necessary is insufficient); Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309, 1311 n.6 (TTAB 1990) (affidavit stating that, during discovery, party will seek to elicit information on likelihood of confusion insufficient); Nature’s Way Products Inc. v. Nature’s Herbs Inc., 9 USPQ2d 2077, 2081 (TTAB 1989) (Rule56(f) motion, to the extent it could be construed as such, was not supported by required affidavit); J.I. Case Co. v. F.L. Industries, Inc., 229 USPQ 697, 701 (TTAB 1986) (statement by applicant of need to take discovery on validity of assignment was unsupported speculation).

 6.   Fed. R. Civ. P. 56(d). Cf. Taylor Brothers, Inc. v. Pinkerton Tobacco Co., 231 USPQ 412, 415 n.3 (TTAB 1986).

 7.   37 CFR § 2.127(e)(1).

 8.   See Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1578 (TTAB 2015) (Fed. R. Civ. P. 56(d) motion denied as moot because party filed substantive response to summary judgment motion); See Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB 2002) (Fed. R. Civ. P. 56(f) motion denied where opposer filed a response to the motion for summary judgment on the merits).

 9.   See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (order to show cause issued where, although Rule56(f) motion was granted, party responded to summary judgment without taking the requested discovery).