503.04    Matters Outside the Pleading Submitted on Motion to Dismiss

The circumstances in which the Board will treat a motion to dismiss relying on matters outside the pleadings as a motion for summary judgment are very limited. A party may not file a motion for summary judgment until it has made its initial disclosures, unless the motion is based on issue or claim preclusion or lack of Board jurisdiction. [ Note 1.] Treatment of a motion to dismiss under Fed. R. Civ. P. 12(b)(6) as a motion for summary judgment generally would result in a premature motion for summary judgment. [ Note 2.] Accordingly, when a motion for summary judgment would be premature, the Board will not consider a motion to dismiss including matter outside the pleading to be a motion for summary judgment, even if the parties treat it as such. [ Note 3.]

Where a motion to dismiss is based on issue or claim preclusion or lack of Board jurisdiction, the Board may treat the motion as one for summary judgment, in which case, the parties will be given reasonable opportunity to present all material that is pertinent to the motion. [ Note 4.]

NOTES:

 1.   37 C.F.R. § 2.127(e)(1). See Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522 n.2 (TTAB 2013) (motion to dismiss amended counterclaim accompanied by evidence was not treated as a motion for summary judgment as there was nothing in the record which indicated that initial disclosures were served by opposer); 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), appeal dismissed, 427 F. App’x 892 (Fed. Cir. 2011); 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). Cf. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1873-74 n.2 (TTAB 2011) (Board may consider matters outside the pleading on a motion to dismiss for lack of subject matter jurisdiction under Fed. R. Civ. P. 12(b)(1) without converting to a summary judgment motion).

 2.   37 C.F.R. § 2.127(e)(1); Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251, 1255-56 (TTAB 2009) (motion to dismiss not converted to motion for summary judgment).

 3.   See Fed. R. Civ. P. 12(d); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1028 (TTAB 2015) (motion to dismiss that included matters outside of the pleadings not considered as motion for summary judgment because motion was filed before the parties’ initial disclosures were due and initial disclosures had not been served); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.2 (TTAB 1998) (matters excluded); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436 (TTAB 1996) (matters excluded).

Ordinarily, the parties to the proceeding will be notified when a motion to dismiss is being treated as a motion for summary judgment, and the responding party will be given reasonable opportunity to present all material made pertinent to such a motion by Fed. R. Civ. P. 56. See Fed. R. Civ. P. 12(d); Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1044 (Fed. Cir. 1993) ("A movant’s challenge to the sufficiency of the complaint as a matter of law, brought under 12(b)(6), is not sufficient notice that the nonmovant must respond as if to a motion for summary judgment, and place material facts in dispute"); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (Board erred in treating motion to dismiss as a motion for summary judgment without notifying adverse party); Libertyville Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 USPQ2d 1594, 1596 (TTAB 1992), summary judgment granted, 24 USPQ2d 1376 (TTAB 1992); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156, 1157 (TTAB 1991) (not an appropriate case to treat as summary judgment; extrinsic matters excluded); Pegasus Petroleum Corp. v. Mobil Oil Corp., 227 USPQ 1040, 1041 n.2 (TTAB 1985); Exxon Corp. v. National Foodline Corp., 196 USPQ 444, 445 (TTAB 1977), aff’d, 579 F.2d 1244, 198 USPQ 407, 408 (CCPA 1978). In such a case, notice may be dispensed with as unnecessary, however, where the parties themselves clearly have treated a motion to dismiss as a motion for summary judgment, and the nonmoving party has responded to the motion on that basis. Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 1998) (both parties submitted evidentiary materials outside the pleadings). Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (nonmoving party expected only that sufficiency, not merits of case would be decided).

 4.   Fed. R. Civ. P. 12(d). Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 n.9 (TTAB 2016) (Board sua sponte entered summary judgment in favor of non-movant where parties were previously informed that Board would entertain question of whether res judicata applied to the proceeding and parties were given opportunity to present evidence and argument on that question); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 (TTAB 2011) (Board previously informed parties that motions to dismiss in consolidated case would be treated as motions for summary judgment), appeal dismissed, 427 F. App’x 892 (Fed. Cir. 2011).