502.01    Available Motions

There is a wide range of motions that may be filed in inter partes proceedings before the Board. 37 C.F.R. § 2.116(a), provides that "[e]xcept as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure." Thus, many of the motions available under the Federal Rules of Civil Procedure are also available in proceedings before the Board.

However, because the Board is an administrative tribunal, its rules and procedures, and hence the motions available in proceedings before it, necessarily differ in some respects from those prevailing in the federal district courts. See TBMP § 102.03 (General Description of Board Proceedings) and TBMP § 702 (Pretrial Disclosures; Manner of Trial and Introduction of Evidence).

For example, the Board does not preside at the taking of oral testimony. Instead, oral testimony is taken out of the presence of the Board, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. [ Note 1.] See TBMP § 702. Further, for reasons of administrative economy, it is the policy of the Board not to read trial testimony or examine other trial evidence prior to final decision. [ Note 2.] For this reason, the Board will defer consideration of substantive objections to trial evidence (e.g., on the grounds of hearsay, relevance, or that the evidence constitutes improper rebuttal) until final decision. [ Note 3.] See also TBMP § 707 (Objections to Evidence).Therefore, except for the motions for involuntary dismissal under 37 C.F.R. § 2.132(a)  and 37 C.F.R. § 2.132(b)  for failure of the plaintiff to take testimony or offer evidence (other than plaintiff’s pleaded registration under 37 C.F.R. § 2.132(b) ), the Board will not entertain any motion challenging or otherwise relating to the probative value or sufficiency of a party’s trial evidence. For information concerning these motions, see TBMP § 534 (Motion for Judgment for Plaintiff’s Failure to Prove Case). Motions that require examination of trial evidence prior to final decision, such as motions in limine, and those under Fed. R. Civ. P. 41(b) for involuntary dismissal and under Fed. R. Civ. P. 50(a) for judgment as a matter of law (formerly known as a motion for directed verdict), are not available in Board proceedings. [ Note 4.]

Given the broad range of possible motions that may be filed in an inter partes proceeding before the Board, this chapter discusses only the motions that most commonly arise in Board proceedings.

NOTES:

 1.   See 37 C.F.R. § 2.123(a); 37 C.F.R. § 2.125(d).

 2.   Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB 2003) (substantive evidentiary issues are deferred until final decision); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) ("The Board does not read testimony and consider substantive objections to evidence, or determine the probative value of evidence, prior to final hearing"); M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (Board will not rule on objections pertaining to admissibility prior to final decision).

 3.   Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB 2003) (substantive evidentiary issues are deferred until final decision); Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1426 (TTAB 1993) (contested motions to introduce discovery depositions filed with a notice of reliance deferred); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992) (objection to notice of reliance that the evidence is improper rebuttal evidence will be deferred); M-Tek Inc. v. CVP Systems, Inc., 17 USPQ2d 1070, 1073 (TTAB 1990) (motion to strike documents submitted under a notice of reliance as hearsay and not properly authenticated deferred).

 4.   Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010) (applicant’s motion to exclude testimony not construed as motion in limine); Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750-51 (TTAB 1995) (motions in limine not available); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501, 1504 n.2 (TTAB 1993) (directed verdicts not available); Rainbow Carpet, Inc. v. Rainbow International Carpet Dyeing & Cleaning Co., 226 USPQ 718, 718 (TTAB 1985) (to extent motion for summary judgment was intended as one for directed verdict, it is inappropriate); Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (motion for involuntary dismissal under Fed. R. Civ. P. 41(b) unavailable), aff’d, 737 F.2d 1576, 222 USPQ 665, 668-69 (Fed. Cir. 1984). Cf. Hunter Industries Inc. v. Toro Co., 110 USPQ2d 1651, 1656 n.11 (TTAB 2014) , appeal dismissed per stipulation, No. 14-CV-4463 (D. Minn. Jan. 20, 2016) (noting that because the Board does not entertain motions in limine, opposer was unable to raise the issue of over-designation of confidential identifying information of declarants until applicant submitted the declarations during its testimony period).