504.03    Matters Outside the Pleadings Submitted on Motion for Judgment on Pleadings

The Board is unlikely to treat a motion for judgment on the pleadings, filed prior to the moving party’s service of initial disclosures and relying on matters outside the pleadings, as a motion for summary judgment. Treatment of a motion for judgment on the pleadings as a motion for summary judgment generally would result in a premature motion for summary judgment if the moving party had not served its initial disclosures prior to filing the motion. [ Note 1.]

If, on a motion for judgment on the pleadings, matters outside the pleading are submitted and not excluded by the Board, the motion will be treated as a motion for summary judgment under Fed. R. Civ. P. 56. [ Note 2.] Ordinarily, the parties to the proceeding will be notified that the motion for judgment on the pleadings is being treated as a motion for summary judgment, and they will be given a reasonable opportunity to present all material made pertinent to such a motion by Fed. R. Civ. P. 56. [ Note 3.]

Such notice may be unnecessary, however, in those cases where the parties themselves clearly have treated a motion for judgment on the pleadings as a motion for summary judgment, and the nonmoving party has responded to the motion on that basis. [ Note 4.]

NOTES:

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

 2.   Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 n.2 (TTAB 1998) (matters outside the pleading excluded); DAK Industries Inc. v. Daiichi Kiosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995) (exhibits excluded); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 n.5 (TTAB 1990); International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 218 USPQ 1024, 1026 (TTAB 1983) (because no matters outside the pleading were included with the motion, it was treated as a motion for judgment on the pleadings, not summary judgment).

 3.   Fed. R. Civ. P. 12(d). Cf. 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 motion for summary judgment without notifying nonmoving party); 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 after parties were informed that Board would entertain question of res judicata and were given opportunity to present evidence and argument on that question); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 n.5 (TTAB 1990) (did not convert to a summary judgment because the clear thrust of the motion is that petitioner failed to state a claim upon which relief can be granted); 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 (CCPA 1978).

 4.   Cf. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983) (nonmoving party did not expect Fed. R. Civ. P. 12(b)(6) motion to be treated as one for summary judgment);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 in support of and in opposition to a Fed. R. Civ. P. 12(b)(6) motion).