Permanent Expansion of Telephone Conferencing on
Interlocutory Matters in Inter Partes Cases Before the
Trademark Trial and Appeal Board
Since August 18, 1998, the Trademark Trial and Appeal Board (Board) has run a pilot project in which a group of three staff attorneys have heard arguments on, and disposed of, a wide range of pending interlocutory motions and related matters by telephone.
Under the pilot project, the greater use of telephone conferencing has proven beneficial to both the Board and the parties to contested cases. By this notice, the Board reports general findings from the pilot project and announces that telephone conferencing is now an option for resolving interlocutory matters in any inter partes case pending before the Board.
During the first year of the pilot project, there were twenty-two instances in which one party requested a conference, eight instances in which the Board initiated a conference, and two instances in which the parties were already conferencing and added the Board to their conversation. There were also at least six instances in which inquiries were made to schedule a conference, but the parties then settled their differences.
Of the twenty-two unilateral requests, one was withdrawn, two became moot, and only five were denied. One request was denied because of logistical difficulties; four were denied because they involved discovery disputes deemed not suitable for resolution by telephone conference (e.g., issues not focused enough, too many discovery requests in dispute, or procedurally premature).
The most frequently discussed subjects were pleadings, discovery issues, scheduling/status issues, and requests to extend or reopen.
The following observations and recommendations emerged from the pilot project:
- The Board was concerned there would be a deluge of requests, but the number was manageable.
- Board attorneys found it useful to initiate conferences.
- The time spent by the Board attorneys on conferences (e.g., scheduling, conducting conferences, and issuing post-conference orders) was comparable to the time spent reviewing and disposing of written submissions. Nonetheless, cases in which the Board held conferences were more likely to remain on track and less likely to result in intractable disputes between parties.
- Conference participants generally were cooperative and cordial with each other and the Board. Participants appeared pleased with the Board's willingness to hold conferences and render quick decisions.
- Some parties mistakenly tried to use telephone conferencing as a substitute for stipulated written motions to suspend or reset dates and deadlines. [The parties must, except in rare instances, file written motions or stipulations with the Board when they agree to suspend or reset dates or deadlines.]
- Some parties mistakenly requested a telephone conference as a means to supplement a motion or a related brief. The Board will not allow a moving party to use a telephone conference to present oral arguments on a motion that has been fully briefed in writing.
- A number of conferences proceeded without prior filing of a written motion or proposed agenda for the conference. Thus, telephone conferencing proved more flexible than parties might have presumed from the announcement of the pilot project. Note, however, that a written motion or proposed agenda, filed by fax or hand delivery following consultation with a Board attorney, generally is necessary to properly frame issues for a conference.
To alert parties to the availability of telephone conferencing, the Board will include appropriate information in the notice of institution for each case, i.e., the notice setting the defendant's time to file an answer or other response to the plaintiff's complaint. The notice will also include the name and telephone number of the Board attorney responsible for the case. No special notice will be mailed to parties for cases already in existence, but telephone conferencing will be available in all cases, not just those instituted subsequent to this notice.
An Administrative Trademark Judge may, in a particular case, conduct a telephone conference, or one Board attorney may substitute for another otherwise responsible for a case. But the parties must, in the first instance, direct requests for conferences to the Board attorney responsible for resolving interlocutory matters in that case.
Although there will be no formal limitation as to the types of matters which can be handled through telephone conferences, Board attorneys retain discretion to decide whether any particular matter can be heard or disposed of by telephone. A decision may be made during a telephone conference to adjourn the conference and require submission of written briefs, if it appears during the conference that its continuation is not practicable. On the other hand, a conference arranged for consideration of a particular motion will not necessarily be limited to that motion and may be expanded to consider collateral matters which arise during the conference.
Patent and Trademark Rule 1.2 (37 CFR 1.2), which requires all business with the PTO be transacted in writing, is waived to the extent that Board attorneys or judges may accept from parties, or direct parties to present, oral recitations of procedural facts and presentations of argument. Also, Trademark Rule 2.119(b) (37 CFR 2.119(b)), which specifies the acceptable methods for forwarding service copies of papers filed with the Board, is waived to the extent necessary to facilitate telephone conferencing. Board attorneys retain the option of requiring written submissions and service of copies of written submissions, as necessary.
Included below are discussions of (1) illustrative examples of interlocutory matters which are or are not suitable for telephone conferences; (2) how a telephone conference may be initiated (e.g., by the Board attorney or by a party); and (3) the mechanics of participation and issuance of rulings.
MATTERS FOR TELEPHONE CONFERENCING OR
The Board will neither insist that certain types of motions always be decided by telephone conference nor automatically preclude particular matters from being considered by telephone; however, the Board will not decide by telephone conference any motion which, if granted, would be dispositive of the proceeding.
Many motions, whether in the pleading phase, discovery phase, or trial phase of a Board case, are suitable for telephone conferencing. Examples include:
- a dispute about whether a set of interrogatories is within the Board's limit;
- most motions to extend or suspend;
- a motion to compel attendance of a witness at a discovery deposition;
- a motion to quash a notice of deposition; and
- a motion to compel which focuses narrowly on a small number of specific interrogatories or document requests.
In addition, parties might wish to consider requesting a conference, or the Board might initiate a conference, for interlocutory matters which do not involve motions but where the parties might benefit from a better understanding of Board practice. For example:
- Parties sometimes wrongly assume that the party which serves discovery first is entitled to obtain responses first; these disputes regarding a supposed "right of priority" to obtain discovery would be particularly suited to resolution by telephone conference.
- Where a significant number of specific discovery requests are in dispute and the Board finds it impractical to decide a motion to compel or a motion for protective order by telephone conference, the parties still might find it helpful to participate in a conference focusing more generally on the areas of permissible discovery.
- Misunderstandings as to Board practice sometimes threaten to derail a discovery deposition. A telephone conference may be used to clarify Board practice when problematic issues arise during a discovery or testimony deposition and threaten its progress or completion.
Although many types of motions are suitable for resolution by telephone conference, certain motions are not.A motion which is potentially dispositive, i.e., a motion which, if granted, would dispose of a Board proceeding, must be decided by a three-judge panel and is inappropriate for a telephone conference with a Board attorney. See 37 CFR 2.127(c). Examples of potentially dispositive motions which will not be considered include the following:
- a motion for entry of default judgment [however, a motion by a defendant to accept a late answer or to reopen the time for answering would be suitable for a telephone conference];
- a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6);
- a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c);
- a motion for summary judgment [however, a motion to strike a motion for summary judgment as untimely could be considered in a telephone conference]; and
- a motion for entry of judgment against a plaintiff for failure to prosecute, under Trademark Rule 2.132.
Certain motions require review of large written records and, therefore, are not suitable for resolution by telephone conference. For example:
- A motion to compel involving a significant number of disputed discovery requests may require the Board attorney handling the case to sift through discovery requests, responses, and the parties' arguments on the sufficiency of the responses. [However, a motion to compel must always include a showing that the parties have made a good faith attempt to resolve their discovery dispute prior to filing a motion to compel, see 37 CFR 2.120(e), and the Board may hold a telephone conference on this threshold issue.]
Use of the telephone conference procedure is discretionary with the Board. The Board may schedule a conference (1) following the Board's granting of a party's request for a conference by one or both parties, or (2) upon the Board's own initiative. Procedures for framing the issues for the conference and convening the conference will vary, depending on how the telephone conference is initiated and, if initiated by a party for the purpose of deciding a motion, whether the party is a movant or non-movant.
If a party wishes to request a telephone conference or if multiple parties agree to participate in a conference, the party or parties must contact the appropriate Board attorney by telephone. Initial contact will be limited to a simple statement of the nature of the issues proposed to be decided by telephone conference, with no discussion of the merits of any issues.
During initial telephone contact, the Board attorney will decide whether any party must file a motion or brief or written agenda to frame the issues for the conference and will issue instructions for the filing and service of copies of any motion, brief, or written agenda. If all parties to a case make a joint request for a conference, while they should not generally expect to have the conference begin on initial contact, it is possible.
Denial of a request for a telephone conference is without prejudice to the merits of the motion or other matter sought to be heard by telephone. If a request is denied, the Board attorney will provide instructions to the party or parties regarding requirements for filing the motions or briefs required to have the matter decided on the papers.
A party that intends to file a motion may request a telephone conference before it files the motion. A party that has been served with a written motion may request a telephone conference to dispose of the motion, but that party must contact the Board attorney soon after it receives the service copy of the motion. A party will not be able to request a telephone conference at or near the end of its time for responding to a motion, so as to avoid or delay responding to the motion.
A party that files and serves a written motion without first requesting a telephone conference should have no need to later request a conference on that motion, absent special circumstances. For example, if a party's motion results in a cross-motion and the party that filed the initial motion then wishes to request a telephone conference, it may do so.
When the Board grants a party's request for a telephone conference, the party has the responsibility for scheduling it for a time agreeable to all parties and the Board attorney. The party must arrange the conference call.
When parties agree to a telephone conference, they should also decide which of them will report to the Board and arrange the conference.
Upon review of a case file or a motion pending in a case file, the reviewing Board attorney may determine that a telephone conference is appropriate. In such a case, the Board attorney will contact the parties to arrange an appropriate time for the conference. If the conference is being arranged to decide a pending motion, and the non-moving party has not yet filed a response, the Board will inform the non-moving party that it should be prepared to make an oral response to the motion during the telephone conference. Any other instructions regarding filing of briefs or serving of copies will be provided. The Board will arrange any conference call it initiates.
ISSUANCE OF RULINGS
When a written motion is filed and a telephone conference is scheduled, either on request of the non-movant or on the Board's initiative, the subject motion may be denied with prejudice if the party that filed the motion fails to participate in the telephone conference.
When the Board grants a moving party's request for a telephone conference on a motion, failure of the non-movant to participate may result in the motion's being treated as conceded. See 37 CFR 2.127(a).
The Board retains the discretion to reconsider the grant or denial of a motion that results from a party's failure to participate.
Conduct of Conference
As a general rule, the telephone conference will be limited to the issues defined by the Board prior to, or at the commencement of, the conference. There may be instances in which the Board attorney determines, during a telephone conference, that the motion or matter in issue should be decided on a written record. In such cases, the Board attorney may halt the telephone conference and direct the filing of a motion, or response to a motion, or both.
Parties must conduct themselves with appropriate decorum. Interruptions are to be avoided. The Board attorney conducting the conference generally will signal that a party may make an argument or presentation by inviting the party to do so or by inviting a response to an argument or presentation made by another.
The Board will not record the contents of a telephone conference, stenographically or by audio tape. Participating parties are not permitted to record the contents of a telephone conference.
Issuance of Rulings
The Board attorney may make rulings at the conclusion of a telephone conference or may take the parties' arguments under advisement. In every instance, after the resolution of a motion or matter by telephone conference, the Board attorney will issue a written order containing all rulings. In most instances, the Board's written order will consist of only a brief summary of the issues and the resulting decision; generally, the order will not include a recitation of the parties' arguments. The decision will be forwarded to the parties by fax or mail.
Neither the filing, under 37 CFR 2.127(b), of a request for reconsideration or modification of a decision on a motion or matter decided after a telephone conference nor the filing of a petition under 37 CFR 2.146(e)(2) will, in the usual case, result in a stay of proceedings. Any discovery, trial dates, or other deadlines set by the Board will ordinarily remain as set, notwithstanding the request for reconsideration or petition. The Board may, however, reset dates, as appropriate, if either a request for reconsideration or a petition is granted.
May 23, 2000
Q. Todd Dickinson
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office