TTAB Proposals for Accelerated Case Resolution (ACR) Schedules
Background and Context
Note: This background material and the Board suggestions for possible ACR schedules must be read in conjunction with other information on ACR appearing on the Board's webpage and in the Board's manual of procedure, the TBMP, which also is available on the Board's webpage.
Approximately 98 percent of Board inter partes opposition and cancellation cases are withdrawn, settled or disposed of by interlocutory order each year. Only 1.9 percent of the dispositions of such cases in fiscal year 2011 involved the issuance of a final decision on the merits. (In fiscal year 2010, the figure was 2 percent, and in fiscal year 2009, 2.3 percent.)
For that small percentage of inter partes cases that proceed to final decision on the merits, the Board's standard trial schedule includes approximately 18 months between institution of the proceeding and the close of briefing. Suspension of proceedings, or extension and resetting of dates, whether for settlement talks or because of motion practice, can significantly increase the pendency of an inter partes case. A request for oral hearing, too, adds to the overall time a case may take before it is ready for consideration by a panel of Board judges. Even for a case that sees no suspensions and no extensions, the parties cannot expect a decision for at least 21 months.
In fiscal year 2011, the final decisions on the merits that issued in inter partes proceedings resulted from cases pending before the Board for, on average, approximately 4.1 years from commencement to final decision, with a median of approximately 3.4 years. Cases decided under various approaches to Accelerated Case Resolution (ACR) averaged approximately 2.1 years. For parties who are willing to agree to more streamlined proceedings, generally characterized by accelerated timelines, and limitations on discovery, motion practice and the methods for presentation of evidence, ACR schedules promise savings in time and resources.
The Board has received and posted on its webpage proposals from one stakeholder group for five different approaches to ACR. To contribute to the ongoing dialogue with stakeholders about ACR options, the Board has developed four ACR schedules of its own. These further expand the scheduling options that parties may wish to consider adopting in appropriate cases. These ACR schedules can be adapted by parties to serve their particular requirements in an inter partes proceeding. The Board welcomes stakeholder discussion of ACR options, and proposals from stakeholders for any additional schedules that could be posted on the Board's webpage, to continue the development of ACR.
In every case proceeding under one of the following four schedules, the Board would first issue its normal institution order and the parties would subsequently agree to one of the ACR options and obtain the approval of the Board to their stipulation to proceed under ACR. See TBMP §§ 528.05(a) (2) and 702.04 (3d ed. 2011). Agreement to use one of these options, followed by compliance with the chosen schedule, would be expected to result in trial and final decision in 20 months or less. The first three options utilize a cross-motions for summary judgment approach and include an 11-month schedule, a 14-month schedule and an option offering 15-17 month schedules (depending on whether an oral hearing is requested). The fourth option utilizes an accelerated trial format and involves 16-18 month schedules (depending on whether an oral hearing is requested). All the options presume no motions to dismiss and no motions for summary judgment, except insofar as the latter may be part of a selected ACR option. Filing of a counterclaim would require alteration of these schedules.
Eleven Month Track
This track assumes that pleading and the discovery conference proceed as scheduled in the institution order, and there are no amendments of pleadings or pleading motions during this time; and initial disclosures are made no later than the deadline for the discovery conference (total elapsed time - 70 days). This option would have to be selected by the parties prior to the discovery conference, to facilitate initial disclosures as part of the conference; 15 day intervals would be scheduled between each of the designated periods for discovery or a submission by a party; no interval would be scheduled between the close of the last period and time to issuance of the Board decision:
Discovery period: 60 days
(Opening 70 days from institution)
Period for submission of plaintiff's
ACR brief and evidence: 30 days
(Motion for summary judgment format)
Period for submission of defendant's
ACR brief and evidence: 30 days
(Cross-motion for summary judgment format)
Period for submission of plaintiff's
ACR rebuttal brief and evidence: 15 days
(Summary judgment format)
Period for submission of defendant's
ACR rebuttal brief and evidence: 15 days
(Cross-motion for summary judgment format)
Board decision, from date of final briefing: 50 days
Notes:
Discovery - Parties stipulate to limited written discovery to extent needed (no discovery depositions), and stipulate to authenticity of produced documents, if any. Discovery requests must be served no later than 30 days after the opening of discovery. Responses to written discovery requests are due 30 days from the date of service of such requests. Parties also may stipulate to forego discovery, which could shorten this option, overall.
Creation of a record - Parties expected to stipulate to many facts; introduction of testimony by affidavit or declaration, if needed; no testimony depositions; no cross-examination; notices of reliance permitted.
Briefs - Parties utilize summary judgment format, and stipulate that Board may decide any remaining issues of material fact.
Oral Hearing - None.
Motions - None, including no motions to extend or suspend scheduled periods; filing of motions would take case off the 11-month track.
Fourteen Month Track
This track assumes that pleading and the discovery conference proceed as scheduled in the institution order, and there are no amendments of pleadings or pleading motions during this time; and initial disclosures are made within 15 days of the opening of discovery (total elapsed time - 85 days). This option would have to be selected prior to the opening of discovery or within 15 days after the opening of discovery (i.e., the due date for initial disclosures under this option); 30 day intervals would be scheduled between each of the designated periods for discovery or a submission by a party, and after the period for defendant's rebuttal submission, to account for possible cross-examination of affiants:
Discovery period: 60 days
(Opening 70 days from institution; initial
disclosures due within first 15 days of
the discovery period)
Period for submission of plaintiff's
ACR brief and evidence: 30 days
(Motion for summary judgment format)
Period for submission of defendant's
ACR brief and evidence: 30 days
(Cross-motion for summary judgment format)
Period for submission of plaintiff's
ACR rebuttal brief and evidence: 15 days
(Summary judgment format)
Period for submission of defendant's
ACR rebuttal brief and evidence: 15 days
(Cross-motion for summary judgment format)
Board decision, from submission on brief: 50 days*
(*50 days measured from expiration of period for filing results of cross-examination of defendant's rebuttal affiant; "submission on brief" date could be earlier, if plaintiff informs Board it will not cross-examine such affiant)
Notes:
Discovery - Parties stipulate to limited, written discovery (no discovery depositions) to the extent needed, and stipulate to authenticity of produced documents. Parties stipulate to serve discovery no later than 30 days after the opening of discovery and to respond to discovery within 30 days. Parties also may stipulate to forego discovery, which could shorten this option, overall.
Creation of a record - Parties expected to stipulate to many facts; introduction of testimony by affidavit or declaration, if needed; no testimony depositions; cross-examination of affiants permitted within 30 days of the close of each testimony period, with no extension; notices of reliance permitted, including on the results of any cross-examination of an affiant; if plaintiff cross-examined a rebuttal affiant for defendant, the notice of reliance would have to be filed within 10 days of the cross-examination.
Briefs - Parties utilize summary judgment format, and stipulate that Board may decide any issues of material fact.
Oral Hearing - None.
Motions - Parties stipulate to resolution of motions by telephone conference with Board attorney. Proceeding not suspended during pendency of motions unless otherwise stipulated by parties. Failure to comply with the requirement for telephone resolution of motions, or stipulated suspension of proceedings for motions could threaten the completion of the proceeding within the 14-month schedule. No motions to extend or suspend scheduled periods. Notwithstanding agreement by the parties to resolution of their motions by telephone conference and without suspension of proceedings, the Board may determine that a particular motion cannot be heard by phone and/or may require issuance of a suspension order.
Up to Seventeen Month Track (if oral hearing requested)
This track assumes that pleading and the discovery conference proceed as scheduled in the institution order, and there are no amendments of pleadings or pleading motions during this time; and initial disclosures are made within 30 days of the opening of discovery (total elapsed time - 100 days). This option would have to be selected prior to opening of discovery or within 45 days after opening of discovery (i.e., 15 days after the due date for initial disclosures); 30 day intervals would be scheduled between each of the designated periods for discovery or a submission by a party, and after the period for defendant's rebuttal submission, to account for possible cross-examination of affiants:
Discovery period: 90 days
(Opening 70 days from institution; initial
disclosures due within first 30 days of
the discovery period)
Period for submission of plaintiff's
ACR brief and evidence: 30 days
(Motion for summary judgment format)
Period for submission of defendant's
ACR brief and evidence: 30 days
(Cross-motion for summary judgment format)
Period for submission of plaintiff's
ACR rebuttal brief and evidence: 15 days
(Summary judgment format)
Period for submission of defendant's
ACR rebuttal brief and evidence: 15 days
(Cross-motion for summary judgment format)
Board decision, from date of submission on brief: 50 days*
(*50 days measured from expiration of period for filing results of cross-examination of defendant's rebuttal affiant; "submission on brief" date could be earlier, if plaintiff informs Board it will not cross-examine such affiant)
Oral hearing option: Hearing set only upon request filed no later than due date for defendant's rebuttal brief. Hearing would be scheduled within 45 days of the expiration of the period for filing results of cross-examination of defendant's rebuttal affiant.
If oral hearing elected, decision issued: 50 days after hearing
Notes:
Discovery - parties stipulate to limited, written discovery, limited discovery depositions to the extent needed, and stipulate to authenticity of produced documents. Parties stipulate to serve discovery and notice discovery depositions no later than 45 days after the opening of discovery, and to respond to discovery within 30 days and take discovery depositions prior to the closing date of discovery. Parties also may stipulate to forego or shorten discovery, which could shorten this option overall.
Creation of a record - parties expected to stipulate to many facts; introduction of testimony by affidavit or declaration; no testimony depositions; cross-examination of affiants permitted within 30 days of close of each testimony period, with limited extensions; notices of reliance permitted, including on the results of any cross-examination of an affiant; if plaintiff cross-examined a rebuttal affiant for defendant, the notice of reliance would have to be filed within 10 days of the cross-examination; expert testimony by affidavit or declaration/survey evidence permitted.
Briefs - parties utilize summary judgment format, and stipulate that Board may decide any issues of material fact.
Oral Hearing - if requested, Board will attempt to schedule within 45 days of close of period for filing results of cross-examination of defendant's rebuttal affiant.
Motions - parties stipulate to resolution of motions by telephone conference with Board attorney. Proceeding not suspended during pendency of motions unless otherwise stipulated by parties. Limited consented extension/suspension of scheduled periods up to 30 days permitted. These, however, would alter the 15-17 month schedules available under this option. Notwithstanding agreement by the parties to resolution of their motions by telephone conference and without suspension of proceedings, the Board may determine that a particular motion cannot be heard by phone and/or may require issuance of a suspension order.
Up to Eighteen Month Track (if oral hearing requested) - Trial Format
This track assumes pleading and the discovery conference proceed as scheduled in the institution order, and there are no amendments of pleadings or pleading motions during this time; and initial disclosures are made within 30 days of the opening of discovery (total elapsed time - 100 days). This option would have to be selected prior to opening of discovery or within 45 days after opening of discovery (i.e., 15 days after due date for initial disclosures); 30 day intervals would be scheduled between each of the designated periods for discovery or a submission by a party, and before the plaintiff's briefing period:
Discovery period: 90 days
(Opening 70 days from institution; initial
disclosures due within first 30 days of
the discovery period)
Period for submission of plaintiff's
ACR evidence: 30 days
Period for submission of defendant's
ACR evidence: 30 days
Period for submission of plaintiff's
ACR rebuttal evidence: 15 days
Plaintiff's period for filing brief: 30 days
Defendant's period for filing brief: 30 days
Plaintiff's period for filing reply brief: 15 days
Oral hearing set only upon request
filed no later than due date for reply brief.
Board decision, from date of final briefing: 50 days*
(*Assumes parties notify Board at time of submission of final brief that they have agreed there will be no request for oral hearing.)
If oral hearing elected, scheduled within: 45 days
If oral hearing elected, decision issued: 50 days after hearing
Notes:
Discovery - parties stipulate to limited, written discovery, limited discovery depositions to the extent needed, and stipulate to authenticity of produced documents. Parties stipulate to serve discovery and notice discovery depositions no later than 45 days after the opening of discovery, and to respond to discovery within 30 days and take discovery depositions no later than the closing date of discovery. Parties also may stipulate to forego or shorten discovery, which could shorten this option overall.
Creation of a record - parties expected to stipulate to many facts; introduction of testimony by affidavit or declaration or testimony deposition, as needed; cross-examination of affiants or declarants permitted within 30 days of close of each testimony period, with limited extensions; notices of reliance permitted, including on the results of any cross-examination of an affiant or declarant; if defendant cross-examined a rebuttal affiant or declarant for plaintiff, the notice of reliance would have to be filed within 10 days of the cross-examination; expert testimony by affidavit or declaration/survey evidence permitted.
Briefs - parties utilize standard trial format.
Oral Hearing - if requested, Board will attempt to schedule within 45 days.
Motions - parties stipulate to resolution of motions by telephone conference with Board attorney. Proceeding not suspended during pendency of motions unless otherwise stipulated by parties. Consented extension/suspension of scheduled periods up to 30 days permitted. These, however, would alter the 16-18 month schedules available under this option. Notwithstanding agreement by the parties to resolution of their motions by telephone conference and without suspension of proceedings, the Board may determine that a particular motion cannot be heard by phone and/or may require issuance of a suspension order.
Custom Tracks Utilizing ACR-type Efficiencies
Parties may stipulate to avail themselves of many of the efficiencies outlined above in inter partes cases proceeding under the Board's standard trial schedule. Under established Board precedent, parties may enter into numerous stipulations to streamline their proceeding and expedite the resolution of the case. Examples of cases in which parties have opted for ACR at various points in the proceeding or utilized ACR-type efficiencies may be found on the TTAB web page of the United States Patent and Trademark Office website. If parties agree to refrain from filing for extensions or suspensions of periods scheduled in the Board's institution order, utilize telephone conferences with Board attorneys for resolution of motions whenever possible, and agree to streamlined presentation of evidence, they may enjoy a full discovery period and full trial periods and still obtain a decision on the merits within approximately two years from commencement.