Friday, September 24, 2010

Precedential No. 37: TTAB Says Filing of Summary Judgment Motion Does Not Automatically Suspend Proceeding

On remand from the CAFC, the Board ruled that Rule 2.127(d) does not provide for an automatic stay of a proceeding when a party files a motion for summary judgment. "Rather, only an order of the Board formally suspending proceedings has such effect." As a consequence, the Board again granted Super Bakery's petition for cancellation as a sanction against Respondent Benedict for failing to comply with a Board discovery order. Super Bakery, Incorporated v. Ward E. Benedict, 96 USPQ2d 1134 (TTAB 2010) [precedential].

Benedict, appearing pro se, was twice ordered by the Board to respond to Bakery's discovery requests. One day before his responses were due (the second time, and twenty months after the discovery requests were served), Benedict filed a motion for summary judgment. Eighteen days later, the Board issued a suspension order pending determination of the summary judgment motion.

Bakery then filed a response to the summary judgment motion and a motion for sanctions, asking the Board for judgment under Rule 2.120(g). The Board granted the sanction motion, entered judgment against Benedict, and denied the summary judgment motion as moot.

Benedict appealed to the CAFC, which (here) vacated the Board's decision and remanded the case for consideration of the applicability of Rule 2.127(d).

The Board ruled that "[t]he mere filing of a motion for summary judgment (or any other motion which is potentially dispositive of a case) does not, however, automatically suspend a proceeding. *** Rather, only an order of the Board formally suspending proceedings has such effect."

Here, because the Board's suspension order was not issued until March 30, 2009, respondent was still obligated to respond to petitioner’s discovery requests, as ordered, by the March 13, 2009, deadline set by the Board. The Board observed that, in certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests. But not this time:

Rather than providing justification for the failure to comply with the Board’s order, the filing of respondent’s clearly meritless motion for summary judgment just one day before respondent’s discovery responses were due can only be viewed as an effort to further obstruct petitioner’s rights to obtain discovery under the Board’s rules, the Board’s order compelling discovery, and the Board’s order granting discovery sanctions.

The Board recognized that the sanction of judgment was harsh, but "Respondent has been afforded multiple opportunities to comply with the Board’s discovery rules and orders, but has not done so. *** There is no reason to assume that, given additional opportunities, respondent will fulfill his obligations as a party to this proceeding."

And so the Board again entered judgment against Respondent Benedict.

Text Copyright John L. Welch 2010.


At 2:48 PM, Anonymous Erik Pelton said...

I wonder how broadly this opinion will be interpreted going forward. Should discovery obligations continue only until the Board's suspension order is issued? Or beyond that? Or only if there is a prior order from the Board for discovery resulting from a motion to compel?


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