Monday, June 13, 2011

Reminder: June 21st Deadline for Comments on TTAB Involvement in Settlement Discussions

In a Notice published (here) in the Federal Register, the USPTO seeks comments on the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings." The deadline for written comments is June 21, 2011.

The purpose of this notice of inquiry is to determine whether the involvement of an Administrative Trademark Judge (ATJ) or Board Interlocutory Attorney (IA) would be desirable by parties, and if so, how extensively and at what points in proceedings. In addition, to the extent stakeholders voice a preference for assistance in settlement discussions but prefer such assistance to be provided by mediators or individuals other than Board judges and attorneys, it will be useful for the Board to receive suggestions on this option.

In particular, the PTO "seeks responses to the following questions, as well as comments or suggestions on related topics:

(1) Should the Board be routinely involved in settlement discussions of parties, or instead, be involved only in particular cases on an ‘‘as needed’’ basis?

(2) If you believe parties would benefit from involvement of a non-party, would it be preferable for settlement discussions to be handled by (a) an ATJ, (b) an IA, (c) a USPTO employee trained as a mediator but who is not an ATJ or IA, or (d) a third-party mediator?

(3) How would the involvement be triggered? For example, by stipulation of the parties, by unilateral request or by some other trigger? Examples of situations that might be used as triggers for required settlement discussions involving a non-party could include the use by the parties of multiple suspensions for settlement discussions which proved unsuccessful, or events such as the filing of an answer, the exchange of disclosures, the completion of some discovery, or the close of the discovery period.

(4) How many triggers should there be that would prompt Board or mediator involvement in settlement talks? For example, apart from the initial discovery conference, should there be a follow-up inquiry from the Board in the middle of discovery, at the end of discovery, or before pre-trial disclosures are made and commencement of trial is imminent? Should there be a required phone conference after the second or any subsequent request to extend or suspend discovery for settlement?

(5) To what extent should Board personnel involved in settlement discussions be recused from working on the case?

(6) Should motions for summary judgment, the vast majority of which are denied and do not result in judgment, be barred unless the parties have been involved in at least one detailed settlement conference? Should an exception to such a rule be made for motions based on jurisdictional issues or claim or issue preclusion?

(7) Should the parties be accorded only limited discovery until they have had a detailed settlement discussion with a Board judge, attorney or mediator, with the need for subsequent discovery dependent on the results of the discussion?

(8) Should the Board amend its rules to require that a motion for summary judgment be filed before a plaintiff’s pre-trial disclosures are due, and that the parties be required to engage in a settlement conference in conjunction with a discussion of plaintiff’s pre-trial disclosures?

TTABlog comment
: Having been involved in the settlement of TTAB cases for decades, I can't think of a case in which Board involvement would have been helpful. I consider it my job to understand the facts and the law and to seek a settlement that best serves my client's business interests. I don't want to have to explain all that to a "settlement facilitator."

I do think there may be some benefit in the Board requiring a pre-summary judgment conference of some sort, in which the Board would try to de-rail the many futile summary judgment motions that are filed. Perhaps before allowing summary judgment papers to be submitted, the Board could require the moving party to provide a statement of undisputed facts, and the opposing party a statement of facts in dispute, based on which documents the Board could decide whether going forward with a summary judgment motion is warranted.

Text Copyright John L. Welch 2011.


At 4:04 PM, Anonymous Orrin A. Falby said...

Or may if the discussions were held with the Board ex parte would be okay, yes?

At 8:50 AM, Anonymous Anonymous said...

Adding a requirement that the parties file disputed/undisputed facts before being allowed to file a summary judgment motion would only complicate and extend the time and cost a summary judgment motion takes at the Board.
It would not ultimately prevent the summary judgment issues from being raised.
How often would the Board deny the requesting party the opportunity to file the summary judgment motion for full consideration?

At 10:25 AM, Blogger John L. Welch said...

I don't know why you think the Board won't short-circuit the summary judgment motion. By far the majority of summary judgment motions are quickly denied, with the Board (or more accurately, the interlocutory attorney) pointing out a fact in dispute. My proposal would avoid the time and expense of full briefing in, I estimate, 80 percent of the cases. In the other 20 percent, the Board might persuade the parties to proceed via ACR, thereby avoiding a trial.

At 2:28 PM, Blogger John L. Welch said...

Orrin: ex parte communications with the Board are a no-no (at least in theory).


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