Implications for Litigants
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This JMBM Client Alert summarizes the most relevant changes made by popular patent litigation venues, the Federal Circuit Court of Appeals, and the PTAB as a result of recent restrictions related to COVID-19.
As many district courts around the country close doors on physical appearances, some district courts are ordering that civil hearings proceed either telephonically or by video. Although such an approach is common in many state courts, it is much more unusual for telephonic or video appearances to occur in district courts. As a result of COVID-19 and the length of time that may be required for continued social distancing, federal courts and the PTO have recognized that telephonic and video appearances will become necessary for many cases.
Many courts also have continued bench and jury trials now through at least May 1, 2020, with a date to be reset by each presiding judge and that those continuances generally do not reset any pending deadlines other than the trial dates.
For specific orders related to each tribunal please click on the links below:
- Eastern District of Texas
On March 16, 2020, Chief Judge Gilstrap issued General Order 20-03 “COURT OPERATIONS UNDER EXIGENT CIRCUMSTANCES CREATED BY THE COVID-19 PANDEMIC.” In his General Order, among other things, Judge Gilstrap ordered that
All jury trials (criminal and civil) scheduled to begin on any date from this date through May 1, 2020, are continued, to a date to be reset by each presiding judge. Those continuances do not continue any pending deadlines other than the trial dates.
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Individual judges may continue to hold bench trials, in-person hearings, sentencing proceedings, scheduling conferences and other court proceedings as they deem appropriate, on a case by case basis. Counsel may seek relief from those matters by appropriate motions.
The use of telephonic or video proceedings are welcomed where such are deemed appropriate by the presiding judge. This Order does not impact any court’s continuing discretion to consider and decide particular matters on the papers alone.
This order is intended to afford each presiding judge with maximum discretion to handle their respective dockets (aside from jury trials addressed above) as they deem best considering the totality of the circumstances. Individual corporate and law firm policies on travel and related matters may be raised by counsel via motion practice, but such shall not be binding or controlling on the Court in any respect.
In General Order 20-04 dated March 18, 2020, Judge Gilstrap instituted additional restrictions on access to the EDTX Courts:
- Persons who have traveled to any of the following countries within the preceding 14 days: People’s Republic of China, South Korea, Japan, Iran, or Western Europe.
- Persons who reside or have had close contact with someone who has traveled to one of the countries listed above within the preceding 14 days.
- Persons who a medical doctor, doctor of osteopathy, hospital or public health agency has directed to self-quarantine, during such period of self-quarantining.
- Persons who have been diagnosed with COVID-19 and who have not obtained express medical verification as now being non-communicative/noncontagious from a medical doctor, doctor of osteopathy, hospital or public health agency.
- Persons who present for entry to any such court facility and exhibit fever, cough or shortness of breath.
- Western District of Texas
On March 13, 2020, Chief Judge Garcia issued an “ORDER REGARDING COURT OPERATIONS UNDER THE EXIGENT CIRCUMSTANCES CREATED BY THE COVID-19 PANDEMIC.” Among other things, the Chief Judge ordered that
All civil and criminal bench and jury trials scheduled to begin on any date from now through May 1, 2020, are continued, to a date to be reset by each presiding judge and that [t]hose continuances do not continue any pending deadlines other than the trial dates.
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Individual judges may continue to hold in-person hearings, sentencing proceedings, and conferences, but counsel may seek relief from those matters by appropriate motions. The parties are encouraged to seek to participate in non-sentencing hearings and conferences by telephone or video. This Order does not impact any court’s consideration of particular matters on the papers alone.
On March 20, Chief Judge Garcia issued “ORDER REGARDING COURT OPERATIONS UNDER THE EXIGENT CIRCUMSTANCES CREATED BY THE COVID-I9 PANDEMIC. The Order was amended on March 24. The Amended Order states, among other things, that:
The Courts of the Western District of Texas shall be closed with the following exceptions herein described.
All settings in any civil or criminal matter currently scheduled before May 1, 2020, are cancelled, pending further order of the court, with the exception of pleas, sentencings, criminal matters before Magistrate Judges, such as initial appearances, arraignments, detention hearings, and the issuance of search warrants or other warrants, shall continue utilizing such procedures as Magistrate Judges or Presiding District Judge may direct which are consistent with this Order and applicable law, including the use of video technology.
All deadlines in a scheduling order, other than a trial date, shall remain in effect unless modified by the assigned Judge.
All judicial officers shall be mindful to limit and minimize the number of people in the courthouse, including courtrooms.
The United States Marshal Service shall direct the Court Security Officers to conduct medical screening questions as prescribed by the Centers for Disease Control. Persons who appear to have flu-like symptoms shall not be permitted in the courthouse.
On March 24, Judge Albright implemented specific procedures for hearings in the Waco division that will not require physical appearances. Hearings will continued to take place in the following manner:
All hearings for civil cases on the Waco division’s docket will continue as scheduled, but will occur telephonically. The Court will provide the dial-in information either via e-mail or within an order. Because there may be several hearings back-to-back, attorneys should wait until their case is called before speaking. Parties are encouraged to dial-in at least 10 minutes before the scheduled start time.
The district court has also put into place a process for using slides at hearings. For non-Markman hearings:
the party must email them to the Court at least 24 hours before the hearing. If both parties wish to use PowerPoint slides, the parties must email them to the Court at an agreed time at least 24 hours before the hearing. If a party fails to email slides to the Court at least 24 hours before the hearing, the Court will deem that that party has waived its ability to use slides during the hearing.
For Markman hearings, parties must email any slides they wish to use within 6 hours of receiving preliminary constructions from the Court.
- Northern District of California
On March 16, 2020, Chief Judge Phyllis J. Hamilton issued “General Order 72” titled “IN RE: Coronavirus Disease Public Health Emergency.” Among other things, Chief Judge Hamilton ordered:
No jury trial will be commenced before May 1, 2020. Any trial dates currently scheduled during that period are vacated.
All civil matters will be decided on the papers, or if the assigned judge believes a hearing is necessary, the hearing will be by telephone or videoconference. This applies to motion hearings, case management conferences, pretrial conferences, settlement conferences and Alternative Dispute Resolution (“ADR”) proceedings.
The Order indicated that parties should see the assigned judge’s scheduling notes for specific instructions on telephone/video appearances, or the ADR webpage
In General Order No. 73, titled “Temporary Restrictions on Courthouse Access due to COVID-19 Public Health Emergency; Consolidation and Relocation of All Essential Operations to the San Francisco Courthouse,” updated and amended through April 2, 2020, Chief Judge Hamilton specified, among other things:
On March 26, 2020, in order to further protect the health of parties, attorneys, court staff, and other potential visitors to the court, all essential court proceedings were consolidated and relocated to the San Francisco Courthouse at 450 Golden Gate Avenue, until April 7, 2020. This period is hereby extended until May 1, 2020, and may be extended by further order.
Only persons having official court business authorized by General Order No. 72, or by a presiding judge, may enter the San Francisco Courthouse property. (General Order No. 72 permitted only certain persons involved in specified criminal matters to enter the San Francisco Courthouse property.)
All other courthouses of the United States District Court, Northern District of California, shall be entirely closed to the general public until May 1, 2020. This period may be extended by further order, and this closure applies to the following locations:
(1) The United States Courthouse of the Ronald V. Dellums Federal Building at 1301 Clay Street, Oakland;
(2) The United States Courthouse of the Robert F. Peckham Federal Building, 280 South First Street, San Jose; and
(3) The United States Courthouse at 3140 Boeing Avenue, McKinleyville.
On March 30, 2020, Chief Judge Hamilton issued General Order No. 74, titled “Temporary Suspension of Rules Regarding Personal Service by the United States Marshals Service During COVID-19 Public Health Emergency.” Among other things, the Order specified:
any requirement that personnel in the United States Marshals Service assigned to the Northern District of California effect personal service of process under Federal Rule of Civil Procedure 4(c)(3), 28 U.S.C. § 1915(d), or 28 U.S.C. § 1916, for any cases pending in this District or any other district, is SUSPENDED until further Order of the Court;
this Order does not apply to service of process by mail, waivers of service under Federal Rule of Civil Procedure 4(d), or service by electronic means, unless otherwise ordered by the Court upon notification by the United States Marshals Service that effecting service of process by mail or electronic means as may be authorized by the California Rules of Civil Procedure—or any equivalent rule of civil procedure applicable to cases pending in any other district where United States Marshals Service personnel assigned to the Northern District of California have been ordered to effect personal service—would interfere with other critical functions they are performing in connection with responding to the COVID-19 public health emergency; and
in any civil case in which the United States Marshals Service has been ordered to serve process, the time for service under Federal Rule of Civil Procedure 4(m) is TOLLED until further Order of the Court.
On April 6, 2020, the Northern District of California issued “Notice Regarding General Orders, Court Operations, Santa Rita Jail, and Paper Filings During COVID-19 Public Health Emergency (Updated April 6, 2020). The Notice specified how parties should file papers or documents during the court closure:
The court will continue accepting electronic filings through ECF. For pro se or other documents that have traditionally been filed in paper format, please first contact the phone numbers below to learn of alternative options for filing. If needed, paper filings may be submitted by US Mail or private carrier to the San Francisco Courthouse, and a drop-box is available at the Turk St. entrance. Mail and drop box filings will be picked up every Thursday. However, please note that for health and safety reasons, submission of paper filings to the San Francisco Courthouse (through US Mail, private carriers, or in person via drop box), is strongly discouraged. Emergency filings should not be submitted to the San Francisco drop box, which will be checked only once a week.
To see Judge Judge Hamilton’s orders, click the links below:
- Order 72
- Order 73
- Order 74
- Notice Regarding General Orders, Court Operations, Santa Rita Jail, and Paper Filings During COVID-19 Public Health Emergency
- Central District of California
In “Amended General Order No. 20-02,” dated March 17, 2020, Chief Judge Virginia Phillips ordered, among other things:
- The United States Courthouses in Los Angeles, Santa Ana, and Riverside will remain open for business, subject to the following limitations.
- The Court will not call in jurors for service in jury trials until April 13, 2020 or otherwise as ordered by the Court.
- All courtroom proceedings and filing deadlines will remain in place unless otherwise ordered by the presiding Judge.
- The time period of any continuance granted by a District Judge of this Court and entered as a result of this order shall be excluded under the Speedy Trial Act.
- Individual judges may continue to hold hearings, conferences, and bench trials in the exercise of their discretion, consistent with this Order.
On March 19, 2020, Chief Judge Virginia Phillips issued “Order Of The Chief Judge 20-042.” In her Order, among other things, Judge Phillips ordered”
- All of the Central District courthouses will be closed to the public for civil matters.
- In civil cases, no hearings will go forward except for emergency time-sensitive matters, such as requests for temporary restraining orders and preliminary injunctions, as ordered by the assigned judicial officer. Any hearings on emergency civil matters will proceed telephonically only.
- Chambers staff will be directed to telework except as otherwise directed by their assigned judicial officer.
- District of Delaware
On March 17, 2020, Chief Judge Leonard Stark issued a Standing Order that prohibited certain individuals from entering any courthouse, Court location, or Court office. The excluded individuals include: (1) persons who have been advised to self-quarantine by any doctor, hospital, or health agency, (2) persons who have had close contact with someone who has been advised to self-quarantine; (3) persons who have been diagnosed with, or have had known contact with anyone who has been diagnosed with, COVID-19, and (4) persons experiencing symptoms of respiratory illness such as fever, severe cough, or shortness of breath.
On March 18, 2020, Chief Judge Leonard Stark issued another Standing Order ordering, among other things:
- The Court will remain open for official business, subject to the following limitations.
- All jury selections and jury trials scheduled to begin before April 30, 2020 are continued pending further Order of the Court.
- All deadlines set by Federal or Local Rules or Court Orders remain in effect unless modified by further Order of the Court or by Order of the assigned judicial officer.
- Individuals judges presiding over proceedings may take actions consistent with this Order.
- Any request by a party to a civil action seeking case-specific relief from any provision of this Order is to be directed to the judicial officer assigned to the matter.
- Individual judicial officers may continue to schedule and hold hearings, conferences, and bench trials in the exercise of their sound discretion, and consistent with the principals of this Order and the sound administration of justice.
- All judicial officers are encouraged to conduct proceedings by telephone or videoconferencing where practicable and as permitted by law.
Patent and Trademark Office (including Patent Trial and Appeal Board Proceedings
Order re: in-person hearings: On March 13, with regard to PTAB and TTAB oral hearings and other in-person meetings, the USPTO stated that they will be conducted remotely:
Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting.
Order Extending Deadlines For Delays Due To Outbreak: On March 31, pursuant to the Coronavirus Economic Aid, Relief, and Economic Security Act (the CARES act) the USPTO issued an order extending certain deadlines and fee payments, but only in situations where the filing or payment delay is caused by the COVID-19 outbreak. The order provides the following:
- Extended by 30 days many filing and payment deadlines related to patent prosecution and appeal that fall between March 27 through April 30 (inclusive), provided that the filing is accompanied by a “statement that the delayed filing or payment was due to the COVID-19 outbreak. . . .”
- “Due to” the outbreak was defined to include situations in which a relevant practitioner or party associated with the filing or fee was “personally affected” by the outbreak, including, without limitation, “through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”
The specific deadlines extended may be found in the order, which is here.
- For an additional set of PTAB deadlines (in both prosecution and trial proceedings before the PTAB), upon request a 30-day extension shall be granted for the listed filing deadlines if the filing has been or may be delayed due to the COVID-19 outbreak. These deadlines include:
- a request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c), 41.127(d), or 42.71(d);
- a petition to the Chief Judge under 37 C.F.R. § 41.3; or
- a patent owner preliminary response in a trial proceeding under 37 C.F.R. §§ 42.107 or 42.207, or any related responsive filings. [If an extension is granted under this provision, then the PTAB may also extend the time within which it is required to make its institution decision].
- In PTAB situations not covered specifically above:
- “a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAii at 571-272-9797 or by email at Trials@uspto.gov (for AIA trials), PTAB_Appeals_Suggestions@uspto.gov (for PTAB appeals) or InterferenceTrialSection@uspto.gov (for interferences).
Court of Appeals for the Federal Circuit
The Federal Circuit has issued several operational advisories and orders that affect litigants. The Court has made clear that all existing deadlines in cases remain in effect. All of the advisories and orders can be found here.
April Argument Calendar: The Court announced on March 12 that the April argument calendar would proceed as scheduled. Initially the Court indicated that it would conduct in-person hearings in any case in which counsel for all parties were local (March 12 public advisory), but it ultimately ordered that all April calendar cases would be heard telephonically (March 18 public advisory).
March 16 Administrative Order: Chief Judge Probst issued an administrative order restricting public access to the national courts building on March 16, which provided:
- Public access to the court building was restricted to only those counsel and parties with scheduled in-person hearings and members of media with press credentials.
- No one would be permitted to enter the building to file or deliver documents – all filings and deliveries must come through the postal service, or could be dropped in the Court’s night box.
The full text of the March 16 order can be found here.
March 20 Administrative Order: On March 20, Chief Judge Probst issued a further order regarding court operations, which supplemented the provisions of the March 16 order as follows:
- All requirements to provide paper copies of documents filed electronically are suspended. Parties are specifically directed not to provide paper copies of any filing, under Fed. Cir. R. 25(c)(1)(A)-(F) until further notice. [Note: Rule 25(c) provides for the filing or paper copies of all appellate briefs]. The Clerk’s office may direct filings of paper copies on an individual case basis and may order later filing or paper copies.
- The Clerk’s office will continue to accept documents that can only be filed in paper form and documents filed by parties who are not permitted to file electronically.
- The Order also institutes rule changes applicable to pro se litigants, including providing that they may file case initiating documents by facsimile or email.
- The Clerk’s office will be offering only limited telephone assistance, and directed inquiries about pending cases to be emailed to firstname.lastname@example.org.
The full text of the March 20 order can be found here.