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On December 1, 2016, amendments to the Federal Rules of Civil Procedure (“FRCP”) and Federal Rules of Appellate Procedure (FRAP) took effect.  While at first glance, the changes may not seem dramatic, but changes such as shortening the time to respond and cutting word counts for briefs have a direct impact on our practices.  For example, this year’s changes include the following:

1. Eliminating the 3-day rule; and
2. Reducing word counts for certain appellate filings.

Under the previous 3-day rule, parties receiving a document by means other than personal delivery, which was considered immediate service, could add three days to the response time calculated from the date of service.  This included adding three days when served electronically, including service by email and the electronic case filing (ECF) notice system.  In other words, items served electronically were not treated as received immediately even though they often were received virtually instantaneously.  In the past, concerns related to reliability, transmission delay and incompatibility of systems led to the perception of a need for maintaining the 3-day rule for electronic service, but times have changed.  In addition, other rules have been changed in an attempt to simplify time computations by adopting periods that are multiples of 7 to allow for “day-of-the-week” counting.  The 3-day extension re-complicated the intended simplification and caused more dates to fall on weekends and holidays thus requiring further adjustments.

With advances in technology and skills of computer users and the desire to further simplify time computation, the 3-day rule has been eliminated for responses triggered by electronic service of a document.  This was accomplished by amending FRCP 6(d) and FRAP 26(c) to exclude electronic service from the modes of service that allow for three additional days to act or respond. It is important to note, however, that some courts have promulgated local rules that retain the 3-day extension.  For example, the Ninth Circuit will continue to provide three additional days for electronic service for deadlines based on service of another document.

The Committee Notes regarding the change to Rule 6 recognize that this amendment can effectively shorten the time to respond relative to current practice, particularly when documents are served late at night or just prior to, or during, a weekend or holiday.  Therefore, they noted that extensions may be warranted to prevent prejudice.  In practice, however, one cannot afford to take such extensions for granted, particularly if opposing counsel objects.

The Supreme Court ordered that the amendments to FRCP 6(d) and FRAP 26(c) govern in all federal civil and appellate cases, respectively, commenced after December 1, 2016 and “insofar as just and practicable, all proceedings then pending.”  But, it is not clear how courts will apply these amendments to pending cases.  For example, will amended Rule 6(d) apply to all papers served after December 1, 2016, even in cases pending prior to that date or will courts continue to apply the prior rule for service of papers in such cases?  Similar questions arise in the appellate context.  It will be critical to consult the specific rules applicable for each case to avoid missing deadlines!

In another amendment to the FRAP, word-count limits have been reduced for certain appellate filings and implemented in place of page limits for other filings.  For some time, parties did not have to comply with page limits for appellate briefs if they complied with certain word-count limits.  Page limits, however, were still imposed on other papers, such as motions and petitions.  In the most recent amendment to the FRAP, word-count limits have been instituted for, among other filings, motions, amicus briefs, and petitions for rehearing en banc.  Further, word counts for opening, response, and cross-appeal response and reply briefs have been reduced from 14,000 to 13,000 words.  For cross-appeal opening and response briefs, the word count was reduced from 16,500 to 15,300, and for reply briefs, the word count was reduced from 7000 to 6500.  You just thought the prior word counts were tight!  Now they are tighter.

These word-count changes took effect on December 1, 2016, but some circuits have opted out in favor of their own local rules.  For example, the Ninth Circuit has adopted a local rule that will maintain the current word count limits for briefs and will maintain the current page limits, rather than word counts, for motions and petitions.

In summary, while the new rules are now in effect, courts are varying in whether they are applying the new rules at all and, if so, how they are applying them to pending cases.  Therefore, it is more important than ever to compare the local rules with the federal rules to determine whether your cases are subject to these amendments.  If so, then be prepared to respond sooner and, in appellate cases, more concisely!

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas?

The most likely candidate to try to patent Christmas would be Santa Claus.  But (assuming all other issues are addressed), could Santa Claus really patent Christmas? Assuming that Santa Claus invented Christmas, then perhaps he could! U.S. patent law provides patent protection for pretty much everything. Under the patent laws of the U.S. and most foreign countries, the first person to invent something may file a patent application seeking a patent for that invention. Unlike most foreign countries, however, U.S. law provides a one-year grace period in which a patent application can be filed after certain types of public disclosures by the inventor.

So, maybe Santa Claus could file a patent application in the U.S. if he was the first to invent something that has not been publicly disclosed in the last year.  Of course, there may be no one else claiming to have invented Christmas, so it might not be much of a problem. And, because Santa has been operating in secret for hundreds of years, there cannot have been any public disclosures.

Santa might even be able to patent the method he uses to deliver gifts to every child all around the world on Christmas Eve.  His method might be treated as a business method, which could make it more difficult to patent, even though it is not really a “business.”

What other kinds of Christmas inventions could someone patent?  The United States Patent and Trademark Office lists over 980 U.S. patents with the word “Christmas” in the title.  These patents cover items like Christmas lights, decorations, Christmas tree stands and turntables, antler apparatus, Christmas tree watering devices, fire extinguishers, and many other things.  My personal favorite is the “Apparatus to Prevent Pets Climbing a Christmas Tree.”  The need for this invention is obvious if you have ever had kittens or cats around your Christmas tree.  The patent states: “as is generally well known in the prior art, pets, such as cats, like to climb up the branches of a Christmas tree. Oftentimes this will result in knocking some of the ornaments off such tree.  These ornaments may be broken…”  The invention is basically a giant circular screen that clips under the lowest branches of the tree. Based on my experience, however, this device will have precisely the opposite of its intended effect. Any cat who sees the screen will climb up or jump onto it.  And, anyway, who really wants to stop cats from climbing Christmas trees?!  It’s too much fun to watch them perched on the branches and swatting ornaments (and to see their embarrassed looks when they land clumsily on the floor)!

What about a new type of Christmas tree?  Trees (and all plants) are patentable, as long as they are new and developed by humans, not discovered in nature.  In fact, a flying reindeer would be patentable (if it was created by humans), as living organisms can be patented.

How about a new nose for Rudolph — one that allows Santa to turn it on remotely from the sleigh?  The nose could be patentable, as could the software that runs it.

New designs for Christmas stockings and ornaments?  The designs for these objects (separate from the objects themselves) are patentable as design patents.  A design patent offers less protection than a utility patent and has a shorter lifespan, but it does protect against designs that are substantially the same as the patented design.

Maybe Santa could protect signature laugh (“Ho, Ho, Ho!”) or his red suit.  The phrase could be trademarked, just as business names and logos, as long as Santa uses it in commerce and was the first to use it.  The red suit might be protectable as a trademark or possibly as trade dress, or more likely as a design patent.  Unlike a patent that expires, however, a trademark has the advantage of lasting indefinitely.

What about your favorite Christmas carol?  The traditional carols are now in the public domain and belong to everyone, but any new song (lyrics and music) is protected by copyright as soon as it is created.  Unlike a trademark, copyright protection only lasts for the life of the author plus a specific number of years.

How about Christmas cookies?  Or that special eggnog recipe? Recipes can be protected and are usually best protected as trade secrets, provided that they are not easily reverse-engineered.  (Think how long Coca-Cola has been around, and it’s still a secret.)

Of course, the most important thing about Christmas is not what can be protected under the law, but the spirit of giving and sharing the holidays bring.  So, have a wonderful holiday season and may the New Year be filled with peace and joy!

Stay tuned for Part 2 of our Holiday Horror Series on December 2nd. 

The United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C. §286.  The case before the Court is SCA Hygiene Products AB v. First Quality Baby Products LLC, 767 F.3d 1339 (Fed. Cir. 2014).

SCA owned a patent for adult incontinence products.  In 2003, SCA sent First Quality, a competitor, a cease and desist letter, accusing First Quality of infringement.  First Quality responded that it did not infringe SCA’s patent because the patent was invalid.  In 2004, SCA filed an ex parte reexamination of its patent.  The patent was confirmed in 2007.  SCA did not inform First Quality of the reexamination.  During this time, First Quality invested heavily in expanding its business.  In 2010, almost seven years after first notifying First Quality of its infringement, SCA filed an infringement suit against First Quality.  First Quality moved for summary judgment of non-infringement on the grounds that laches barred the claim.  The district court granted First Quality’s motion.

The defense of laches requires the defendant to prove an unreasonable and inexcusable delay by the plaintiff in filing suit and prejudice to the defendant.  In determining whether laches is a defense, a court must balance the equitable factors, including the length of the delay, the severity of the prejudice, the plaintiff’s excuses for the delay, and the defendant’s culpability.  A delay of more than six years establishes a presumption that the delay is unreasonable and inexcusable and caused prejudice to the defendant.  The burden the shifts to the plaintiff patent owner to produce evidence that the delay was excusable or not unreasonable, or that the defendant was not prejudiced.  If the plaintiff satisfies this burden, then the defendant must prove the elements of laches.

On appeal to the Federal Circuit, SCA argued that laches should not apply to a claim brought within the six-year limitations period for damages, and that the time that its patent was under reexamination (three years) should not count, meaning that its suit was filed only four years after SCA learned of First Quality’s infringement.

The Federal Circuit rejected SCA’s argument and affirmed the district court’s decision granting summary judgment for First Quality.  The court held that the presumption of laches was established because SCA’s delay exceeded six years.  The court further held that SCA had not met its burden to produce evidence of excusable or reasonable delay, or lack of prejudice to First Quality.  The court explained that it was not reasonable for SCA to delay almost three years after the reexamination concluded to file suit against First Quality – SCA should have sued First Quality earlier.  With respect to prejudice to First Quality, the court held that First Quality had suffered prejudice as a result of SCA’s delay because it had invested in expanding its product line during that period of time.

SCA’s petition for certiorari to the Supreme Court was granted on May 2, 2016.  SCA relied on a 2014 Supreme Court case (Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014)) that held that laches does not apply to copyright infringement cases brought within the three-year damage limitations period of the Copyright Act.  SCA argued that the rationale of Petrella should apply to patent infringement cases – laches should not apply during the six-year damage limitations period set forth in §286 of the Patent Act.  First Quality argued that the reasoning of Petrella should not apply.  First Quality contended that §286 is not a statute of limitations (which requires a plaintiff to file suit within a specific period of time after learning of its claim), but a merely a backwards limit on the recovery of damages.

On November 1, 2016, the Supreme Court held oral argument.  The justices were sympathetic to SCA’s position, asking First Quality why laches should remain a defense when the patent statutes do not specifically provide for the defense.  Based on the oral argument, those following the case predict that the Court will reverse the Federal Circuit’s decision and hold that laches does not apply to patent infringement suits brought within the six-year damage limitations period.