IP Litigation Timing Considerations in Light of COVID-19

August 18, 2020

Gregory F. Corbett, Marie A. McKiernan

This alert is part of Wolf Greenfield's COVID-19 Resource Center. To access the full resource center, click here.

SEVENTH UPDATE: THE FOLLOWING CONTENT WAS ADDED SEPTEMBER 8, 2020

District of Delaware

On September 1, 2020, the District of Delaware issued an update pursuant to the court’s Revised Standing Order dated May 27, 2020. Pursuant to the update, civil jury selections and jury trials scheduled to begin before September 15, 2020 are continued, to be rescheduled by each case’s presiding judge. The court plans to operate under Phase I of the District’s Re-Opening Guidelines through September 14, 2020 moving onto Phase II on September 15, 2020. Under Phase II, jury trials may be conducted subject to the discretion of the presiding judge in each case. However, the number of jury trials will be limited, and criminal trials will be given priority over civil trials. Entry into Phase II as planned by the District of Delaware is subject to the public health considerations, including the COVID-19 case counts in Delaware, as the date approaches.

Northern District of Illinois

On September 4, 2020, the United States District Court for the Northern District of Illinois issued its Sixth Amended General Order 20-0012 regarding the Coronavirus COVID-19 Public Emergency. Like prior orders, this order did not extend any deadlines in civil cases. The order suspends Local Rule 5.3(b), prohibiting noticing motions for in-person presentment. Public gatherings are suspended at the Everett McKinley Dirksen U.S. Courthouse in Chicago and the Stanley J. Roszkowski U.S. Courthouse in Rockford. However, the chief judges of each courthouse can authorize public gatherings.

SIXTH UPDATE: THE FOLLOWING CONTENT WAS ADDED AUGUST 18, 2020

ITC

On July 20, 2020, the ITC announced that it would be conducting virtual Section 337 hearings and investigation conferences involving confidential business information (“CBI”) via WebEx Meeting. The Administrative Law Judges (“ALJs”) will be providing instructions for these remote hearings via WebEx. The Commission noted that while WebEx is phased in, ALJs would continue to use other video teleconferencing options for remote hearings and investigation conferences not involving CBI. 

Northern District of California

On July 23, 2020, the United States District Court for the Northern District of California issued General Order No. 72-5, In Re: Coronavirus Disease Public Health Emergency, superseding General Order 72-4. Like the prior order, General Order 72-5 provides that any civil jury trials scheduled to commence before October 1, 2020 will be postponed or vacated. 

District of Delaware

On July 16, 2020, the United States District Court for the District of Delaware issued In Re: Court Operations Under the Exigent Circumstances Created by COVID-19. The order continued all civil jury selections and jury trials scheduled to begin before August 31, 2020. 

Northern District of Illinois

On July 10, 2020, the United States District Court for the Northern District of Illinois issued its Fifth Amended General Order, No. 20-0012, regarding the Coronavirus COVID-19 Public Emergency. Like the Fourth Amended General Order, this order did not extend any deadlines in civil cases, continued to permit remote civil case hearings, bench trials, and settlement conferences, and sustained the August 3, 2020 date for the prohibition of jury trials. 

District of Massachusetts

On July 15, 2020, the United States District Court for the District of Massachusetts issued General Order 20-31, In Re: Coronavirus Public Emergency, Supplemental Order Concerning Certain Non-Jury Proceedings. Pursuant to the order, the court concluded that “a limited number of in-person, non-jury proceedings” could take place in-person subject to health and safety precautions. The limited in-person hearings would be restricted to those proceedings where “(1) further delay may harm the interests of justice and (2) the law does not permit video proceedings or the requisite consents cannot be obtained.” The district designated certain courtrooms where litigants could adhere to social distancing. In addition, those present at the proceedings must conduct a health self-assessment and wear masks. However, testifying witnesses will be permitted to remove masks while testifying behind a plexiglass barrier. 

Western District of Texas 

On August 6, 2020, the Western District issued the Seventh Supplemental Order Regarding Court Operations Under the Exigent Circumstances Created by the COIVD-19 Pandemic. Pursuant to the order, all civil bench and jury trials scheduled to begin on or before September 30, 2020 are continued; however, all other case deadlines remain unchanged without leave of court. 

FIFTH UPDATE: THE FOLLOWING CONTENT WAS ADDED JULY 9, 2020

ITC

Taking guidance from the CDC, Office of Management and Budget, and Office of Personal Management, the ITC has developed and begun to implement a “Three-Phase Plan to Re-Establish On-Site Business Operations at the USTIC Building.” Currently, the Chairman has implemented Phase One of the three-stage plan. During this phase, and Phase Two, the USITC building remains closed to the public and in-person Commission activities remain suspended. It is not until Phase Three begins that the USITC building will re-open to the public and all-in person activities will resume, subject to new visitor access procedures including COVID-19 screening. 

While in-person hearings were previously postponed until July 10, 2020, they are now postponed until further notice or until the ITC enters Phase Three of its staged nreopening plan. Given Section 337 Evidentiary Hearings will be conducted remotely for the indefinite future, the Commission provided an update regarding the measures it plans to take to ensure the protection of Confidential Business Information (“CBI”) during such remote proceedings. In an updated release from the ITC on June 26, 2020, the Commission reported that it established a “Virtual Hearing Working Group” tasked with finding a virtual solution to Section 337 hearings involving CBI. The working group conducted market research, researched and reviewed protocols, and sought feedback from practitioners and judges regarding various video-teleconferencing software. Using this information, the working group initiated the development of internal guidelines and considerations for rules of procedures related to virtual hearings and developed technical requirements for potential platforms, considering the requisite security requirements. As a result, the Commission is in the process of securing a FedRAMP-certified solution to conduct virtual Section 337 Evidentiary Hearings and anticipates the availability of the solution by the end of July. 

PTAB

Earlier this month, the USPTO launched its COVID-19 Response Resource Center. The site improves access to USPTO COVID-19 related initiatives and programs, including the new COVID-19 Prioritized Examination Pilot Program announced by the USPTO on June 15th. Under the new program, the USPTO will accept petitions to expedite the initial examination of applications for trademarks used to identify qualifying COVID-19 medical products and services and waive associated fees for such petitions. Qualifying COVID-19 medical products and services include those subject to U.S. FDA approval for use in the prevention and/or treatment of COVID-19. 

In addition to the announcement of the resource center and the prioritized examination program, the USPTO also announced that it is extending the two-month time period for restoring the right of priority to or benefit of a foreign or provisional application for any non-provisional application due to be filed on or after March 27, 2020, but on or before July 30, 2020. 

Northern District of California

On June 24, 2020, the Northern District of California issued General Order 72-4, In Re: Coronavirus Disease Public Health Emergency. This order reiterated that civil jury trials will not be conducted through September 30, 2020 and confirmed that individual judges could offer to hold bench trials by videoconference in lieu of postponement. Public access to all courthouses within the district remains temporarily restricted. 

Despite remaining closed to the public, the District issued Safety Protocols on June 1, 2020 to be implemented across all courthouses, which will presumably still be in place when courthouses across the District eventually open. These protocols include pre-screening at home and in-person screening for COVID-19 symptoms by building security before being granted access to the courthouses. 

District of Delaware

On June 15, 2020, the District of Delaware released its “Re-Opening Guidelines” and the court entered into Phase One of the plan just two days later. Despite this move, the Court additionally extended its prior order delaying jury selection and jury trials from June 30, 2020 to July 31, 2020. Any scheduled jury selection or trials set on or before July 31st will be rescheduled after that date by the presiding judge in each case. In addition, during Phase I, video and tele-conferencing it to be utilized “to the greatest extent possible” to minimize on-site courtroom proceedings. 

District of Massachusetts

While jury trials will not proceed before September 8, 2020, the District of Massachusetts has put a plan in place regarding screening potential jurors in the wake of COVID-19. On July 6, 2020, the First Circuit Judicial Council approved the District’s Emergency Amendments to the Jury Plan, which became effective on June 22, 2020. The plan details additional screening questions that may be asked of potential jurors “in order to protect the public health and safety.” The amendments permit the Clerk of Court, in conjunction with the assigned jury liaison, to excuse certain individuals, including those who have one or more symptoms of COVID-19 or those who may be at higher risk for severe illness from COVID-19, as defined by the Center for Disease Control. In addition to these questions, the Clerk may also pose follow-up or monitoring questions prior to jury empanelment. The Amendments provide for reporting of excuses on this basis to the Chief Judge, who will be tasks with assessing if the additional questions significantly impact the Court’s ability to empanel a representative jury. 

Western District of Texas 

On June 18, 2020, the Western District extended its prior order and continued all civil bench and jury trials through July 31, 2020. However, recognizing the large geographic region that makes up the Western District and the varying state of the pandemic within each division, the Court’s order permits courts “to conduct jury trials within their respective division subject to a determination, based upon the facts and circumstances unique to the division, that conducting jury trials would not compromise the health and safe of Court personnel, litigants, counsel, law enforcement, witnesses, and jurors.” 

FOURTH UPDATE: THE FOLLOWING CONTENT WAS ADDED MAY 29, 2020

PTAB

On May 27th, the USPTO extended the time to file certain patent-related documents and to pay certain required fees from March 27, 2020 to July 1, 2020. However, it is important to note that this does not apply to all deadlines and any delay justifying extension must be due to the ongoing pandemic. In addition, the permissible extensions vary based on the size of the entity seeking extension. For small and micro entities, filings that would have been deemed timely filed if filed by June 1, 2020, will now be deemed timely if filed by July 1, 2020. However, beginning June 1, 2020, large entities should petition for extension on a case-by-case basis with an accompanied requisite fee. For all entities, the fee for a petition to revive will continue to be waived if accompanied by a statement that the delay was due to COVID-19 as set forth in the April 28, 2020 notice.

District of Delaware

On May 27th, the District of Delaware extended its prior order delaying jury selection and jury trials from May 31, 2020 to June 30, 2020. Any scheduled jury selection or trials set on or before June 30th will be rescheduled after that date by the presiding judge in each case. As under prior orders of the Court, judges are encouraged to conduct telephone and video conferences to the extent practicable. 

District of Massachusetts

On May 27th, the District of Massachusetts extended its prior order delaying jury trials from May 29, 2020 to September 8, 2020. Pursuant to General Order 20-21, any scheduled jury trials scheduled to begin on or before September 8, 2020 are continued pending further order from the Court. The Court noted that this date is subject to change and potential future continues “as necessary and appropriate.” 

Northern District of California

On May 21st, the United States District Court for the Northern District of California issued General Order No. 72-3. Pursuant to the order, no new, civil jury trials will be conducted within the district through September 30, 2020. All civil jury trials scheduled on or before that date will be postponed or vacated. Video bench trials, however, may proceed subject to the discretion of the presiding judge. The Court advised that through September 30, 2020, all civil matters will be decided on the papers unless a judge deems a telephone or videoconference necessary. 

Northern District of Illinois

On May 29th, the United States District Court for the Northern District of Illinois’ Fourth Amended General Order, No. 20-00112, will go into effect. This order does not impose any further extension of deadlines in civil cases. Judges in the Northern District may now conduct civil case hearings, bench trials and settlement conferences remotely. While this signals a desire to move cases forward, civil jury trials set to begin on or before August 3, 2020 will not be conducted, but will be reset by presiding judges for dates thereafter. 

THIRD UPDATE: THE FOLLOWING CONTENT WAS ADDED MAY 18, 2020

CAFC

The Federal Circuit has announced that it will hold all June oral argument telephonically. As with prior telephonic arguments, the court will provide live audio access to the arguments.

The Court has also announced that all in-person arguments will be suspended until further notice. Pursuant to the notice, “[c]ases set for argument after the June 2020 session will be argued telephonically unless counsel is notified by separate order that oral argument is unnecessary.”

International Trade Commission

In light of the ongoing health crisis related to COVID-19, the ITC has extended its COVID-19 Action Plan up and until July 10, 2020. In-person hearings, including Section 337 hearings, are postponed until after this date.

District of Massachusetts

At the end of March, as reported previously, the District of Massachusetts had continued all mediations (or jury trials) scheduled to begin on or before May 29th pending further order of the Court. Pursuant to a recent order, General Order 20-19, Magistrate and Senior Judges may now schedule and conduct mediations in civil proceedings by video or telephone conference.

Western District of Texas

Given rising numbers of cases of COVID-19 in the Western District of Texas, the court has now continued all civil bench and jury trials set to begin on or before June 30, 2020 until further order by presiding judges.

SECOND UPDATE: THE FOLLOWING CONTENT WAS ADDED MAY 6, 2020

CAFC

The Federal Circuit held its second month of oral arguments by telephone yesterday. The recordings of the oral arguments are now available online.

ITC

As the ITC continues to press its pending investigations forward, one point of distinction from district court practice that may be emerging is the review of source code. While district courts have granted extensions in discovery due to stay-at-home orders and travel restrictions prohibiting in-person review of source code, the ITC, in at least one instance, has granted a motion to amend and supplement a protective order to permit the remote review of source code. In the Matter of Certain Wearable Monitoring Devices, Systems, and Components Thereof, Inv. No. 337-TA-1190. Special considerations regarding the security of client’s data and the monitoring of source code access and review while remote will need to be assessed as these investigations proceed.

Northern District of Illinois


The Northern District of Illinois issued a Third Amended General Order (20-0012) further extending the deadline in all civil cases by an additional 28 days. Pursuant to the order all civil case hearings, bench trials, and settlement conferences scheduled on or before May 29, 2020 were stricken and will be rescheduled by presiding judges on or after June 1, 2020. While the Order provides that parties may request telephonic hearings or settlement conferences before that date, it cautions that requests must specify the urgency necessitating such remote proceedings. The Order additionally provides that civil jury trials scheduled for on or before June 26, 2020 were stricken to be rescheduled by presiding judges on or after June 29, 2020. In addition to these extended deadlines, parties to pending civil litigation where no docket entries or orders have entered by the assigned judge since March 16, 2020 were ordered to file joint written status reports by May 18, 2020.

Northern District of California

In the Northern District of California, General Order No. 72-2 went into effect on May 1, 2020. The order vacated or postponed any civil jury trial dates before June 1, 2020. In addition, the Order provides that all civil matters, including motion hearings, case management conferences, pretrial conferences, settlement conferences and ADR proceedings, will be either decided on the papers or, if the presiding judge deems necessary, conducted via telephone or videoconference. The order also clarifies that the courthouses and law libraries in the Northern District are closed for public events, tours, and visits until further notice.

Western District of Texas


The Western District of Texas has issued a Supplemental Order impacting the dates for civil proceedings. While prior orders extended jury selection and trials to May 31, 2020, the latest supplemental Order has continued any civil bench and jury trials scheduled to begin before or on May 31, 2020 to a date to be reset by the presiding judge. However, the order cautions that this does not impact other pending deadlines in the cases.

UPDATE: THE FOLLOWING CONTENT WAS ADDED APRIL 23, 2020

EXTENSION OF LIMITED DEADLINES

ITC

The International Trade Commission has modified its postponement of hearings under Section 337 until June 10, 2020. The ITC has also decided to close its building to the public until further notice.

District Courts

The District Courts for the District of Delaware, Eastern District of Texas, and Western District of Texas have extended their prior orders delaying jury selection and jury trials from May 1, 2020 until May 31, 2020.

USE OF ELECTRONIC OR TELEPHONIC APPEARANCES

The Federal Circuit

The Federal Circuit has announced that its May 2020 hearings will be conducted telephonically. As with the April 2020 arguments, live audio will be available each day of arguments and recordings of the arguments will be available on the Court’s website at the end of each day.

Northern District of California

To ensure public access to court proceedings, the District Court for the Northern District of California has published instructions for members of the press and public to hear telephonic hearings or observe video-hearings. The Court will provide log-in criteria for specific hearings through PACER, on the individual judges’ calendars, and via email at media@cand.uscourts.gov. However, the Court has cautioned that recordings, photographing, including screenshots, or rebroadcasting of such hearings of any kind are strictly prohibited.

THE FOLLOWING CONTENT WAS ADDED APRIL 13, 2020

The current public health guidelines to prevent the transmission of COVID-19 have impacted all facets of daily life. IP litigation is no exception. Parties to pending or future IP litigation should consider the effects of COVID-19 related restrictions and measures when developing a strategy for moving cases forward. 

RESTRICTED ACCESS TO COURT AND GOVERNMENT BUILDINGS  

In the early stages of the COVID-19 battle, many courthouses and government buildings throughout the United States sought to keep these institutions physically accessible. Early orders sought to reduce exposure by limiting access to those individuals with the highest probability of being carriers of COVID-19. For example, in mid-March, the District Courts of the Eastern District of Texas and Delaware sought to prohibit those who had travelled overseas in countries hard-hit by COVID-19 or those exposed to anyone who had, among others, from entering the courthouses.

However, as the pandemic has continued and courts have learned that COVID-19 positive attorneys have unknowingly visited these institutions, impacted courthouses and other government buildings have closed entirely out of an abundance of caution. For example, the Northern District of California has closed all courthouses except for the courthouse located in San Francisco until May 1, 2020. The United States International Trade Commission building in Washington, DC is closed to the public through at least April 24, 2020. Similarly, the PTAB has prohibited all in-person meetings indefinitely. The Federal Circuit has likewise prohibited physical attendance at April 2020 arguments. 

Despite the physical closings and restrictions of these forums, cases are continuing to progress and some measures below impact procedural schedules and case strategy. 

EXTENSION OF LIMITED DEADLINES

As many courthouses and government buildings restrict access as a preventative measure, one common trend across all forums has been the extension of certain deadlines. 

Federal District Courts

Many federal District Courts, including those in the Eastern District of Texas, District of Delaware, and the Northern District of California have continued or vacated jury selection and jury trials scheduled on or before April 30, 2020 or May 1, 2020 and will be rescheduled for later dates by presiding judges. While these general and standing orders expressly apply extensions to jury selection and jury trials, judges within these districts may exercise their discretion in extending other case-specific deadlines as well. Judges within the Eastern District of Texas have been afforded the maximum latitude to extend other dates for in-person hearings, scheduling conferences, and other proceedings as they see fit. Similarly, while all deadlines pursuant to the Federal Rules of Civil Procedure and the District of Delaware’s Local Rules are in effect, judges may exercise their discretion to change deadlines and continue any hearings, conferences, or bench trials.

In the District of Massachusetts, in addition to continuing all jury trials scheduled to begin on or before May 29, 2020, all mediations are also continued pending further order of the Court. The District Court for the Northern District of Illinois has gone slightly further. The Court has struck all civil case hearings, bench trials, and settlement conferences scheduled on or before May 1, 2020 and all civil jury trials on or before May 29, 2020 to be set at later dates. In addition, all deadlines in civil cases in this district were initially extended twenty-one days and have subsequently been extended an additional twenty-eight days on top of that (for a total of forty-nine days of extensions). As district court practices vary by jurisdiction, it is important for litigants to periodically check the district court’s announcements to ensure the most up-to-date information impacting their cases. 

While the District Courts above have imposed some limited extensions, there is a reluctance to project additional extensions in light of the dynamic nature of the COVID-19 response and precautions. For example, a recent request to continue a patent infringement trial scheduled to begin on June 1, 2020 in the Western District of Texas was denied as premature. 

Thus far, the continuations and extensions in the Federal District Courts have been modest. As the fight against COVID-19 continues, these delays will need to be reassessed and revisited, along with their impact on litigation strategy. Managing both fact and expert discovery will be especially important in assessing the need for additional extensions in district court. Access to electronic and physical discovery in the time of temporary business shutdowns have downstream case implications for fact and expert discovery. These implications, in addition to strategic considerations surrounding remote depositions, could impact litigants’ strategies surrounding requests for extensions in district court. 

International Trade Commission

The International Trade Commission has ordered that all Administrative Law Judges postpone hearings under Section 337 until after May 12, 2020. This date could be subject to further extension and will be updated by the commission by April 24, 2020.

A review of recent ITC filings on EDIS suggests that the ITC’s Administrative Law Judges are exercising their discretion to extend certain dates prior to the pre-hearing conference upon request of the parties as well. In addition, some procedural schedules that have recently been issued have been quite a bit longer than the typical 16-month schedule from the date of institution of an investigation. For example, the schedules recently approved in Investigation Nos. 337-TA-1192 and 337-TA-1193 were set with 19-month Target Dates. The longer schedules are due to the result of complications in discovery due to domestic and international stay-at-home restrictions, and the inability to do things like conduct international discovery or sensitive source-code review.

As many litigants seek the ITC as a forum due to the speed of its proceedings, an arising concern is whether the COVID-19 precautions could temporarily minimize this advantage of the ITC for Complainants.

PTAB

Under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), signed into effect on March 27, 2020, the Director of the United States Patent and Trademark Office (USPTO) has been granted broad temporary authority to provide relief at the USPTO. The Director exercised such authority by granting some limited extensions for certain patent filings.

Upon request, a 30-day extension for limited PTAB filings due on or between March 27, 2020 and April 30, 32020 due to the COVID-19 outbreak may be granted. These limited filings include a request for rehearing of a PTAB decision under 37 CFR §§ 41.125(c), 41.127(d) or 42.71 (d); a petition to the Chief Judge under 37 CFR § 41.3; a patent owner preliminary response in a trial proceeding under 37 CFR §§ 2.107 or 42.207 or any related responsive filing, and responses related to the patent owner’s preliminary response under CFR §§ 314(b) or 324(c).

However, the Director has chosen not to extend this grace period to the one-year time bar to file for inter partes review, along with other statutory deadlines, at this time. This is an important consideration for current or would-be district court litigants for the coordination of district court and post-grant litigation strategy. 

USE OF ELECTRONIC OR TELEPHONIC APPEARANCES

Notwithstanding the aforementioned extensions, litigation and contested matters will continue to move forward through the use of remote telephonic and video conferencing. 

The Federal Circuit

The Federal Circuit will continue with its scheduled oral arguments this month. While some matters have been removed to be decided on the papers, the remaining cases will be argued telephonically. While there are advantages and disadvantages to arguing in person versus telephonically, the Court has cautioned that travel restrictions due to COVID-19 will not suffice as a basis for rescheduling the argument given the availability of telephonic oral argument. The Court will make live audio available for the April 2020 telephonic argument session and recorded arguments will be posted at the conclusion of arguments each day.

Federal District Courts

Inherent in the discretion afforded to district court judges to extend deadlines discussed above, is the discretion to hold conferences and proceedings telephonically or through video means. In the District of Delaware and District of Massachusetts, judges have been encouraged to conduct proceedings via phone or videoconferencing where practicable. While the Northern District of California has ordered that all civil matters be decided on the papers, it permits its judges to conduct hearings, case management conferences, pretrial conferences, settlement conferences, and ADR proceedings via phone or video to the extent he or she deems such a proceeding warranted. In the Western District of Texas, Judge Albright has cautioned that in patent matters, he will consider postponing Markman hearings only if alternative arrangements, such as videoconferencing are not practical. Litigants should consider both the subject matter being presented, the available presentation mediums, and the experience of the presiding judge when strategizing whether and how to proceed with case-dispositive hearings, such as Markman proceedings, remotely.  

International Trade Commission

ITC employees have been teleworking since March 17, 2020. Beyond the suspension of imminent hearings and the scheduled extensions discussed above due to issues with conducting certain types of discovery, most investigations are still moving forward. For would-be complainants, it is important to note that Complaints are not officially accepted upon submission in EDIS despite the ITC’s temporary waiver of paper filings at this time. Rather, the ITC urges complainants to submit complaints as early as possible to permit ITC staff review of the complaints for any procedural deficiencies. Moreover, those contemplating filing an action at the ITC should be sure to consider all discovery-related complications that might arise during this period of domestic and international isolation, as it could impact the schedule and speed of this otherwise expeditious forum. 

PTAB

Similarly, contested matters at the PTAB are moving forward subject to minimal delays that could be imposed after request by the parties as detailed above. As of March 13, 2020, all interviews, and in-person meetings at the PTAB have been conducted by video or telephone. Again, COVID-19 related complications in securing discovery, including the likely need for video deposition of expert witnesses and challenges in securing stamped copies of references from reference institutions, should be considered when assessing action at the PTAB. 

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