“Many courts across the country are encouraging hearings and arguments through video or teleconference. As the situation is dynamic and subject to change at any time, parties should be prepared to argue their cases remotely, no matter which court their case is before.”
In the past week, the COVID-19 pandemic has led courts across the country to close buildings, postpone hearings, adjust filing rules, and revamp their typical approach to pending cases. These changes have created new uncertainties for litigants and their counsel in cases requiring emergency relief, but our initial survey of public statements and emerging practices from leading courts around the country provide some reassurance that courts are mostly continuing to function normally, with changes to filing procedures and arguments being heard by phone.
Emerging Practices in the Courts
The Southern District of New York (SDNY), whose practices often serve as guidance for other federal courts, updated its COVID-19 protocols on March 20. The court clarified that, for existing cases, emergency applications should still be filed electronically, but filing attorneys should take the extra step of reaching out to chambers (by phone or other means provided in the judge’s individual rules of practice) to alert the judge to the filing. Fortunately, for most courts, e-filing is already encouraged, so case initiation and the filing of motions remains relatively unchanged, except where deadlines have been extended or statutes of limitations have been tolled.
The New York State Court system has gone much further, with the Governor of New York tolling all time limits (including civil statutes of limitations and motion deadlines), and the court issuing an Administrative Order on Sunday, March 22, that effectively prohibits all non-essential filings (both paper and electronic) in all cases. The Order defines essential proceedings very narrowly—for civil cases, it includes emergency applications relating to COVID-19; Mental Hygiene Law applications; Election Law applications; temporary orders of protection; and extreme risk protection orders. There is a catch-all exception for other matters the court deems essential, but the upshot of this order appears to be that the New York State Courts are largely closed for most commercial cases, except for emergency applications relating to COVID-19.
Requests for Emergency or Provisional Relief. For emergency applications in new cases, the SDNY clerk has placed drop boxes in courthouse lobbies that are to be used for hard copies of the application and supporting documents. The application must be time-stamped, sealed in an envelope addressed to the Clerk of the Court, and include relevant contact information. Once the application is physically placed in the drop box, the attorney must call the Clerk’s Office to alert the clerk to the filing, and the matter will be referred to the “Part I” judge, one of the district judges who is assigned to hear applications in cases that have not been officially assigned a judge to hear the case.
In-person court appearances are being strictly limited to emergency matters, with limited attendance, although it seems likely that telephonic systems will also be used. Many courts across the country are encouraging hearings and arguments through video or teleconference. As the situation is dynamic and subject to change at any time, parties should be prepared to argue their cases remotely, no matter which court their case is before.
Other courts, including the New York State courts, the Northern District of California and the Delaware Court of Chancery, are conducting all hearings, and even trials in some cases, via teleconferencing or videoconferencing. These courts have all indicated that they remain open for business, including for emergency applications, although procedures are likely to vary, and counsel should anticipate having to conduct arguments, examine witnesses, or otherwise present evidence remotely. In most cases, in-person appearances can be requested if it is “truly essential” or there is an “exigent need,” although there is no guidance yet explaining what qualifies as “truly essential” or “exigent.” As courts learn from their own experiences (and those of litigants), we expect changes may be made to these general protocols.
For cases that have already been assigned to a judge, it is important for counsel to regularly check their judge’s individual rules of practice and stay in close contact with chambers in situations involving emergency relief. Some judges have adopted their own specific (and often stricter) guidelines. For example, many judges now require all parties intending to file applications for temporary restraining orders (TROs) or other emergency relief to email all of their papers to the court as text-searchable PDFs, with the word “URGENT” in the subject line, and provide the court with all relevant contact information. Some judges also strictly prohibit hand-delivery of any documents without advance permission. Other judges, however, may still be conducting business as usual and requiring paper copies via hand-delivery or mail.
When seeking provisional relief, counsel should be judicious and consider whether the relief sought is appropriate given the extraordinary circumstances presented by COVID-19. In a recent trademark infringement matter in Illinois federal district court, the plaintiff sought a TRO and, after the judge postponed the TRO hearing, filed a motion for reconsideration regarding its request for an emergency hearing. The judge issued a notably pointed order denying the reconsideration motion.
The court, operating with limited staff, observed that the plaintiff, a company that creates “life-like portrayals” of subjects such as unicorns and elves, did not demonstrate that it would suffer irreparable injury from waiting a few weeks for a hearing. The court also explained that even holding a telephonic hearing would not be appropriate under the current circumstances, as it would “take time and consume valuable court resources, especially insofar as it would “require the attention of innocent third parties” such as financial institutions and domain name registries. The court emphasized, “If there’s ever a time when emergency motions should be limited to genuine emergencies, now’s the time.” While it is not yet clear whether this approach will be widely adopted, litigants would be well advised to consider carefully how they present applications for emergency or provisional relief, including whether a hearing on their application will affect third parties facing pressing issues relating to COVID-19.
Extensions of Scheduling Orders and Discovery Considerations. Even for cases that are farther along and are not seeking provisional remedies, the response to COVID-19 will likely lengthen the pre-trial schedule in many cases. For example, New York Chief Administrative Judge Marks recently issued an order permitting judges to impose discovery postponements as needed. The order requires parties to use best efforts to postpone proceedings by agreement for no more than 90 days and notes that litigants will not be penalized if discovery compliance is delayed for reasons related to COVID-19.
Of course, discovery is likely to proceed in many cases, and counsel are already working out procedures for telephonic depositions. Most courts have not provided particularized guidance about depositions in particular, but Federal Rule of Civil Procedure 30(b)(4) already allows depositions to take place via telephone or other remote means if the parties stipulate or the court so orders. We would expect such depositions to rapidly become the norm for federal cases.
In a further acknowledgement of the need to keep legal processes moving even in this time of social distancing, New York State has issued Executive Order 202.7 allowing notaries to administer an oath or acknowledge a signature by videoconference. This change affects documents such as affidavits, and other states may follow suit in order to eliminate the regular, in-person notarization practice in the upcoming weeks. Of course, for documents filed in federal court and with the United States Patent and Trademark Office (USPTO), the declaration provisions outlined in 28 U.S.C. § 1746 do not require notarization and are a best practice in almost all cases.
Appellate Courts and the U.S. Supreme Court
Appellate courts are also making adjustments to reduce the spread of COVID-19, as well as comply with any applicable federal, state, or local mandates. The Second Circuit announced that it will hear all oral arguments using a teleconference platform “until the COVID-19 crisis passes” and plans to livestream all arguments. The Third Circuit is planning to conduct oral arguments as it normally would, although parties may file a motion requesting to appear by teleconference. The Ninth Circuit has decided to evaluate cases scheduled for argument in March, April, and May 2020 “one at a time,” rather than through a broad order. In general, we expect courts to take a conservative approach to scheduling oral argument—likely doing so only in cases where it appears truly necessary.
The Federal Circuit has removed some cases from the oral argument calendar and will instead decide those cases solely on the briefs. For cases that remain on the calendar for April 2020, all arguments will be conducted by teleconference. The Federal Circuit’s existing emergency filings notification procedure remains in effect, as yet without modifications.
The Supreme Court of the United States is also taking protective measures in light of COVID-19. The Court recently announced that it was postponing all oral arguments scheduled for late March and early April (including the Google v. Oracle copyright case and the PTO v. Booking.com trademark case), and the Court “will examine the options for rescheduling those cases in due course in light of the developing circumstances.” In a later order, the Court extended the deadline to file any petition for a writ of certiorari to 150 days and proclaimed that motions for extensions of time will be liberally granted if the delay is related to “difficulties relating to COVID-19” and if the length of the extension requested is “reasonable.”
Changes to USPTO, PTAB, and TTAB Practices
The USPTO has also implemented a number of measures in the wake of COVID-19 concerns. The USPTO has noted repeatedly that many of the deadlines it imposes are set in statute and cannot be changed by the agency, but it has nonetheless made efforts to aid those affected by this situation.
On March 16, the USPTO released a notice explaining the process for waiving petition fees in instances where patent applicants or owners are unable to timely reply to office communications, resulting in the application being abandoned or the reexamination prosecution terminated or limited. The notice similarly discusses waiving petition fees for trademark applicants and registrants seeking to revive abandoned applications or reinstate canceled or expired registrations resulting from a missed deadline due to COVID-19.
Importantly, when seeking a waiver, affected trademark and patent practitioners must provide a statement showing cause for the delay. In the trademark context, a petitioner must include:
(1) the appropriate Trademark Electronic Application System (TEAS) form for abandoned applications or canceled/expired registrations, and
(2) a statement of how failure to respond to the office communication in question was due to the effects of the COVID-19 outbreak.
In the patent context, a petitioner must include:
(1) a copy of the official March 16 USPTO notice,
(2) the reply to the outstanding communication from the USPTO, and
(3) a statement that the filing delay occurred because “the practitioner, applicant, or at least one investor was personally affected” by COVID-19.
For both trademarks and patents, the affected party must still submit the petition within a specified timeline: within two months of the issuance date of the relevant notice or, if notice was never received, within six months of the abandonment, termination, cancellation, or expiration date.
On March 19, the USPTO further waived the ordinary requirement of an original handwritten signature for certain correspondence (e.g., registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, and disciplinary proceedings). The requirement is also waived for particular credit card payments, such as those where the payment is not being made via the Office’s electronic filing systems. According to the announcement, copies of handwritten signatures will be accepted until further notice.
Similar to courts and other tribunals around the country, all Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) meetings, including oral hearings and examining attorney interviews, are being conducted via video or teleconference. PTAB and TTAB proceedings seem to otherwise be continuing as usual. Trademark and patent parties can expect that the USPTO will likely continue to take action in this evolving area.
Best Practices for Counsel and Litigants
The situation with COVID-19 is evolving rapidly, and the rules and guidance issued by courts and agencies continue to change on an almost-daily basis. There are a few points to keep in mind if you are seeking emergency relief from the courts or have to proceed before a court or PTAB/TTAB panel in the weeks ahead:
- Be prepared to participate in hearings, trials, and interviews electronically. Test your technology and capacity early, and implement a back-up method (like a phone line instead of an Internet connection) in the event the initial technology option fails.
- Consider how best to streamline oral argument—for example, the Second Circuit has adopted a procedure for its telephonic oral arguments that permits the advocate a few minutes to speak uninterrupted, and then each judge on the panel is given an allotted time in which to ask questions. Even when you are before a single judge, it may be valuable to set up time for an affirmative presentation followed by questions to ensure that the transcript of proceedings is clear while everyone is participating by phone.
- Establish “sidebar” mechanisms to converse with clients, and even adversaries, during proceedings outside of the teleconference or videoconference line with the judge. If the judge asks a question and the answer requires that you consult with your client or opposing counsel before responding, you should have a mechanism to do so ready.
- If you have an assigned judge, continually check their individual rules and practices, as well as the court’s emergency rules and practices, before filing. When in doubt, reach out to chambers to ensure you have clarified the rules—and to give them advance notice, if possible, that an emergency application is being prepared.
- If hard copies do need to be submitted to the court and/or exchanged between parties, it is strongly recommended that counsel avoid the use of plastic covers or bindings in favor of paper covers. According to guidance from the National Institutes of Health, the novel coronavirus survives on paper for only a matter of hours but can survive on plastic for several days.
- For trademark or patent practitioners, consult with the USPTO’s webpage for any changes to current regulations. Review all USPTO notices in detail to ensure you include all necessary information in your filings.
- Recognize that you (and your client) will need to be flexible and understand that the courts and administrative bodies have been forced to quickly adapt to new challenges. Some judges may request unfamiliar conferencing styles, grant unusually long extensions, or even indefinitely postpone seemingly important court dates given the current circumstances.