Some lawyers hate motion practice. My father, for example, loved to be in trial but hated writing motions. I suspect that my mom wrote most of his motions, and maybe that’s why I enjoy writing them. It’s gotten to be more fun with AI — I feel super-powered.

In this week’s SoCal IP Institute, I want to share two aspects of my recent work. First, the law and procedure underlying two motions I recently filed, a motion to dismiss and a motion to quash. Second, I will discuss how I used AI as an aid in drafting both.

The Motion to Dismiss arose from a trademark lawsuit filed against one of our clients. We assert three grounds for dismissal: failure to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6) because it is a shotgun pleading under Rule 8, lack of personal jurisdiction under Rule 12(b)(2), and improper venue under Rule 12(b)(3). The complaint names two individual defendants and one corporate defendant, and has 73 introductory paragraphs before making out five counts. It is a shotgun pleading because the counts fail to distinguish between the defendants and because it incorporates the 73 introductory paragraphs into all five counts. There is no personal jurisdiction because the defendants have no ties to the jurisdiction and there is not even injury in the jurisdiction. Venue fails for related reasons as personal jurisdiction.

The Motion to Quash arose from a trademark opposition. We asked asked the TTAB to quash a notice for a 30(b)(6) deposition on the ground of insufficient notice and undue burden. A deposition under Federal Rule of Civil Procedure 30(b)(6) is taken on a corporate entity. To allow the corporation to choose and prepare one or more representatives for the deposition, the rules require that the notice include a list of topics. Here, the deposition noticed provided only seven business days’ notice. In some cases, one week could be enough, but here (a) the deposition was scheduled for the day before the end of the discovery period, (b) the schedule date is during a typical vacation period and I could not even contact my client about it, (c) the notice designated 26 complex topics requiring substantial preparation and document review, and (d) opposing counsel provided no advance warning or coordination of the deposition date.

The law and procedure underlying both motions is pretty cool. There is a lot of case law but few strict rules. The federal court for the motion to dismiss has some unusual local rules, and the TTAB has its unique way of managing disputes.

In both motions, I used Lexis Protege as something like a junior lawyer. Protege and I turned drafts together. One cool trick: when I had a near-final draft, I created a new workspace in Protege and had it write an opposition brief to my motion. In a separate browser tab, I used a general purpose AI for non-confidential work such as legal research, public fact research and date calculation.

Finally, if we have time, I will also share some nifty ways I’ve recently used AI. In trademark applications, I am now regularly using AI to draft the identification of goods and services. I also have successfully used AI in a trademark opposition to propose an amendment to the application in dispute. Protege did a great job drafting discovery responses, especially the objections. Nifty stuff.

Discussion leader is our partner Steve Sereboff.