401.03    Expert Disclosures

37 CFR § 2.120(a)(2)  ... Disclosure of expert testimony must occur in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2), unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board may issue an order regarding expert discovery and /or set a deadline for any other party to disclose plans to use a rebuttal expert…

Fed. R. Civ. P. 26(a)(2) Disclosure of Expert Testimony.

    • (A) In General. In addition to the disclosures required by Rule 26(a)(1), a party must disclose to the other parties the identity of any witness it may use at trial to present evidence under Federal Rule of Evidence 702, 703, or 705.
    • (B) Witnesses Who Must Provide a Written Report. Unless otherwise stipulated or ordered by the court, this disclosure must be accompanied by a written report — prepared and signed by the witness — if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony. The report must contain:
      • (i) a complete statement of all opinions the witness will express and the basis and reasons for them;
      • (ii) the facts or data considered by the witness in forming them;
      • (iii) any exhibits that will be used to summarize or support them;
      • (iv) the witness’s qualifications, including a list of all publications authored in the previous 10 years;
      • (v) a list of all other cases in which, during the previous 4 years, the witness testified as an expert at trial or by deposition; and
      • (vi) a statement of the compensation to be paid for the study and testimony in the case.
    • (C) Witnesses Who Do Not Provide a Written Report. Unless otherwise stipulated or ordered by the court, if the witness is not required to provide a written report, this disclosure must state:
      • (i) the subject matter on which the witness is expected to present evidence under Federal Rule of Evidence 702, 703, or 705; and
      • (ii) a summary of the facts and opinions to which the witness is expected to testify.
    • (D) Time to Disclose Expert Testimony. A party must make these disclosures at the times and in the sequence that the court orders. Absent a stipulation or a court order, the disclosures must be made:
      • (i) at least 90 days before the date set for trial or for the case to be ready for trial; or
      • (ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified by another party under Rule 26(a)(2)(B) or (C), within 30 days after the other party’s disclosure.
    • (E) Supplementing the Disclosure. The parties must supplement these disclosures when required under Rule 26(e).

Although not typically utilized in Board proceedings, experts in Board inter partes proceedings are typically recruited on the basis of experience in the relevant trade or industry and not on the basis of personal knowledge of or on-the-scene involvement in any sequence of events that gave rise to the Board proceedings. [ Note 1.] A party generally must decide within the discovery period whether it plans to use an expert to testify at trial since expert disclosure is due 30 days prior to the close of discovery, or by any deadline that may be reset by any order of the Board issued after the initial institution order. [ Note 2.]

The extent of the expert disclosure obligation is governed by Fed. R. Civ. P. 26, specifically, Fed. R. Civ. P. 26(a)(2). [ Note 3.]. Parties are not required to disclose consulting experts. [ Note 4.] On the other hand, both retained, specially employed experts, and unretained experts must be disclosed. [ Note 5.] Only retained experts are required to provide a report, unless otherwise stipulated. [ Note 6.] For unretained experts, a party must provide the subject matter on which the witness is expected to present evidence under Fed. R. Evid. 702, 703, or 705; and a summary of the facts and opinions to which the witness is expected to testify. [ Note 7.]

The disclosure of planned or possible expert testimony by any party must be made by the expert disclosure deadline, regardless of whether any other party has made such disclosure. Thus, for example, if a defendant has plans to present, or may present, expert testimony to support an affirmative defense, regardless of whether a plaintiff may use expert testimony in support of a main claim, then the defendant must disclose the planned or possible presentation of such testimony by the deadline set by the Board. [ Note 8.] If a party decides after the deadline for expert disclosure that it would like to, or may need to, rely on expert testimony at trial, the party must file a motion for leave to use the expert at trial. [ Note 9.] The provisions regarding the timing of expert disclosure are intended to facilitate the taking of any necessary discovery by any party or parties adverse to the disclosing party, in regard to the proposed expert witness, and to allow the adverse party or parties to determine whether it will be necessary to rely on a rebutting expert. Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should at least discuss, during the discovery conference, the possibility of entering into stipulations that will facilitate the exchange of such information and/or the presentation of expert testimony. The parties should revisit these discussions whenever it appears that a testifying expert witness may become involved in the case. [ Note 10.]

Any party disclosing plans to use an expert must notify the Board that it has made the required disclosure(but should not file with the Board copies of the materials provided to adverse parties) to comply with Fed. R. Civ. P. 26(a)(2). [ Note 11.] The Board may then suspend proceedings to allow for discovery limited to experts. [ Note 12.] The suspension order may leave unchanged the deadline specified in the Federal Rule for disclosure of plans to use a rebuttal expert, or may reset the deadline, depending upon the circumstances at the time the Board issues the suspension order. Suspension is as to activities unrelated to the exchange of information about, and reports by, expected expert witnesses, and the parties should continue with the expert disclosure procedures specified in the Federal Rule pending issuance of any suspension order by the Board that will specify any actions of the parties required by the Board. If a party discloses plans to use an expert witness early in the discovery period, the Board may choose not to suspend discovery activities unrelated to the expected expert witnesses and may direct that all discovery activities continue concurrently with the disclosures and discovery relative to the experts. [ Note 13.] The Board recognizes that there may be cases in which a party may not decide that it needs to present an expert witness at trial until after the deadline for expert disclosure. In such cases, disclosure must be made promptly when the expert is retained and a motion for leave to present testimony by the expert must be filed. [ Note 14.] Prompt disclosure after the deadline, however, does not necessarily ensure that the expert’s testimony or evidence will be allowed into the record at trial. [ Note 15.] The Board will decide on a case-by-case basis how to handle a party’s late identification of experts. [ Note 16.]

For further information regarding the duty to cooperate with regard to expert disclosures, see TBMP § 408.01(b). For information regarding remedies for failure to disclose or inadequate expert disclosures, see TBMP § 411.01.

NOTES:

 1.   RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1494, 1494-95 (TTAB 2013).

 2.   See 37 CFR § 2.120(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007) (in the absence of an order from the Board setting a deadline, expert disclosures are governed by Fed. R. Civ. P. 26(a)(2), per 37 CFR § 2.120(a)(2)); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (party is to disclose its plan to use an expert 30 days before the close of discovery).

 3.   See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1494 (TTAB 2013) (use of testifying expert); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1891-92 (TTAB 2011).

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42254 (August 1, 2007).

 5.   Fed. R. Civ. P. 26(a)(2)(A).

 6.   Fed. R. Civ. P. 26(a)(2)(B); Fed. R. Civ. P. 26(a)(2)(C). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1494, 1495 (TTAB 2013) (an expert is retained for purposes of Rule 26(a)(2)(B) and required to provide a written report "[w]here an expert’s opinion testimony arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation").

 7.   Fed. R. Civ. P. 26(a)(2)(C). A witness under Fed. R. Civ. P. 26(a)(2)(C) may testify as both a fact witness and also provide expert testimony under Fed. R. Evid. 702, 703 or 705. Fed. R. Civ. P. 26(a)(2)(C) Advisory committee notes (2010 amendment).

 8.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 9.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 10.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 n. 3 (TTAB 2011) (parties expected to cooperate to resolve problems arising from timely but incomplete expert disclosures).

 11.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492 n.3 (TTAB 2013) (a party must the notify the Board of its plan to use an expert (without including copies of expert disclosures), and that it has made required expert disclosures to adversary; the best practice is to notify the Board concurrently with the expert disclosures to adverse party). But see General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (37 CFR § 2.120(a)(2)  does not mandate that a disclosing party inform the Board that an expert disclosure has been made; disclosing party’s failure to notify the Board is not a ground to exclude the testimony).

 12.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007); But see, General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) ("The purpose of informing the Board of such a disclosure is to facilitate discovery," but notification to the Board may not be necessary if expert-related discovery can be concluded by the close of discovery).

 13.   See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (in any given case, suspension of proceedings for expert-related discovery may not be necessary).

 14.   See 37 CFR § 2.120(a)(2).

 15.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).

 16.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).