408 Duties to Cooperate, Search Records, Supplement
408.01 Duty to Cooperate
The Board expects parties (and their attorneys or other authorized representatives) to cooperate with one another in the discovery process, [ Note 1.] and looks with extreme disfavor on those who do not. Each party and its attorney or other authorized representative has a duty not only to make a good faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such discovery as is proper and relevant to the issues in the case. [ Note 2.] Discovery before the Board is not governed by the concept of priority of discovery - that is, a party is not relieved of its discovery obligations, including its duty to cooperate, in spite of the fact that an adverse party wrongfully may have failed to fulfill its own obligations. [ Note 3.]
NOTES:
1. See Panda Travel Inc. v Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791 (TTAB 2009) ("Each party has a duty to make a good faith effort to satisfy the reasonable and appropriate discovery needs of its adversary."); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) ("In order for the meet and confer process to be meaningful and serve its intended purpose, ‘the parties must present to each other the merits of their respective positions with the same candor, specificity, and support during informal negotiations as during the briefing of discovery motions.’") (quoting Nevada Power Co. v. Monsanto Co., 151 F.R.D. 118, 120 (D. Nev. 1993)). See also Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 n.1 (TTAB 2014) (simply ignoring deadlines to serve discovery responses or seek an extension of time to do so is inconsistent with the Board’s expectation that the parties and their attorneys cooperate in the discovery process); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving conflicts in the scheduling and taking of depositions).
2. Fed. R. Civ. P. 26(g). See, e.g., Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective postions with candor, specificity and support); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 13 USPQ2d 1719, 1721 n.4 (TTAB 1989) (Board warned counsel for opposer that its conduct of discovery in the case was "uncooperative" and "improper" and that any further misconduct may result in the imposition of the estoppel sanction); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (in view of parties’ impasse, Board was burdened with resolving numerous requests for discovery); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1305 (TTAB 1987) (both parties failed to cooperate, thus saddling Board with needless motions); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (prior to seeking Board intervention, parties must narrow amount of disputed requests to reasonable number); Unicut Corp. v. Unicut, Inc., 222 USPQ 341, 344 (TTAB 1984) (failure to cooperate in discovery and comply with Board order resulted in the entry of sanctions in the form of judgment); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (it was clear from number and nature of opposer’s discovery requests and applicant’s blanket objections thereto that neither party was cooperating). See also C. H. Stuart Inc. v. Carolina Closet, Inc., 213 USPQ 506, 507 (TTAB 1980) (opposer’s "voluminous" discovery requests were "oppressive and nothing short of harassment" to applicant); C. H. Stuart Inc. v. S. S. Sarna, Inc., 212 USPQ 386, 387 (TTAB 1980) (Board granted applicant’s motion for protective order; opposer’s "boiler-plate" discovery requests designed for an infringement action deemed harassment); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 584 (TTAB 1975) (applicant’s motion to compel denied due to lack of good faith effort to resolve dispute); Tektronix, Inc. v. Tek Associates, Inc., 183 USPQ 623, 624 (TTAB 1974); Gastown Inc. of Delaware v. Gas City, Ltd., 180 USPQ 477, 477-78 (TTAB 1974).
3. Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067 (TTAB 1990) (citing Fed. R. Civ. P. 26(d) and Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626 (TTAB 1986)).
408.01(a) Obligation to Conduct Discovery Conference
In the interest of promoting among other things, cooperation in the discovery process, parties involved in inter partes proceedings commenced on or after November 1, 2007, are required to hold a conference to discuss settlement and plans for discovery. [ Note 1.] The purpose of the conference for the parties is to discuss the "nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery," as well as the subjects set forth in Fed. R. Civ. P. 26(f) and any other subjects that the Board requires to be discussed in the institution order for the case, including alternative means for case resolution such as Accelerated Case Resolution (ACR). [ Note 2.] See TBMP § 528.05(a)(2) and TBMP § 702.04 for further information on ACR. The parties are free to discuss additional topics besides those outlined in Fed. R. Civ. P 26(f) and the institution order that could promote settlement or efficient adjudication of the Board proceeding. [ Note 3.] Mere discussion of settlement does not substitute for a full discovery conference addressing the issues outlined in Fed. R. Civ. P. 26 and the Board’s institution order. [ Note 4.] Thus, the parties are required to discuss their plans relating to disclosures, discovery and trial evidence unless they are successful in settling the case.
All parties to a proceeding have a duty to cooperate and conduct the discovery conference in a timely fashion. [ Note 5.] If a party refuses to cooperate in scheduling the discovery conference, it is recommended that the party seeking to schedule the conference contact the assigned Board attorney via telephone to facilitate the matter prior to the deadline for the conference. [ Note 6.] In such instances, the Board professional will contact the non-cooperating party directly to schedule the conference. If the uncooperative party fails to respond to Board communications within a reasonable time frame, the Board will issue an order setting a date for the conference, and warning the uncooperative party that the conference will be held as scheduled, and that any party that has not participated may be subject to a motion for sanctions under 37 CFR § 2.120(g). In certain instances, the Board may also order the uncooperative party to show cause why judgment should not be entered against it for failure to participate in the discovery conference. Alternatively, in instances where the party seeking to schedule the conference did not engage the Board, the party may file a motion for sanctions pursuant to 37 CFR § 2.120(g). The Board may, upon grant of a motion for sanctions for failure of a party to participate in a discovery conference, impose any of the sanctions provided in Fed. R. Civ. P. 37(b)(2), including judgment. [ Note 7.] A motion to compel a party to participate in a discovery conference is not a prerequisite to filing a motion for sanctions under 37 CFR § 2.120(g) because of an adverse party’s unwillingness to participate in the required conference; however, the moving party must provide evidence of a good faith effort to schedule the conference in order to be able to prevail on a motion for such sanctions. [ Note 8.]
For a more detailed discussion of discovery conferences, see TBMP § 401.01.
For general information on the conduct of telephone conferences, participation in telephone conferences, and issuance of rulings resulting from telephone conferences, see TBMP § 502.06(a).
NOTES:
1. See 37 CFR § 2.120(a)(2); Fed. R. Civ. P. 26(f). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42245 (August 1, 2007). See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).
2. See, e.g., Promgirl, Inc. v. JPC Co. , 94 USPQ2d 1759, 1761 (TTAB 2009).
3. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009).
4. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1761 (TTAB 2009) (mere discussion of settlement does not substitute for full discovery conference of subjects set forth in Fed. R. Civ. P. 26 and Board’s institution order).
5. See, e.g., Promgirl, Inc. v. JPC Co.,94 USPQ2d 1759, 1762 (TTAB 2009) (responsibility to schedule a conference and to confer on each of the topics outlined in Fed. R. Civ. P. 26 and the institution order is a shared responsibility); Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701, 1703 (TTAB 2008) ("it is the equal responsibility of both parties to ensure that the discovery conference takes place by the assigned deadline"); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.2 (TTAB 2008) (holding discovery conference is a mutual obligation).
6. See, e.g., Promgirl, Inc. v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009).
8. See, e.g., Promgirl, Inc., v. JPC Co., 94 USPQ2d 1759, 1762 (TTAB 2009) (opposer’s motion for sanctions in the form of judgment denied where parties were engaged in settlement discussions and opposer did not broach the subject of scheduling the discovery conference until the deadline date, and only after opposer’s settlement offer was rejected); Guthy-Renker Corp. v. Michael Boyd, 88 USPQ2d 1701, 1704 (TTAB 2008) (motion for sanctions denied; moving party could have made additional efforts with adverse party to schedule discovery conference, including requesting Board participation in the discovery conference, but failed to do so).
408.01(b) Obligation to Make Initial and Expert Testimony Disclosures
As part of the discovery phase of each inter partes proceeding commenced on or after November 1, 2007, all involved parties are obliged to make initial disclosures and,when necessary,expert testimony disclosures. The Board adopted a disclosure regime in order to promote the early exchange of information and settlement and, for cases that do not settle, "more efficient discovery and trial, [reduction of] incidents of unfair surprise, and [to] increase the likelihood of fair disposition of the parties’ claims and defenses." [ Note 1.] In addition, the utilization of routine disclosures of the types provided for in the Federal Rules of Civil Procedure is intended to "obviate the need to use traditional discovery to obtain ‘basic information’ about a party’s claims or defenses." [ Note 2.]
Each party involved in an inter partes proceeding is obligated to make initial disclosures to every other party, by the deadline set in the Board’s institution order, or as may be reset by stipulation of the parties approved by the Board, or by motion granted by the Board, or by order of the Board. [ Note 3.] The initial disclosure requirement is intended to provide for the disclosure of names of potential witnesses and basic information about documents and things that a party may use to support a claim or defense. [ Note 4.] Parties are encouraged in the spirit of cooperation to stipulate to rely on more expansive use of reciprocal disclosures in lieu of formal discovery, as a more efficient and less costly manner of litigating a Board proceeding, subject to Board approval. [ Note 5.]
For a further discussion of initial disclosures, see TBMP § 401.02.
In the event a party decides to use expert testimony in a Board proceeding, pursuant to Fed. R. Civ. P. 26(a)(2), the party must serve expert disclosures 30 days prior to the close of discovery. [ Note 6.] The expert disclosure requirement is intended to avoid any unfair surprise during the testimony period. [ Note 7.] While the expert disclosure provided for in Fed. R. Civ. P. 26 may be extensive and should not, therefore be filed with the Board, the parties should inform the Board when an expert disclosure is made, so the Board can issue any appropriate order. [ Note 8.] The Board may, for example, suspend proceedings to provide for the taking of any necessary discovery of 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. [ Note 9.] Parties are expected to cooperate in the process of exchanging information about any testifying experts, and should discuss during the discovery conference, the possibility of 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.]
Where a party in its disclosures identifies an expert as a possible testifying witness under Rule 26(b)(4)(A), but subsequently re-designates the expert as a non-testifying or consulting expert under Fed. R. Civ. P. 26(b)(4)(D), the opposing party may depose that expert only upon a showing of "exceptional circumstances" under Fed. R. Civ. P. 26(b)(4)(D)(ii). [ Note 11.]
For further information regarding expert disclosures, see TBMP § 401.03.
For a discussion regarding the modification of disclosure obligations, see TBMP § 401.04.
NOTES:
1. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES,72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007). See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise and to facilitate a fair adjudication of the case on the merits).
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244 and 42246 (August 1, 2007).
3. 37 CFR § 2.120(a)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
4. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007).
6. 37 CFR § 2.120(a); 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)). See, e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1564 n.2 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009).
7. Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (disclosures, from initial through pretrial, and discovery responses should be viewed as a continuum of communication designed to avoid unfair surprise).
8. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 n.3 (TTAB 2013); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
9. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42246 (August 1, 2007). See e.g., Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564-65 (TTAB 2014); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
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. Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014).
408.01(c) Duty to Cooperate With Regard to Written Discovery and Disclosures
Fed. R. Civ. P. 26(g)(1) Signature Required; Effect of Signature. …By signing, an attorney or party certifies that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry:
- (A) with respect to a disclosure, it is complete and correct as of the time it is made; and
- (B) with respect to a discovery request, response, or objection, it is:
- (i) consistent with these rules and warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law, or for establishing new law;
- (ii) not interposed for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation; and
- (iii) neither unreasonable nor unduly burdensome or expensive, considering the needs of the case, prior discovery in the case, the amount in controversy, and the importance of the issues at stake in the action.
37 CFR § 2.120(e)(1) A motion to compel initial disclosures, expert testimony disclosures, or discovery must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefore the issues presented in the motion but the parties were unable to resolve their differences.
The signature of a party or attorney constitutes a certification as to a discovery request, response or objection and disclosure as set forth in Fed. R. Civ. P. 26(g)(1). [ Note 1.] Provision is made, in Fed. R. Civ. P. 26(g), for the imposition of appropriate sanctions if a certification is made in violation of the rule. See also TBMP § 106.02 (Signature of Submissions). "The certification duty requires the party or attorney to make a reasonable inquiry into the factual basis of his response, request or objection." [ Note 2.]
Because the signature of a party or its attorney to a request for discovery constitutes a certification by the party or its attorney that, inter alia, the request is warranted, consistent with the Federal Rules of Civil Procedure, and not unreasonable or unduly burdensome, a party ordinarily will not be heard to contend that a request for discovery is proper when propounded by the party itself but improper when propounded by its adversary. A contention of this nature will be entertained only if it is supported by a persuasive showing of reasons why the discovery request is proper when propounded by one party but improper when propounded by another. [ Note 3.] Similarly, the signature of a party or its attorney to a discovery response (i.e., response to interrogatory, request to admit, or request for production) or objection is a certification by the party or its attorney that, inter alia, the response or objection is warranted, consistent with the Federal Rules of Civil Procedure, and not interposed for any improper purpose such as to cause unnecessary delay or needlessly increase the cost of litigation. The certification requirement is distinguishable from the signature requirements in rules such as Fed. R. Civ. P. 33 [ Note 4.] and certifies that the party or lawyer has made a reasonable effort to assure that all available information and documents responsive to the discovery demand have been provided. [ Note 5.]
Under Fed. R. Civ. P. 26(g)(1)(A), a signature with respect to a disclosure constitutes certification that the disclosure is complete and correct at the time it was made. For further information regarding the form and signatures of disclosures, see TBMP § 401.06.
In addition, the duty to cooperate is embodied in the prerequisite that prior to filing a motion to compel disclosure or discovery, the moving party must make a good faith effort, by conference or correspondence, to resolve the discovery dispute prior to seeking Board intervention. [ Note 6.] See also TBMP § 523.02. The motion must be supported by a written statement showing that such a good faith effort was made. [ Note 7.] The Board may, as necessary in any particular case, ensure that the parties have engaged in a sufficient effort to resolve their differences regarding discovery by requiring the parties to conference with the Board attorney assigned to the case prior to filing a motion to compel disclosures or discovery. See TBMP § 413.01.
NOTES:
1. See Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990). Cf. 37 CFR § 11.18(b); Fed. R. Civ. P. 11.
2. Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).
3. See, e.g.,Miss America Pageant v. Petite Productions, Inc., 17 USPQ2d 1067, 1069 (TTAB 1990) (Board was persuaded that certain interrogatories would be unduly burdensome).
4. Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).
5. Fed. R. Civ. P. 26 Advisory Committee’s notes (1983 Amendment Rule 26, Subdivision (g)).
6. 37 CFR § 2.120(e). See, e.g., Hot Tamale Mama…and More, LLC v. SF Investments., Inc., 110 USPQ2d 1080, 1082 (TTAB 2014) (Board found that single email exchange alone was insufficient to satisfy the good faith effort obligation to resolve discovery dispute prior to filing motion to compel); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (parties expected to cooperate in the meet and confer process by presenting to each other the merits of their respective postions with candor, specificity and support).
7. 37 CFR § 2.120(e). See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014) (statement of good faith effort to be supported by recitation of communications conducted including dates, summary of telephone conversations and copies of correspondence exchanged, where applicable). Cf. International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (permission to file motion to compel denied where motion was devoid of good faith effort to resolve dispute prior to seeking Board intervention).
408.02 Duty to Search Records
A party served with a request for discovery has a duty to thoroughly search its records for all information properly sought in the request, and to provide such information to the requesting party within the time allowed for responding to the request. [ Note 1.] With regard to document production requests, a proper written response to each request requires the responding party to state that there are responsive documents and that either they will be produced or will be withheld on a claim of privilege;to state an objection with appropriate reasons; or to state that no responsive documents exist. [ Note 2.] With regard to electronically stored information, if no form for the electronically stored information is specified in the request or the party objects to the form, a proper written response includes a statement of the form the party intends to use in its response. [ Note 3.] In addition, the responding party has a duty "to select and produce the items requested [and to avoid] simply dumping large quantities of unrequested materials onto the discovering party along with the items actually sought under [Fed. R. Civ. P. 34]." [ Note 4.]
A responding party which, due to an incomplete search of its records, provides an incomplete response to a discovery request, may not thereafter rely at trial on information from its records which was properly sought in the discovery request but was not included in the response thereto (provided that the requesting party raises the matter by objecting to the evidence in question) unless the response is supplemented in a timely fashion pursuant to Fed. R. Civ. P. 26(e). [ Note 5.] See also TBMP § 527.01(e) ("Estoppel Sanction").
NOTES:
1. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
2. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000).
3. Fed. R. Civ. P. 34(b)(2)(D).
4. See No Fear Inc. v. Rule, 54 USPQ2d 1551, 1556 (TTAB 2000).
5. See Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789, 1791(TTAB 2009); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987).
408.03 Duty to Supplement Disclosures and Discovery Responses
Fed. R. Civ. P. 26(e) Supplementing Disclosures and Responses.
Fed. R. Civ. P. 26(e)
- (1) In General. A party who has made a disclosure under Rule 26(a)—or who responded to an interrogatory, request for production, or request for admission—must supplement or correct its disclosure or response:
- (A) in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing; or
- (B) as ordered by the court.
- (2) Expert Witness. For an expert whose report must be disclosed under Rule 26(a)(2)(B), the party’s duty to supplement extends both to information included in the report and to information given during the expert’s deposition. Any additions or changes to this information must be disclosed by the time the party’s pretrial disclosures under Rule 26(a)(3) are due.
The duty to supplement disclosures and discovery responses in proceedings before the Board is governed by Fed. R. Civ. P. 26(e)(1) and (2). [ Note 1.] Under that rule, a party that has made an initial or expert disclosure or has responded to a request for discovery with a response is under a duty to supplement or correct the response in a timely manner to include information under the particular circumstances specified in paragraphs(e)(1) and (2). [ Note 2.] However, if the information has otherwise been made known to the propounding party during the discovery process such as through a witness deposition or formal discovery, or was otherwise made known in writing, the answering party need not amend its prior response or previously made disclosure. [ Note 3.] This is not an invitation, however, to hold back material items and disclose them at the last minute. [ Note 4.] A party who does so may be subject to the preclusion sanction set forth in Fed. R. Civ. P. 37(c)(1). [ Note 5.] However, where there is prompt supplementation of the disclosure, either upon the initiative of the disclosing party, or after notification by the adverse party that the disclosure was incomplete, and while the discovery period remains open, the Board’s policy is that neither the testimony to be proffered by the expert witness nor the information originally omitted will be excluded. [ Note 6.] A party also will not be sanctioned for "failing to provide electronically stored information lost as a result of the routine, good-faith operation of an electronic information system." [ Note 7.] Subsections (A) and (B) of Fed. R. Civ. P. 37(c)(1) do not apply in Board proceedings.
In addition, a duty to supplement disclosures or responses may be imposed by order of the Board. [ Note 8.]
An expert report introduced during trial that contains additional opinions intended to rebut an adverse party’s testimony, rather than to correct inaccuracies in the expert’s report or deposition or to complete an otherwise incomplete earlier expert report with newly discovered information. does not qualify as a supplemental expert report under Rules 26(e)(1)(A) and 26(e)(2). [ Note 9.]
NOTES:
1. See 37 CFR § 2.116(a).
2. See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1242-43 (TTAB 2012) (witness first identified in pretrial disclosure could have been identified in supplementary initial disclosures, discovery responses or supplemental discovery responses);Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326-27 (TTAB 2011) (opposer was under a duty to supplement its discovery responses and disclosing for the first time in its pretrial and amended pretrial disclosures the identities of twenty-seven witnesses resulted in surprise to applicant); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1892 (TTAB 2011) (respondent supplemented its expert disclosures as soon as the deficiencies were brought to its attention so Board did not need to consider question of whether the omissions were substantially justified or harmless);Vignette Corp. v. Marino, 77 USPQ2d 1408 (TTAB 2005); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998).
3. See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341, 1345 n.7 (TTAB 2013) (party not required to supplement or correct initial disclosures to provide identifying information about witness listed in pretrial disclosures if that information previously has been made known to the other party in writing or during the discovery process); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009) (opposer’s failure to supplement its initial disclosures to identify foreign non-party witness as a potential witness does not preclude introduction of witness’ discovery deposition at trial, even though opposer should have supplemented initial disclosures, because applicant was aware of witnesses' identity and subject matter of her testimony and was able to cross-examine the witness during the discovery phase). See also Fed. R. Civ. P. 26(e) Advisory Committee Notes (1993 amendment to Rule 26(e)) ("no obligation to provide supplemental or corrective information that has been otherwise made known to the parties in writing or during the discovery process, as when a witness not previously disclosed is identified during the taking of a deposition…"). Cf. Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175 (TTAB2010) (although identity of witness disclosed through responses to written discovery, pretrial disclosures required to be revised to limit witness testimony to certain subject matter).
4. Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1861 (TTAB 2009).
5. See Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1562-63 (TTAB 2014) (estoppel sanction applies to untimely disclosure of expert opinion); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (estoppel sanction imposed where witness first identified in pretrial disclosure); Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326, 1328 (TTAB 2011) (estoppel sanction imposed with respect to the witnesses first disclosed in the amended and supplemental pretrial disclosures); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1177 (TTAB 2010) (party warned during teleconference that it may be subject to the preclusion sanction where it "claimed" to have produced all responsive documents in its possession); Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005) (opposer’s request for reconsideration of Board order denying its motion for summary judgment denied; Board properly considered applicant’s declaration provided on summary judgment, reasoning that it would be "unfair to foreclose applicant from the opportunity to amplify the assertions made in his previous discovery responses in order to defend against opposer’s motion for summary judgment"). See also Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1758 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.) (declining to apply estoppel sanction with regard to opposer’s failure to supplement discovery in connection with non-party witnesses and documents, which information was not available until after the close of discovery); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011) (deficiencies in timely expert disclosures cured promptly, motion to exclude expert testimony denied); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859 (TTAB 2009) (because identity of non-party witness was made known during the discovery phase of the proceeding with more than two months remaining in discovery period and applicant had an opportunity to obtain additional discovery about witness, opposer’s failure to supplement its initial disclosures did not preclude introduction of deposition at trial).
6. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1892 (TTAB 2011). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011) (testimony of witnesses first identified in supplemental pretrial disclosures made five days after service of amended pretrial disclosures made not excluded based on alleged untimeliness).
7. Fed. R. Civ. P. 37(e).
8. See Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1179 (TTAB 2010) (party ordered to serve revised pretrial disclosures). Cf. Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720-21 (TTAB 1987); Andersen Corp. v. Therm-O-Shield International, Inc., 226 USPQ 431, 434 n.8 (TTAB 1985); JSB International, Inc. v. Auto Sound North, Inc., 215 USPQ 60, 62 (TTAB 1982); P.A.B. Produits et Appareils de Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M. Usellini, 570 F.2d 328, 196 USPQ 801, 805 (CCPA 1978).
9. Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559, 1562 (TTAB 2014).