403.02    Time for Service of Discovery Requests and Taking of Depositions

37 CFR § 2.120(a)(3)  … Discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset.

A party may serve written interrogatories, requests for production and things, and requests for admissions on an adversary during the discovery period in an inter partes proceeding before the Board; however, for cases commenced on or after November 1, 2007, the serving party must have already made its initial disclosures, absent a stipulation or a granted motion or upon order of the Board to the contrary. [ Note 1.] Written discovery may be served concurrently with initial disclosures. [ Note 2.] Additionally, for cases commenced on or after November 1, 2007, a party cannot notice depositions until it has served its initial disclosures, unless such disclosures are waived. [ Note 3.] Discovery depositions must be not only noticed but also taken during the discovery period (unless the parties stipulate or the Board orders that the deposition may be taken outside of the period). [ Note 4.]

NOTES:

 1.   37 CFR § 2.120(a)(3). ("A party must make its initial disclosures prior to seeking discovery ..."); Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889 (TTAB 2010) (motion to compel denied where moving party failed to make initial disclosures; service of initial disclosures is a prerequisite to taking discovery). For proceedings commenced prior to November 1, 2007, see Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758, 1761 (TTAB 1999); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978); Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606, 607 (TTAB 1974); AMP Inc. v. Raychem Corp., 179 USPQ 857, 858-59 (TTAB 1973); Deere & Co. v. Deerfield Products Corp., 176 USPQ 422, 422 (TTAB 1973).

 2.   37 CFR § 2.120(a)(3). See also Luster Products Inc. v. Van Zandt, 104 USPQ2d 1877, 1879 n.2 (TTAB 2012) (initial disclosures may be served concurrently with discovery requests).

 3.   37 CFR § 2.120(a)(3).

 4.   37 CFR § 2.120(a)(3). See National Football League v. DNH Management LLC, 85 USPQ2d 1852 (TTAB 2008) (motion to quash granted where deposition noticed during discovery but scheduled after close of discovery); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978) (discovery may not be taken outside the discovery period); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (motion to quash granted where party noticed deposition for a date subsequent to the expiration of the discovery period).