523 Motion to Compel Disclosure or Discovery
523.01 In General
37 CFR § 2.120(e) Motion for an order to compel disclosure or discovery.
- (1) If a party fails to make required initial disclosures or expert testimony disclosures, or fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or such designated person, or an officer, director or managing agent of a party fails to attend a deposition or fails to answer any question propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and copying of any document or thing, the party entitled to disclosure or seeking discovery may file a motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy. ...
- (2) When a party files a motion for an order to compel initial disclosure, expert testimony disclosure, or discovery, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board’s suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition.
In inter partes proceedings before the Board, a motion to compel is available in the event of a failure to provide required disclosures or discovery requested by means of discovery depositions, interrogatories, and requests for production of documents and things. [ Note 1.] A motion to compel is also available to compel attendance at a discovery conference [ Note 2.] or to compel a party to supplement inadequate disclosures or sanction a party for failing to make initial disclosures after being ordered to do so. [ Note 3.] For further information regarding the duty to hold a discovery conference, see TBMP § 408.01(a).
Motions to compel are also available to compel an answer to a deposition question. Because discovery depositions are taken out of the presence of the Board, if a witness being deposed, or the attorney for the witness, believes a question is improper, an objection may be stated, but the question normally should be answered subject to the stated objection. See TBMP § 404.08(c). However, if a witness being deposed objects to, and refuses to answer, a particular question, and if the deposition is being taken pursuant to a subpoena, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection, by adjourning the deposition and applying, under 35 U.S.C. § 24, to the Federal district court, in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. See TBMP § 404.09 and TBMP §411.03. In the absence of a court order compelling an answer, the propounding party’s only alternative, if it wishes to compel an answer, is to complete the deposition and then file a motion to compel with the Board. [ Note 4.]
Further, a party who fails to provide its initial disclosures will be barred from propounding discovery requests, whether interrogatories, requests for production or requests for admission, and may not file a motion to compel to obtain responses to improperly propounded discovery requests. [ Note 5.]
In accordance with 37 CFR § 2.120(e)(2), when a party files a motion to compel disclosures or discovery, the Board will issue an order suspending the proceeding with respect to all matters not germane to the motion, and no party should file any paper which is not germane to the discovery dispute, except as otherwise specified in the Board’s suspension order. However, neither the filing of a motion to compel nor the Board’s resulting suspension order tolls the time for parties to make required disclosures or respond to any outstanding discovery requests which had been served prior to the filing of the motion to compel, nor does it excuse a party’s appearance at any discovery deposition which had been duly noticed prior to the filing of the motion to compel. When the motion to compel is filed after discovery has closed, but prior to the opening of the first testimony period, the time period for making pretrial disclosures will be suspended and dates will be reset after the motion to compel is decided. [ Note 6.]
This rule, in conjunction with 37 CFR § 2.120(e)(1) and 37 CFR § 2.120(h)(1) which provide, respectively, that a motion to compel initial disclosures or expert testimony disclosure must be filed prior to the close of the discovery period, and a motion to compel discovery or motion to test the sufficiency of an answer or objection to a request for admission must be filed prior to the commencement of the first testimony period as originally set or as reset, and that the period between the end of the discovery period and the opening of the first testimony period is sixty days, is designed to ensure that all discovery disputes are resolved prior to the commencement of trial. [ Note 7.] A motion to compel discovery or to test the sufficiency of an answer or objection to a request for admission is untimely if filed after the first testimony period commenced, even if the first testimony period is subsequently reset. [ Note 8.] See TBMP § 523.03.
The motion to compel procedure is not applicable to requests for admission. The procedure to be followed in the case of requests for admission is as set forth in 37 CFR § 2.120(h) and Fed. R. Civ. P. 36(a) and see TBMP § 411.03 (Requests for Admission) and TBMP § 524 (Motion to Test Sufficiency of Response to Admission Request).
For information concerning the effect of a party’s failure to timely respond to interrogatories and document requests, see TBMP § 403.03 (Time for Service of Discovery Responses), TBMP § 405.04(a) (Time for Service of Responses), TBMP § 406.04(a) (Time for Service of Responses), and TBMP § 411 (Remedy for Failure to Provide Disclosures or Discovery); and see TBMP § 523 (Motion to Compel Discovery Responses) and TBMP § 524 (regarding motion to test sufficiency of responses to admission requests).
NOTES:
1. See 37 CFR § 2.120(e). See also, e.g., Johnson and Johnson and Roc International S.A.R.L. v. Obschestvo s Oranitchennoy; Otvetstvenn Ostiu "Wds," 95 USPQ2d 1567, 1570 (TTAB 2010) (TTAB 2010) (motion to compel applicant to supplement interrogatory responses granted); Kairos Institute of Sound Healing LLC v. Doolittle Gardens LLC, 88 USPQ2d 1541, 1543 (TTAB 2008) (motion to compel available remedy when adverse party fails to provide initial or expert disclosures); Jain v. Ramparts Inc., 49 USPQ2d 1429, 1436 (TTAB 1998) (interrogatories and document requests); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (discovery deposition); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979) (interrogatories); General Sealer Corp. v. H. H. Robertson Co., 193 USPQ 384, 384 (TTAB 1976) (motion for sanctions treated as motion to compel); Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (party may file motion to compel if it believes objections to discovery requests to be improper). See also Spa International, Inc. v. European Health Spa, Inc., 184 USPQ 747, 747 (TTAB 1975) (discussing when it is appropriate to file a motion to compel or a motion for discovery sanctions); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 616 (TTAB 1974) (motion to compel is not untimely simply because it is made after discovery period has expired, merely because it relates back to earlier timely request; motion for discovery sanctions denied because no discovery order has issued); ; Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (motion to compel production of documents; Dow Corning Corp. v. Doric Corp., 183 USPQ 126, 127 (TTAB 1974) (Board can rule on objections to request for production in connection with the filing of a motion to compel). Cf. Fed. R. Civ. P. 37(a)(3)(B).
2. Promgirl Inc. v. JPC Co., 94 USPQ2d 1759, 1762-63 (TTAB 2009) (plaintiff’s motion for sanctions in the form of judgment for defendant’s failure to participate in discovery conference denied, but alternative motion to compel attendance at a discovery conference granted). Note, however, that 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)(1).
3. RTX Scientific Inc. v. Nu-Calgon Wholesaler Inc., 106 USPQ2d 1492, 1493 (TTAB 2013) (motion to compel available for inadequate expert disclosures); Influance Inc. v. Zuker, 88 USPQ2d 1859, 1860 n.3 (TTAB 2008) (motion to compel available for inadequate initial disclosures).
4. See 37 CFR § 2.120(e); Neville Chemical Co. v. Lubrizol Corp, 183 USPQ 184, 189 (TTAB 1974).
5. 37 CFR § 2.120(a)(3); Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010); Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705-06 (TTAB 2009) (a party that wishes to object to discovery on the ground that its opponent failed to make its required initial disclosures prior to serving the discovery must assert that basis for objection to the discovery clearly and specifically); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1060 (TTAB 2009) (defendant’s motion to compel denied because defendant had not made the required initial disclosures).
6. See 37 CFR § 2.120(e)(2). See also HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1907 (TTAB 2008) (motion to compel attendance of employees for depositions granted where moving party made good faith effort to schedule depositions but opposer failed to cooperate).
7. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719 n.10 (TTAB 2008) (motion to compel need not be filed during discovery period, but must be filed prior to opening of first testimony period); Luemme Inc. v. D.B. Plus, Inc., 53 USPQ2d 1758, 1761-62 (TTAB 1999) (motions to compel and motions to test the sufficiency of responses to requests for admission must be filed prior to the opening of the first testimony period).
8. Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely).
523.02 Special Requirements for Motion
37 CFR § 2.120(e) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel discovery shall include a copy of the request for designation or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a list and brief description of the documents or things that were not produced for inspection and copying. A motion to compel initial disclosures, expert testimony disclosure, 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 therefor the issues presented in the motion but the parties were unable to resolve their differences. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.
A motion to compel must include a copy of the request for discovery and the response thereto, as specified in 37 CFR § 2.120(e). [ Note 1.]
In addition, the motion to compel disclosures or discovery must be supported by a written statement from the moving party that such party or its attorney has made a good faith effort, by conference or correspondence, to resolve with the other party or its attorney the issues presented in the motion, and has been unable to reach agreement. [ Note 2.] The statement should contain a recitation of the communications conducted including dates, a summary of telephone conversations, and where applicable, copies of any correspondence exchanged such as email and letters, or notes to the file. [ Note 3.]
In determining whether a good faith effort to resolve the discovery dispute has been made, the Board may consider, among other things, whether the moving party has investigated the possibility of resolving the dispute, whether, depending on the circumstances, sufficient effort was made towards resolution, and whether attempts at resolution were incomplete. [ Note 4.]
In the event that issues raised in the motion are subsequently resolved by the parties, the moving party should inform the Board in writing, filed through ESTTA, of the issues in the motion which no longer require determination. [ Note 5.]
For information concerning the special requirements for a motion to compel answers to interrogatories that are the subject of a general objection on the ground of excessive number, see TBMP § 405.03(e). Cf. TBMP § 526.
NOTES:
1. See Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (Board must be able to render a meaningful decision on a motion to compel); Amerace Corp. v. USM Corp., 183 USPQ 506, 506-07 (TTAB 1974); Helene Curtis Industries, Inc. v. John H. Breck, Inc., 183 USPQ 126, 126 (TTAB 1974) (party must submit a copy of actual written objections to interrogatories along with motion to compel).
2. 37 CFR § 2.120(e). See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081-82 (TTAB 2014) (discussing generally good faith effort requirement; finding single email exchange between the parties insufficient to establish good faith effort as it was incumbent upon applicant to make at least one additional inquiry); Amazon Techonologies, Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (good faith effort requirement); Pioneer Kabushiki Kaisha v. Hitachi, 74 USPQ2d 1672, 1679 n.11 (TTAB 2005) (motion to compel demonstrated good faith effort and included copies of relevant document requests and responses); Giant Food, Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 632 (TTAB 1986) (failed to submit documentary evidence of good faith effort); Sentrol, Inc. v. Sentex Systems, Inc., 231 USPQ 666, 667 (TTAB 1986) (parties must narrow disputed requests for discovery to a reasonable number); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (nature and the number of discovery requests clearly demonstrated that no good faith effort had been made); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 450 (TTAB 1979) (good faith effort is required where there has been a complete failure to respond to discovery; telephone call to counsel sufficient); MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 954 (TTAB 1979) (same; a statement that discovery has not been responded to is insufficient).
3. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014).
4. Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110 USPQ2d 1080, 1081 (TTAB 2014).
5. 37 CFR § 2.120(e). See, e.g., Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (late responses rendered motion to compel, based on complete non-responsiveness, moot).
523.03 Time for Filing Motion
37 CFR § 2.120(e) Motion for an order to compel disclosure or discovery.
- (1) ... A motion to compel initial disclosures or expert testimony disclosure must be filed prior to the close of the discovery period. A motion to compel discovery must be filed prior to the commencement of the first testimony period as originally set or as reset. …
A motion to compel initial or expert testimony disclosures must be filed prior to the close of the discovery period to allow time for the non-compliant party to conduct discovery after making its disclosures. [ Note 1.]
A motion to compel discovery does not necessarily have to be filed during the discovery period. [ Note 2.] However, the motion should be filed within a reasonable time after the failure to respond to a request for discovery or after service of the response believed to be inadequate and must, in any event, be filed before the first testimony period opens. [ Note 3.] A moving party should also wait a reasonable time after the responses are due to file a motion to compel, to allow time for receipt of responses. [ Note 4.] If testimony periods are reset prior to the opening of the plaintiff’s testimony period-in-chief, a motion to compel filed before a first trial period opens is timely. However, once the first trial period opens, a motion to compel filed thereafter is untimely, even if it is filed prior to the opening of a rescheduled or reset testimony period-in-chief for plaintiff. [ Note 5.] Please Note: 37 CFR § 2.196, which allows an action to be taken the succeeding day after a Saturday, Sunday or Federal holiday that is not a Saturday, Sunday or Federal holiday when the day, or last date, to take such action falls on a Saturday, Sunday or Federal holiday, is not applicable to the opening of a designated period. Thus, if the first testimony period opens on a Saturday, Sunday or Federal holiday, a motion to compel filed on the next business day is untimely and will not be considered. For more information, see TBMP § 112. There is no provision in the rule for Board discretion to consider an untimely motion to compel. Trial schedules include a sixty-day period between the close of discovery and the opening of the first testimony period to allow time for the filing of any necessary discovery motions.
NOTES:
2. See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1719 n.10 (TTAB 2008); Johnson & Johnson v. Diamond Medical, Inc., 183 USPQ 615, 617 (TTAB 1974).
4. 37 CFR § 2.120(e); MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060, 1061 n.2 (TTAB 2009) (because timely-served discovery responses might not arrive until after deadline, receiving party should wait a reasonable time beyond service date before making a motion alleging failure to serve). See, e.g., Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) (deficiencies in applicant’s discovery responses should have been addressed by filing of properly-supported motion to compel discovery prior to commencement of opposer’s testimony period).
5. Cf. La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 234-36 (Comm’r 1976) (motion for summary judgment filed during the period for taking testimony untimely.
523.04 Failure to File Motion to Compel
If a party that served a request for discovery receives a response thereto which it believes to be inadequate, but fails to file a motion to challenge the sufficiency of the response, it may not thereafter be heard to complain about the sufficiency thereof. [ Note 1.] Accord TBMP § 524.04 (regarding failure to file motion regarding sufficiency of admission responses). Cf. TBMP § 527.01(e) (Estoppel Sanction).
NOTES:
1. Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1719 (TTAB 2008) (party that receives response it believes inadequate but fails to file a motion to test sufficiency of response, may not thereafter complain about its insufficiency); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (having failed to file motion to compel, defendant will not later be heard to complain that interrogatory responses were inadequate); Linville v. Rivard, 41 USPQ2d 1731, 1733 (TTAB 1996) (objections that discovery requests are, for example, ambiguous or burdensome, are not of a nature which would lead propounding party to believe that the requested information does not exist and party should have filed motion to compel), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, evidence introduced by applicant at trial was considered), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Seligman & Latz, Inc. v. Merit Mercantile Corp., 222 USPQ 720, 723 (TTAB 1984) (Board will not impose sanction of drawing adverse inferences against party based on inconsistent responses to questions asked during discovery deposition without motion to compel complete responses and violation of an order compelling answers). See also Societa Per Azioni Chianti Ruffino Esportazione Vinicola Toscana v. Colli Spolentini Spoletoducale SCRL, 59 USPQ2d 1383, 1383 (TTAB 2001) (because plaintiff’s first testimony period had already opened, any motion to compel to test alleged deficiencies in discovery responses would be time-barred).