533.02(a) On Ground of Improper or Inadequate Notice
37 CFR § 2.123(c) Notice of examination of witnesses. Before the depositions of witnesses shall be taken by a party, due notice in writing shall be given to the opposing party or parties, as provided in §2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined; if the name of a witness is not known, a general description sufficient to identify the witness or the particular class or group to which the witness belongs, together with a satisfactory explanation, may be given instead..
37 CFR § 2.123(e)(3) Examination of witnesses. Every adverse party shall have full opportunity to cross-examine each witness. If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances. A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e). A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
Although a party need not identify particular individuals as prospective trial witnesses through its mandatory initial disclosures, it must identify "each individual likely to have discoverable information that the disclosing party may use to support its claims or defenses." [ Note 1.] In the event either party intends to use an expert, the deadline for expert disclosure is thirty days prior to the close of the discovery period. [ Note 2.] If the expert is retained after the deadline for the disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. [ Note 3.] Pretrial disclosures require that a party, in advance of the presentation of its testimony, inform its adversary of the names of, and certain minimal identifying information about, the individuals who are expected to, or may, if the need arises, testify at trial. [ Note 4.]
If pretrial disclosures or the notice of examination of witnesses served by a party is improper or inadequate with respect to any witness, e.g., does not give due (i.e., reasonable) notice, or does not identify a witness whose deposition is to be taken, an adverse party may cross-examine the witness under protest while reserving the right to object to the receipt of the testimony in evidence. However, promptly after the deposition is completed, the adverse party, if it wishes to preserve the objection, must move to strike the testimony from the record. [ Note 1.]
A motion to strike a testimony deposition for improper or inadequate notice must request the exclusion of the entire deposition, not just a part thereof. The motion will be decided on the basis of all the relevant circumstances. [ Note 2.]
Parties should note that objections to a testimony deposition based upon improper or inadequate notice may also be raised by a motion to quash. [ Note 3.] See TBMP § 521. Raising such objections by means of a motion to quash may avoid the time and expense of taking the deposition in the event the motion is granted, and further leaves open the possibility that such deposition could be rescheduled with more appropriate notice. If the matter is raised by a motion to quash, parties are encouraged to contact the assigned Board attorney by telephone, and ask that the matter be resolved by telephone conference, as time is of the essence with such a motion. For information on telephone conferences with Board attorneys concerning motions, see TBMP § 413.01 and TBMP § 502.06(a).
Parties also should note that the majority of disputes arising from the improper or inadequate notice of trial testimony depositions may be avoided by early communication regarding the planning and scheduling of such depositions. Parties may discuss scheduling of testimonial depositions early in the pretrial phase of the proceeding, e.g., when serving their pretrial disclosures. In any event, the Board expects a reasonable degree of cooperation and flexibility in scheduling to avoid such disputes.
NOTES:
1. See 37 CFR § 2.123(e)(3); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1652-53, (TTAB 2007) (reasonableness of notice based upon calendar days and not business days, six calendar days in this case is reasonable notice); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1704 (TTAB 1990) (one day notice not sufficient time for applicant to prepare for deposition but opposer allowed time to recall witness for purpose of cross-examination and redirect); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986) (substitute witness not identified but adverse party failed, after deposition, to move to strike); Home Juice Co. v. Runglin Cos. Inc., 231 USPQ 897, 898 n.4 (TTAB 1986) (motion to strike filed four months after testimony taken was untimely); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (where applicant attended deposition and objected to its consideration on ground that it was taken on two-days notice, Board found that notice, although short, was not unreasonable where deposition was held a short distance from applicant’s attorney’s office and where no specific prejudice was shown).
See also, e.g., Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1696 (TTAB 2007) (motion to strike testimony deposition granted where there was no attempt to contact adversary regarding an individual’s deposition until two days before the testimony period closed); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (one and two-day notices were not reasonable without compelling need for such haste; three-day notice was reasonable); Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice was not reasonable and opposing counsel’s failure to appear was excused); Penguin Books Ltd. V. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make witness available again at a future date).
2. See 37 CFR § 2.123(e)(3).
3. See 37 CFR § 2.123(c); Fed. R. Civ. P. 30(b) and Fed. R. Civ. P. 31(a); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (on a motion to quash five testimony depositions, whether notice is reasonable depends upon the circumstances of each case; one and two-day notices were not reasonable without compelling need for such haste, but three-day notice was reasonable.)