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).