527.01(b) If Party Says It Will Not Respond to Discovery Request or Make Required Disclosures
37 C.F.R. § 2.120(h)(2) If a party fails to make required initial disclosures or expert testimony disclosure, and such party or the party’s attorney or other authorized representative informs the party or parties entitled to receive disclosures that required disclosures will not be made, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section. If a party, or an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Civil Procedure to testify on behalf of a party, fails to attend the party’s or person’s discovery deposition, after being served with proper notice, or fails to provide any response to a set of interrogatories or to a set of requests for production of documents and things, and such party or the party’s attorney or other authorized representative informs the party seeking discovery that no response will be made thereto, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section.
The motion for sanctions under 37 C.F.R. § 2.120(h)(2) is available for discovery depositions, interrogatories, and requests for production of documents and things, and lies where the responding party (1) has failed to respond, and (2) has informed the party seeking discovery that no response will be made. A motion for sanctions for failure to provide initial disclosures may be made when a party has expressly stated to its adversary that it does not intend to meet its obligation. [ Note 1.] Similarly, a motion for sanctions for failure to provide expert disclosures may be made when a party has expressly stated to its adversary that required disclosures will not be made. Parties should not file a motion for sanctions under 37 C.F.R. § 2.120(h)(2) where the Board has previously entered an order compelling discovery or disclosures. The appropriate remedy is rather a motion for sanctions pursuant to 37 C.F.R. § 2.120(h)(1), discussed in TBMP § 527.01(a).
The sanctions that may be entered by the Board include, inter alia, striking all or part of the pleadings of the disobedient party; refusing to allow the disobedient party to support or oppose designated claims or defenses; prohibiting the disobedient party from introducing designated matters in evidence; and entering judgment against the disobedient party. However, the Board will not hold any person in contempt, or award any expenses, including attorneys’ fees, to any party. [ Note 2.] See TBMP § 502.05.
The motion for sanctions under 37 C.F.R. § 2.120(h)(2) does not apply in situations involving requests for admission. For information concerning sanctions for failure to respond, or respond properly, to requests for admission, see TBMP § 527.01(d).
NOTES:
1. Kairos Institute of Sound Healing LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1542-43 (TTAB 2008).
2. See 37 C.F.R. § 2.120(h)(1); 37 C.F.R. § 2.120(h)(2); and 37 C.F.R. § 2.127(f).