410 Asserting Objections to Requests for Discovery, Motions Attacking Requests for Discovery, and Disclosures
The rules governing discovery in proceedings before the Board provide both for the assertion of objections to discovery requests believed to be improper, and a means (namely, the motion to compel, in the case of discovery depositions, interrogatories, and requests for production; and the motion to test the sufficiency of answers or objections, in the case of requests for admission) for testing the sufficiency of those objections.
However, a party which fails to respond to discovery requests during the time allowed therefor and which is unable to show that its failure was a result of excusable neglect, may be found, upon motion to compel filed by the propounding party, to have forfeited its right to object to the discovery requests on their merits. [ Note 1.] See also TBMP § 403.03 and TBMP § 407.01. Objections going to the merits of a discovery request include those which challenge the request as overly broad, unduly vague and ambiguous, burdensome and oppressive, as seeking non-discoverable information on expert witnesses, or as not calculated to lead to the discovery of admissible evidence. [ Note 2.] In contrast, claims that information sought by a discovery request is trade secret, business-sensitive or otherwise confidential, is subject to attorney-client or a like privilege, or comprises attorney work product, goes not to the merits of the request but to a characteristic or attribute of the responsive information. Objections based on the confidentiality of information or matter being sought are expected to be minimal in view of the automatic imposition of the Board’s standard protective order. [ Note 3.] See TBMP § 412. The Board generally is not inclined to hold a party to have waived the right to make these objections, even where the party is otherwise held to have waived its right to make objections to the merits of discovery requests. [ Note 4.]
In addition, failure to serve initial disclosures constitutes a proper ground for objection to discovery requests. [ Note 5.] As a corollary, if a party believes it need not respond to discovery requests because the propounding party has not served initial disclosures, it has a duty to object on that basis. [ Note 6.]
It is generally inappropriate for a party to respond to a request for discovery by filing a motion attacking it, such as a motion to strike, a motion to suppress or a motion for a protective order. Rather, the party ordinarily should respond by providing the information sought in those requests or portions of requests that it believes to be proper, and stating its objections to those requests or portions of requests that it believes to be improper. [ Note 7.] See also TBMP § 526.
If a party on which interrogatories have been served, for a proceeding before the Board, believes that the number of interrogatories served exceeds the limit specified in 37 C.F.R. § 2.120(d), and wishes to object to the interrogatories on this basis, the responding party must, within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. A motion for a protective order is not the proper method for raising the objection of excessive number. [ Note 8.] See TBMP § 405.03(e) (Remedy for Excessive Interrogatories). Similarly, if a party on which requests for production or requests for admissions have been served, believes that the number of requests for production or requests for admissions exceeds the limit specified in either 37 C.F.R. § 2.120(e) or 37 C.F.R. § 2.120(i), and the responding party wishes to object to the requests for production or requests for admissions on this basis, the responding party must, within the time for (and instead of) serving answers and specific objections to the requests for production or requests for admissions serve a general objection on the ground of their excessive number. A motion for a protective order is not the proper method for raising the objection of excessive number. [ Note 9.]
Nevertheless, there are some situations in which a party may properly respond to a request for discovery by filing a motion attacking it. In cases where a request for discovery constitutes clear harassment, or where a request for discovery has been served and the receiving party is not and was not, at the time of the commencement of the proceeding, the real party in interest, the party on which the request was served may properly respond to it by filing a motion for a protective order that the discovery not be had, or be had only on specified terms and conditions. [ Note 10.]
A party on which a notice of deposition was served may file either a motion to quash the notice of deposition or a motion for a protective order in certain circumstances, for example, if the notice of deposition can be shown to be insufficient, vague or unclear; if the notice would result in the inquiring party exceeding the permitted number of discovery depositions absent a stipulation or upon prior leave granted by the Board; or if the notice would result in a deposition being taken outside the discovery period. [ Note 11.] See also TBMP § 521 (Motion to Quash Notice of Deposition) and TBMP § 526 (Motion for a Protective Order).
Parties may object to or challenge the sufficiency of initial disclosures or expert disclosures by filing a motion to compel. [ Note 12.] Initial disclosures must comply with the requirements set forth in Fed. R. Civ. P. 26(a)(1)(A) and (E) and expert disclosures must comply with the requirements set forth in Fed. R. Civ. P. 26(a)(2). A motion to compel initial disclosures must be filed within thirty days after the deadline for such disclosures; a motion to compel expert testimony disclosures must be filed prior to the close of the discovery period. [ Note 13.] The filing of a motion to compel initial disclosures is a prerequisite to the filing of a motion for sanctions for failure to make initial disclosures or for making insufficient initial disclosures. [ Note 14.] For further information concerning disclosures and motions to compel disclosures, unless the disclosing party has expressly stated that initial disclosures will not be made, see TBMP § 401 and TBMP § 523.
NOTES:
1. See No Fear, Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000); Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718 (TTAB 1987); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987); Envirotech Corp. v. Compagnie Des Lampes, 219 USPQ 448, 449 (TTAB 1979); McMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ 952, 953 (TTAB 1979); Crane Co. v. Shimano Industrial Co., 184 USPQ 691, 691 (TTAB 1975).
2. See No Fear, Inc. v. Rule, 54 USPQ2d 1551, 1554 (TTAB 2000).
3. See 37 C.F.R. § 2.116(g).
4. See No Fear, Inc. v. Rule, 54 USPQ2d 1551, 1555 (TTAB 2000).
5. Dating DNA, LLC v. Imagini Holdings, LLC, 94 USPQ2d 1889, 1892 (TTAB 2010).
6. Amazon Technologies Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009) (opposer’s mistaken belief that applicant failed to serve initial disclosures does not excuse opposer’s failure to substantively respond to applicant’s discovery requests or to assert an objection on that basis).
7. See Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016) (filing of a motion for a protective order instead of responding to discovery requests in timely manner procedurally improper manner of objecting to what applicant asserts are an excessive number of interrogatories); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1863 (TTAB 2001) (burden is on the party seeking the information to establish why it is relevant); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 83 (TTAB 1984) (party must articulate objections to interrogatories with particularity); Fidelity Prescriptions, Inc. v. Medicine Chest Discount Centers, Inc., 191 USPQ 127, 128 (TTAB 1976) (a motion to strike interrogatories is improper; objections to interrogatories should be served upon the interrogating party); Volkswagenwerk AG v. Ridewell Corp., 188 USPQ 690, 691 (TTAB 1975) (opposer’s motion to be relieved of its obligation to respond to applicant’s requests for admissions denied as "manifestly inappropriate;" opposer must either respond to the requests or state its objections thereto); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974); Dow Corning Corp. v. Doric Corp., 183 USPQ 126, 127 (TTAB 1974); Atwood Vacuum Machine Co. v. Automation Industries, Inc., 181 USPQ 606, 607 (TTAB 1974).
8. 37 C.F.R. § 2.120(d); Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., 2019 USPQ2d 158663, at *3 (TTAB 2019).
9. 37 C.F.R. § 2.120(e); 37 C.F.R. § 2.120(i); Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., 2019 USPQ2d 158663, at *3 (TTAB 2019).
10. See, e.g., Fed. R. Civ. P. 26(c); 37 C.F.R. § 2.120(g); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015) (protective relief granted; discovery requests were unduly burdensome and harassing); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1566 (TTAB 2014) (protective order sought to prevent deposition of testifying expert redesignated as non-testifying expert); The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (party may file request for protective order for harassing and oppressive requests for admissions).
11. See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008) (Board granted motion to quash where deposition was noticed during the discovery period but deposition was to be taken after discovery closed). See, e.g., FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1764 (TTAB 1999) (motion for protective order) and Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2049 (TTAB 1988) (motion to quash).
12. 37 C.F.R. § 2.120(f); Influance v. Zuker, 88 USPQ2d 1859, 1861 (TTAB 2008) (petitioner’s motion to compel amended initial disclosures granted where respondent failed to identify the address or telephone number of listed witnesses, the subject matter(s) about which each has information, and the location or production of identified documents).
14. 37 C.F.R. § 2.120(h)(1) - 37 C.F.R. § 2.120(h)(2).See Kairos Institute of Sound Healing, LLC v. Doolittle Gardens, LLC, 88 USPQ2d 1541, 1543 (TTAB 2008).