533.02 On Other Grounds
533.02(a) On Ground of Improper or Inadequate Notice of Witness Testimony Taken by Oral Testimony Deposition
37 C.F.R. § 2.123(c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse 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. ...
37 C.F.R. § 2.123(e)(3) Examination of witnesses. 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.
- (i) 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).
- (ii) 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.
If pretrial or rebuttal disclosures or the notice of examination of witnesses by oral testimony 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 oral 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 oral 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 an oral testimony deposition for improper or inadequate notice must request the exclusion of the entire testimony 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 an oral testimony deposition based upon improper or inadequate pretrial disclosures or 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 oral 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 C.F.R. § 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, 1696-97 (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 C.F.R. § 2.123(e)(3).
3. See 37 C.F.R. § 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.)
533.02(b) On Ground of Failure to Disclose Witness in Expert, Pretrial or Rebuttal Disclosures
37 C.F.R. § 2.120(a)(1) In general. ...The Board will specify the deadline … for making … expert disclosure.
37 C.F.R. § 2.121(e) Assignment of times for taking testimony and presenting evidence. A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. …
37 C.F.R. § 2.123(e)(3) Examination of Witnesses. 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.
- (i) 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).
- (ii) 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.
Pretrial and rebuttal 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 1.] 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 along with the subjects of that information that the disclosing party may use to support its claims or defenses." [ Note 2.]
With regard to expert witnesses, as with fact witnesses, the deadline for expert disclosure will be set by the Board in the notice of institution. [ Note 3.] 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 4.]
If timely-served expert disclosures are deficient, the Board expects the parties to cooperate to resolve the matter. It is not the Board’s policy to exclude either the testimony to be proffered by the expert witness or the information originally excluded when there has been supplementation of the deficient expert disclosure, either upon the initiative of the disclosing party or after notification by the adverse party that the disclosure was incomplete. [ Note 5.] A disclosing party’s failure to inform the Board of timely disclosure of an expert witness is not a ground to exclude the testimony of such witness. [ Note 6.]
If pretrial or rebuttal disclosures are improper or inadequate with respect to a particular witness, in the case of an oral testimony deposition, the adverse party may cross-examine that witness under protest while reserving its right to object to receipt of the testimony into 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 7.] When testimony is presented by affidavit or declaration, but was not covered by an earlier pretrial or rebuttal disclosure, the remedy is the prompt filing of a motion to strike. [ Note 8.]
Parties should note that, in accordance with the above discussion, objections to an oral testimony deposition based upon improper or inadequate notice may also be raised by a motion to quash. It is best to raise the matter promptly to avoid expending resources associated with taking a deposition should a motion to quash or strike pretrial disclosures be granted. [ Note 9.] See TBMP § 521 and TBMP § 533.02(a).
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 § 413.01and TBMP § 502.06(a).
The Board, depending on the circumstances presented, may be guided by the following five-factor test enunciated in Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592 (4th Cir. 2003) and adopted by the Board in Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323 (TTAB 2011): "1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing party’s explanation for its failure to disclose the evidence." [ Note 10.]
The Board often allows parties to cure technical deficiencies in connection with otherwise timely matters. If technical deficiencies with pretrial disclosures are raised promptly, the matter may be resolved, either between the parties or with Board intervention, before the parties incur the expense associated with taking a testimonial deposition. [ Note 11.]
NOTES:
1. See 37 C.F.R. § 2.121(e); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1371-72 n.1 (TTAB 2011); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1444 (TTAB 2009).
2. Fed. R. Civ. P. 26(a)(1). See 37 C.F.R. § 2.116(a); Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175, 1178 (TTAB 2010); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1443 n.1 (TTAB 2009).
4. See 37 C.F.R. § 2.120(a)(2).
5. See General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
6. See Monster Energy Co. v. Martin, 125 USPQ2d 1774, 1776 (TTAB 2018); General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890, 1893 (TTAB 2011).
7. See 37 C.F.R. § 2.123(e)(3); Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1372-73 n.4 (TTAB 2011); Jules Jurgensen/Rhapsody, Inc. v. Baumberger, 91 USPQ2d 1443, 1445 (TTAB 2009) (testimony deposition of witness stricken where witness was not identified in pretrial or initial disclosures). Cf. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1928 (TTAB 2011) (objection on the basis that the witness had not been previously disclosed waived where not renewed in main brief and raised for first time in rebuttal brief), aff’d, 188 F.Supp. 3d 22 (D.D.C. 2016), aff’d, 743 F. App’x. 457, 128 USPQ2d 1172 (D.C. Cir. 2018); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where applicant first raised an untimeliness objection in its brief on the case, objection held waived, since the premature taking of testimony deposition two days prior to opening of testimony period could have been corrected upon seasonable objection).
8. See 37 C.F.R. § 2.121(e); 37 C.F.R. § 2.123(e)(3)(i). See Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *2-3 (TTAB 2020) (respondent timely moved to strike the testimony of petitioner's rebuttal witness on the basis that petitioner failed to disclose her as a potential witness in petitioner's pretrial rebuttal disclosures; Board deferred ruling until final decision); Societe Des Produits Nestle S.A. v. Cándido Viñuales Taboada, 2020 USPQ2d 10893, at *7 (TTAB 2020) (objection that evidence submitted with testimony declaration was not adequately disclosed in pretrial disclosures overruled as untimely when first raised in trial brief; objection is procedural and should have been made via motion to strike promptly after testimony declaration and exhibits were filed).
9. 37 C.F.R. § 2.121(e). Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1240 (TTAB 2012) (judicial economy served by promptly filing a motion to quash or to strike the pretrial disclosures as insufficient before the deposition takes place).
10. See Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir. 2003). See also MicroStrategy, Inc. v. Business Objects, S.A., 429 F.3d 1344, 1357, 77 USPQ2d 1001, 1009-10 (Fed. Cir. 2005) (applying Southern States factors in excluding non-expert damages evidence as a sanction for late disclosure); Kate Spade LLC v. Thatch, LLC, 126 USPQ2d 1098, 1102-04 (TTAB 2018) (applying the Great Seats test, motion to strike pretrial disclosures and exclude subsequently filed testimony declarations denied because failure to disclose witnesses was both substantially justified and harmless); Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1246 (TTAB 2012) (after conducting analysis, the Board concluded that opposer’s failure to identify witness prior to pretrial disclosure was neither harmless nor substantially justified; combined motion to strike pretrial disclosure and to quash notice of testimony granted);Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327-28 (TTAB 2011) (after conducting the analysis, the Board found that opposer’s failure to name one witness until original pretrial closures and twenty-six witnesses until supplement to amended pretrial disclosures was neither harmless nor substantially justified and motion to quash granted as to twenty-six witnesses but testimony of one witness, identified months before in original pretrial disclosure, not excluded provided adverse party be given an opportunity to take a discovery deposition).
11. See Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen Inc., 98 USPQ2d 1370, 1373-74 n.4 (TTAB 2011).