United States: Precedential No. 20: TTAB Forgives Party For Untimeliness Of Discovery Requests Under New Board Rules

Last Updated: August 9 2017
Article by John L. Welch

Addressing the revised TTAB Rules that came into effect on January 14, 2017, the Board found that the petitioner had served its discovery requests too late. Rule 2.120 now requires that written discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, Petitioner concluded that it had until Monday, February 20, to timely serve its discovery requests. Not so, said the Board. Nonetheless, the Board reopened discovery so that Petitioner's previously served written discovery requests could be considered timely. Estudi Moline Dissey, S.L. v. BioUrn Incorporated, Cancellation No. 92061508 (July 10, 2017) [precedential].

Prior to January 14, 2017, written discovery requests could be served at any time during the discovery period, including the last day. The revised Rule 2.120(a)(3) now provides that written discovery requests must be served "early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery."

Rule 2.196, which provides that when the last day of a period for taking action is fixed by statute or rule and falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken on the next business day. Previously that rule applied to the close of discovery date and thus to the last day for service of written discovery requests.

Currently, however, Rule 2.120(a)(3) contains two relevant element bearing on the issue of when a party may serve discovery. First, a responding party must serve its responses within 30 days of service of the requests. Second, discovery must be served early enough so that responses will be due by the close of discovery date. These provisions must be read together to allow the responding party its full response period.

Thus, discovery requests must be served with at least thirty-one days remaining in the discovery period, including the date of service, regardless of whether the day of service falls on a weekend or holiday. The date of service of the requests is not counted as part of the response period, so the first day of the 30-day response period is the day after service.

In short, the party serving discovery must ensure that the last day for responding to discovery falls on or before the close of discovery.

In this case, petitioner was required to serve its discovery requests no later than Sunday, February 19, 2017 for respondent to have the full thirty days to respond by the close of discovery on March 21, 2017. Because Petitioner served its requests on February 20, respondent's responses were due on March 22, beyond the close of discovery, in violation of Rule 2.120(a)(3). Therefore, respondent's objection to those requests was proper.

The Board noted, however, that petitioner's delay of one day in serving its discovery requests appears to have arisen from a misunderstanding of how Rule 2.196 applies to the revised discovery rules. Because the case was commenced under the old rules, and the current dispute arises during the transition to the new rules, and the dispute involves a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing respondent time to respond to petitioner's written discovery requests.

TTABlog comment: Apparently it doesn't matter whether discovery closes on a weekend or D.C. holiday. The thirty-one days is counted back from that discovery cut-off date. And apparently the responding party does not get extra time to respond if the due date for responses falls on a weekend or holiday, although I find that less than clear from this ruling.

Note that this order was issued on July 10, 2017. The Board allowed respondent a "full thirty-day period" to respond to the written discovery requests, and set the due date as August 11, 2017. But that is thirty-two days from the date of the order, not thirty. So I am further confused.

Do you think the Board did enough to anticipate this type of problem or misunderstanding, and to explain how the new rules apply? Personally, I am still also confused about the new declaration testimony rules, particularly as applied to expert witnesses, third-party witnesses, and foreign witnesses.

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