Precedential No. 42: TTAB Lets Respondent off the Hook, Accepts Late-Served Admission Responses

Exercising its discretion under Rule 36(b), Fed. R. Civ. P., the Board granted Respondent Scripps Networks' motion to withdraw its effective admissions and to accept its late-served responses. As a result, Petitioners' motions for summary judgment and for leave to add a claim of fraud, based on the effective admissions, were eviscerated. Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306 (TTAB 2007) [precedential].


The parties had agreed to two extensions of time for Respondent Scripps' responses to Petitioners' requests for admissions. Scripps then mistakenly assumed that Petitioners would agree to a third extension when counsel for Petitioners returned from an overseas business trip. Wrong. The requested admissions were thus deemed admitted.

Scripps moved to re-open its time for response or alternatively to withdraw its admissions and submit amended responses. Petitioners moved for summary judgment and for leave to add a claim of fraud, predicated on the admissions resulting from the failure to respond.

Scripps had two possible avenues of relief: move to re-open its time to respond based on excusable neglect under FRCP 6(b)(2), or withdraw and amend its admissions under FRCP 36(b). Scripps tried both.

As to the motion to re-open under Rule 6(b)(2), the Board ruled that Scripps had failed to show excusable neglect. Rather than assume it would get another extension, and knowing that Petitioner's counsel was unavailable, Scripps should have filed a formal motion to extend.

Turning to Rule 36(b), the Board may permit withdrawal or amendment of admissions when "the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits." Withdrawal is at the Board's discretion.

With regard to the first prong, the Board found that without withdrawal of the admissions, "respondent would be held to have admitted critical elements of petitioner's asserted claims." Respondent's proposed responses include denials of many of the previously-admitted facts, "thereby demonstrating that the supposedly admitted materials are actually disputed."

Therefore this prong was satisfied. [TTABlog query: can a prong be satisfied?]

As to prong 2, the Board ruled that Petitioners would not be prejudiced by allowing withdrawal of the effective admissions and acceptance of the later-served responses. Petitioners' motions were filed before the close of discovery. Thus any potential prejudice "can be mitigated by extending the discovery period as necessary to permit petitioners to take any additional follow-up discovery based on respondent's admission."

Petitioners pointed to "no particular prejudice in the form of special difficulties it could potentially face caused by the need to obtain evidence." The fact that Petitioners relied on the admissions in preparing their motions for summary judgment "does not rise to the level of 'prejudice' as contemplated under Rule 36(b)." And so prong two was met. [TTABlog query: can a prong be met?]

The Board accepted the late-served admission responses, and consequently denied Petitioners' summary judgment motion and its leave to add a fraud claim (both based on the now-withdrawn effective admissions).

TTABlog comment: I guess the lesson here is, if you are not going to respond to admission requests on time, make sure you fail to respond to all of them, or at least the important ones. And then seek to amend before the close of discovery.

Seriously, though, I think the Board should have expressly included in its Rule 36(b) analysis, a discussion of Respondent's excuse for not timely responding. Before the Board exercises its discretion to allow late responses, it should at least ask for some explanation as to why the responses were not made on time. The Board discusses Respondent's excuse with regard to Rule 6(b)(2), but not with regard to Rule 36(b) (although it does say that it has taken into account "all the circumstances presented here").

Text Copyright John L. Welch 2007.