Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production

In another precedential discovery ruling (the third of 2008), the Board issued sanctions against M.C.I. Foods, Inc. for failure to produce documents as required by the Board's discovery orders, but stopped short of issuing judgment against the offender. M.C.I. Foods, Inc. v. Bunte, 86 USPQ2d 1044 (TTAB 2008) [precedential].


Brady Bunte, the respondent in one cancellation proceeding and petitioner in the other, filed a motion to compel in each case when M.C.I. failed to respond at all to Bunte's interrogatories and document requests. M.C.I. did not contest the motions, and in May 2007 the TTAB ordered M.C.I. to respond, without objection, to the discovery demands within thirty days.

After Bunte's motions were filed, but before the Board's orders were issued, M.C.I. served untimely responses and objections, stating that the documents would be made available in the future. However, documents were not produced, even after the Board issued its orders; nor did M.C.I. provide responses without objection.

The Board noted that, after a motion to compel is granted, "production must be made in the manner requested by the inquiring party, unless otherwise directed by the Board." Here that meant at the offices of Bunte's counsel.

On September 27, 2007, M.C.I. said that it was completing the assembly of documents, and was "executing the protective order that will govern some of the documents produced."

Bunte filed his motions for sanctions on October 19, 2007, pointing out that M.C.I. had yet to produce documents and had served interrogatory responses that included numerous untimely objections.

The Board found that M.C.I. had violated its orders granting Bunte's motions to compel. M.C.I. had "effectively" maintained its objections to various interrogatories and document requests, failed to produce a privilege log, and did not make documents available to Bunte until more than three months after the Board issued its order.

"M.C.I.'s offer to merely make the requested documents available at an unspecified time and place effectively constituted an objection on the merits, which was prohibited by the Board's orders."

The Board declined, however, to enter judgment as a sanction because "this ultimate sanction would go to far." Instead it issued the following lesser sanctions:

"(1) Within TWENTY DAYS of the mailing date of this order, M.C.I. shall: (a) prepare and serve written responses to Bunte’s discovery requests, without objection on the merits; (b) copy all responsive documents at its own expense and deliver them to Bunte; and (c) serve a privilege log.

(2) The Board will accept any documents produced by M.C.I., if filed during trial by Bunte, as authentic and admissible.

(3) M.C.I. is prohibited from relying at trial on any documents requested by Bunte during discovery but not produced by M.C.I. within the time set for complying with the Board orders granting Bunte’s motions to compel.

As a result of this prohibition, M.C.I. may not introduce documents requested by Bunte during discovery as an exhibit to a testimonial deposition or by notice of reliance. By contrast, Bunte may rely on any and all documents produced by M.C.I. M.C.I. is not, however, precluded from relying on documents which were reasonably not part of a document production request by Bunte during discovery."

The Board then re-set discovery and trial dates.

TTABlog comment: I think the Board should have explained why it chose not to enter judgment here. The Board cited Elec. Indus. Ass'n v. Potega, 50 USPQ2d 1775, 1777 (TTAB 1999) without discussion, but that case is wholly distinguishable from this one. For one thing, there the offending party lacked counsel, and for another his offense was "primarily a technical violation" of the Board's order.

On the other hand, I think that having to read the Board's decision here could be considered an additional sanction on all concerned. Seriously though, the part about the "privilege log" particularly caught my eye. My goodness, is TTAB litigation growing to be as complicated and expensive as federal court litigation? I hope not.

Text Copyright John L. Welch. 2008.