Wednesday, April 10, 2013

Precedential No. 15: TTAB Requires FRCP 26(a)(2)(B) Written Report of "Retained" Expert Witness

The Board granted Respondent's motion to compel Petitioner to serve an expert written report pursuant to FRCP 26(a)(2)(B), ruling that the question of whether a party's witness is "retained or specially employed to provide expert testimony" does not depend on whether the party controls the expert's time or compensates the expert. Rather it turns on whether the expert opinion testimony "arises from his enlistment as an expert and not from an on-the-scene involvement in any incidents giving rise to the litigation." RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., 106 USPQ2d 1492 (TTAB 2013) [precedential].


Petitioner filed and served an expert disclosure statement identifying one Roger Holder as an "unretained expert" pursuant to TBMP Section 401.03 and FRCP 26(a)(2)(C). Respondent moved to compel a written expert report signed by Mr. Holder under FRCP 26(a)(2)(B).

Respondent asserted that Petitioner provided only limited information regarding the witness, and not the detailed report that Rule 26(a)(2)(B) requires of a witness "retained or specially employed to provide expert testimony in the case or one whose duties as the party's employee regularly involve giving expert testimony."

Petitioner admitted that Mr. Holder is a third-party witness capable of giving expert testimony, but asserted that it did not retain Mr. Holder, that he is not specially employed by Petitioner, that he has not been and will not be compensated, and that he has not prepared any written report. Petitioner further asserted that the Rule does not require written reports of "unretained" expert witnesses, and that Respondent may take subpoena Mr. Holder for information.

The Board observed that, in a TTAB proceeding, a party's planned use of an expert witness is largely governed by FRCP 26(a)(2). The 2010 amendment to that Rule makes clear that there is a distinction between an expert witness who is required to produce a report and one who is not.

Under Fed. R. Civ. P. 26(a)(2)(B), an expert “disclosure must be accompanied by a written report—prepared and signed by the witness—if the witness is one retained or specially employed to provide expert testimony in the case or one whose duties as the party’s employee regularly involve giving expert testimony."

Thus the courts distinguish between "retained and specially employed" experts and "unretained experts." Only the former must provide written reports (containing the information listed in FRCP 26(a)(2)(B)).

In 2010, Rule 26(a)(2)(c) was added to emphasize that a Rule 26(2)(a)(2)(B) report is required only from an expert described in (a)(2)(B). So then the question was, when is an expert witness "retained or specially employed"? The First Circuit in Downey v. Bob's Discount Furniture Holdings, Inc., 633 F.3d 1, 6-7 (1st Cir. 2011), interpreted the term as follows: "[Where] the expert comes to the case as a stranger and draws opinions on facts supplied by others, in preparation for trial, he reasonably can be viewed as retained or specially employed for that purpose." That witness is distinguished from a percipient witness who happens to be an expert: for example, a treating physician, or treating pesticide professionals, or treating water damage remediation professionals.

TTAB proceedings are based on a plaintiff's belief of damage arising from registration of a mark. Unlike tort of personal injury cases, there are usually no specific incidents (e.g., auto accidents, floods, or bedbug infestations) that lead to the proceedings. So in Board proceedings, an expert is typically recruited not on the basis of personal knowledge of an event, but because of his or her particular knowledge of a relevant field. Therefore, the Board concluded, that type of expert is a "retained" expert for purposes of FRCP 26(a)(2)(B), and a written report is required.

Here, Mr. Holder was identified as an expert in the HVAC/R industry who would testify about the functionality and lack of distinctiveness of Respondent's claimed trade dress (the blue color of cleaning preparation for air conditioning and refrigeration coils).

Mr. Holder had no "on-the-scene" involvement in any incidents giving rise to the proceeding. He is a "retained" expert witness and his report must be provided. And contrary to Petitioner's argument, the question of whether Mr. Holder is a "retained" witness does not hinge on whether Petitioner controls his time or compensates him.

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Text Copyright John L. Welch 2013.

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