Precedential No. 34: TTAB Grants Motion to Strike Belated Supplemental Expert Report

In another decision involving the suddenly hot topic of expert witnesses and their reports, the Board granted an opposer's motion to strike a "supplemental expert report" submitted with applicant's notice of reliance. The Board observed that the document, in the form of a testimony declaration, was not eligible for submission via notice of reliance, and further that the report did not fall within the agreement between the parties allowing submission of expert declarations. Nor was the supplemental report merely an attempt to correct the expert's initial report. The supplemental report was therefore not timely submitted, nor was the failure to submit the report in timely fashion "substantially justified or ... harmless." Gemological Institute of America, Inc. v. Gemology Headquarters International, LLC, 111 USPQ2d 1559 (TTAB 2014) [precedential].

Applicant GHI submitted, as an exhibit to its notice of reliance, the "Supplemental Expert Report of Carole Chaski, Ph.D.," in order to rebut statements made during the testimony of opposer's expert. Testimony by declaration is not proper subject matter for introduction via notice of reliance. However, Rule 2.123(b) says that if the parties agree in writing, the testimony of a witness may be submitted in declaration form.

Stipulation: The parties stipulated to the admissibility of certain expert reports of three experts, including Dr. Chaski, but they did not stipulate to the admissibility of the Chaski supplemental report (which was not in existence at the time of the stipulations). The Board ruled that the stipulations of the parties, which referred to specific dated reports, did not encompass the Chaski supplemental report. There was no mention of supplemental reports in the stipulations.

FRCP 26(e)(1)(A): A party may supplement or correct its Rule 26 expert report "if the party learns that in some material respect the disclosure or response is incomplete or incorrect ...." Any changes to the information must be disclosed by the time the party's pretrial disclosures are due. FRCP 26(e)(2).

Supplementation means correcting inaccuracies or filling in an incomplete report based on information that was unavailable at the time of the initial disclosure. A supplemental report that seeks to clarify or provide new examples to bolster an expert opinion is not proper supplementation. Here, the Chaski supplemental report contained additional opinions intended to rebut the other side's expert testimony. Therefore it did not qualify as a supplemental expert report under Rules 26(e)(1)(A) and 26(e)(2).

FRCP 37(c)(1): An improper supplemental report may be excluded unless the failure to timely file the expert's opinion was "substantially justified or ... harmless." In making that determination, the Board is guided by the five-factor test adopted in Great Seats:

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 [or the late disclosing party’s] explanation for its failure to disclose the evidence.

Here the late disclosure did cause unfair surprise, the cure for which would be re-opening discovery to allow opposer to take an additional deposition of Dr. Chaski. That cure, however,, would be disruptive to the trial because discovery closed "long ago" and the main trial periods had been completed. While the Chaski supplemental report may be important, the parties had already stipulated to the admissibility of her original report and her original declaration testimony. Finally, applicant did not offer an adequate excuse for the delay in providing the supplemental report. The Board therefore concluded that the untimely disclosure of the supplemental report was neither substantially justified nor harmless.

And so the Board granted the motion to strike.

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TTABlog note:  How often do you think this issue will come up in future cases?

Text Copyright John L. Welch 2014.