Precedential No. 3: TTAB Grants Motion To Substitute New Expert Witness After Discovery Closed

In a case of first impression, the Board granted an applicant's motion to substitute a new expert witness for a previously disclosed expert and to supplement its expert disclosures. The motion was necessitated when the original expert changed her employment and her new employer prohibited employees from testifying as experts. Entravision Communications Corporation v. Liberman Television LLC, 113 USPQ2d 1526 (TTAB 2015) [precedential].

During Opposer's testimony period, applicant learned that its expert would not be able to testify. Applicant's counsel immediately set out to find a substitute expert, promptly notified opposer that a replacement expert had been found, and then filed a motion requesting that the Board allow applicant to use a substitute expert witnesses and to submit a substitute expert report.

Because applicant's motion involved substituting a witness and a new expert report after the expert disclosure date had passed, rather than supplementation of same before that date, the Board looked to FRCP 37(c)(1). Under that rule, the Board must consider whether the failure to disclose this new witness prior to the expert disclosure date was "substantially justified or is harmless."

In making that determination, the Board applied the five-factor test of Great Seats Inc. v. Great Seats Ltd., 100 U.S.P.Q.2d 1323, 1327 (T.T.A.B. 2011):

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 explanation for its failure to disclose the evidence.

The Board found that the fifth factor strongly favored applicant, because applicant had "no choice but to find a substitute expert and to file the subject motion to substitute."

As to the "surprise" to opposer, applicant represented that the new expert would testify on the same topics as the original witness (including purchaser sophistication, the manner in which media purchases are made, and the distinctions between "types of media, formats and ratings" for radio stations and television networks"), and would give virtually identical testimony. Because applicant timely disclosed that the new expert would testify on the identical matters as the original expert, opposer "had time to ascertain whether it would need to retain an expert to contradict or or rebut that expert witness on these issues and, if so, to provide its own expert disclosure." If the new expert's testimony should address a topic not previously addressed, opposer could move to exclude any testimony about which it did not have prior notice. Moreover, the Board allowed opposer time to take the discovery deposition of the new witness, if it so chose.

The evidence to be provided by the expert was, the Board found, "important," focusing on "unique topics" that were not duplicative of the testimony of applicant's other expert. And although allowing opposer to take the deposition of the new expert would interrupt the existing trial schedule, the disruption was de minimis, the parties having agreed to a two-month trial schedule and having once extended the trial schedule.

On balance, the Board found that applicant's late notice of the substitute expert witness was both substantially justified and harmless, and so it granted the motion.

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TTABlog note: How often do you think this issue will come up before the Board? Once every decade?

Text Copyright John L. Welch 2015.