Precedential No. 20: TTAB Forgives Party for Untimeliness of Discovery Requests Under New Board Rules

Once again addressing the revised TTAB Rules effective as of January 14, 2017, the Board found that the Petitioner Dissey had served its discovery requests too late. Under Rule 2.120(a)(3), written discovery requests must be served early enough in the discovery period so that responses will be due no later than the close of discovery. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, Dissey concluded that, under Rule 2.196, it had until Monday, February 20, to timely serve its discovery requests. Not so, said the Board. Nonetheless, the Board reopened discovery so that Dissey’s previously served written discovery requests could be considered timely. Estudi Moline Dissey, S.L. v. BioUrn Incorporated, 123 USPQ2d 1268 (TTAB 2017) [precedential].

Prior to January 14, 2017, written discovery requests could be served at any time during the discovery period, including on the last day. The revised Rule 2.120(a)(3), however, provides that written discovery requests must be served “early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery.” It also provides that responses to written discovery requests must be served within thirty days from the date of service of such discovery requests.

Rule 2.196 provides that when the last day of a period for taking action is fixed by statute or rule and falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken on the next business day. However, the Board pointed out, in light of the revision of Rule 2.120(a)(3), Rule 2.196 no longer applies to the deadline for service of written discovery requests.

Thus, under the revised rules, “discovery requests must be served with at least thirty-one days remaining in the discovery period, including the date of service, regardless of whether the day of service falls on a weekend or holiday. The date of service of the requests is not counted as part of the response period, so the first day of the 30-day response period is the day after service.”

In this case, Dissey was required to serve its discovery requests no later than Sunday, February 19, 2017 for Respondent BioUrn to have the full thirty days to respond by the close of discovery on March 21, 2017. Because Dissey served its requests on February 20, BioUrn’s responses were due on March 22, after the close of discovery, in violation of Rule 2.120(a)(3). Therefore, BioUrn’s objection to the requests was proper.

The Board noted, however, that Dissey’s delay of one day in serving its discovery requests appears to have arisen from a misunderstanding of how Rule 2.196 applies to the revised discovery rules. Because the case was commenced under the old rules, the current dispute arose during the transition to the new rules, and the dispute involved a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing BioUrn time to respond to Dissey’s written discovery requests.

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TTABlog comment: Apparently it doesn't matter whether discovery closes on a weekend or D.C. holiday. The thirty-one days is counted back from that discovery cut-off date.

Note that this order was issued on July 10, 2017. The Board allowed respondent a "full thirty-day period" to respond to the written discovery requests, and set the due date as August 11, 2017. But that is thirty-two days from the date of the order, not thirty. So I am further confused.

Do you think the Board did enough to anticipate this type of problem or misunderstanding, and to explain how the new rules apply? Personally, I am still also confused about the new declaration testimony rules, particularly as applied to expert witnesses, third-party witnesses, and foreign witnesses.

Text Copyright John L. Welch 2017.