Supplemental Expert Reports Cannot Be Submitted Via a Notice of Reliance

Author: Morgan E. Smith

The TTAB recently clarified its procedures for making evidence of record through notices of reliance. After the close of its testimony period, Applicant sought to reopen the period in order to file an additional notice of reliance. The exhibits attached to this notice of reliance included a “Supplemental Expert Report” and the documents referenced in the report. The Board excluded the Supplemental Expert Report because it was not proper subject matter for introduction via a notice of reliance. The Board then considered the possibility that the report was admissible because the parties had so stipulated. The report was not admissible on this basis because the parties’ stipulations covered the expert’s initial report, but did not address the admissibility of any additional expert reports, affidavits, or declaration testimony. The report also did not qualify as proper supplementation under the Federal Rules of Civil Procedure because, by Applicant’s own admission, it contained additional opinions designed to rebut Opposer’s expert report, rather than correct any inaccuracies in Applicant’s initial report. The documents referenced in the “Supplemental Expert Report” were admissible because they were printed publications and constituted proper subject matter for a notice of reliance. The Board struck the “Supplemental Expert Report” and reminded the Applicant that it could have avoided this problem altogether had it simply taken the expert’s deposition during its testimony period.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged , , , , ,

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: