Precedential No. 33: Party Withdraws Designation of Testifying Expert Who Provided Report: No Deposition Allowed, Says TTAB

In this Section 2(d) opposition to registration of GAGA JEANS for jeans, when opposer noticed the discovery deposition of applicant's named rebuttal expert, applicant filed a motion for a protective order precluding the deposition on the ground that the expert was not a testifying expert witness. Applicant had, however, named that expert as a testifying expert and had provided an expert report to opposer, but it subsequently stated that the expert would not be testifying and that she was employed only to aid applicant in preparation for trial. The Board granted the motion and issued a protective order precluding the deposition. Ate My Heart, Inc. v. GA GA Jeans Limited, 111 USPQ2d 1564 (TTAB 2014) [precedential].

Opposer's Lady Gaga
Civ. P. 26(a)(2) as a trial expert it was entitled to take the expert’s deposition in order to “cross-examine [her] on both her rebuttal expert report and the raw data that appears to be an affirmative expert report ....” The question for the Board was "whether a witness who was identified as a testifying expert and who produced an expert report, can be redesignated as a non-testifying or consulting expert and thereby shielded from discovery." The Board said yes.

FRCP 26(b)(4)(A) provides that a party may depose an expert whose opinions may be presented at trial. FRCP 26(a)(2)(B) requires a report from such an expert. These rules are designed to allow the opposing party an opportunity to adequately prepare for cross-examination of the expert.

FRCP 26(b)(4)(D) states that a party may not discover the facts know by, or opinions of, an expert retained in anticipation of litigation or to prepare for trial and who is not expected to be called as a trial witness. This rule is designed "to promote fairness by preventing access to another party's diligent trial preparation." And there is obviously no need for the opposing party to prepare for the cross-examination of a non-testifying expert.

The Board observed that applicant has the prerogative of not calling this expert for her testimony. The Board found that applicant had, by its letter to opposer and its submission to the Board, redesignated this individual as a non-testifying expert.

The courts are split on whether discovery may be allowed for such a redesignated expert after the expert's opinion has been disclosed. One line of cases prevents discovery except in "exceptional circumstances" under Rule 26(b)(4)(D)(ii). The other holds that the submission of the expert "takes the expert out of the exceptional circumstances category of Rule 26(b)(4)(D)(ii) as the expert's opinions are now known." These courts apply a balancing test  that mirrors F. R. Evid. 403 (whether the probative value of the evidence is substantially outweighs the danger of unfair prejudice) in considering whether to allow the deposition of a redesignated expert.

The Board adopted the first approach: only under exceptional circumstances may a party depose a redesignated non-testifying expert. It noted that the need for cross-examination of the expert to avoid surprise at trial "is simply not implicated when a redesignated expert will not testify."

Here, opposer made no showing of exceptional circumstances under Rule 26(b)(4)(D)(ii), and so the Board granted the motion for a protective order, precluding opposer from deposing the re-designated expert.

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TTABlog note:  How often do you think this issue will come up in a TTAB proceeding? For a case involving the question of whether a witness qualifies as an "expert retained or specially employed to provide expert testimony," and who therefore must provide an expert report, see the RTX Scientific case, TTABlogged here.

Text Copyright John L. Welch 2014.