404 Discovery Depositions

404.01 When Permitted and By Whom

Discovery depositions must be both noticed and taken prior to the expiration of the discovery period (unless the parties stipulate that the deposition may be taken outside of the period). [ Note 1.] See TBMP § 403.02. Discovery depositions generally may be taken by any party, of any adverse party or any relevant non-party.

As a matter of convenience and courtesy and to avoid scheduling conflicts, the parties should attempt to schedule depositions by agreement rather than have the deposing party unilaterally set a deposition date. [ Note 2.] However, it is not unusual for the deposing party to notice a deposition and subsequently discuss alternative dates with the party to be deposed.

See TBMP § 408 regarding the parties’ duty to cooperate in discovery.

NOTES:

1. See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008). See also Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (it is clear from the language of Fed. R. Civ. P. 30 and 33 that while interrogatories need only be "served" during the discovery period, depositions must be "taken" during the discovery period).

2. Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (parties have a duty to cooperate in resolving conflicts in the scheduling and taking of depositions); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 (TTAB 1987) (parties ordered to work out a mutually agreeable schedule for taking of discovery depositions).

404.02 Who May be Deposed

Fed. R. Civ. P. 30(a). Depositions by Oral Examination. When a Deposition May Be Taken.

(1) Without Leave. A party may, by oral questions, depose any person, including a party, without leave of court except as provided in Rule 30(a)(2). The deponent’s attendance may be compelled by subpoena under Rule 45.
(2) With Leave. A party must obtain leave of court, and the court must grant leave to the extent consistent with Rule 26(b)(2):
- (A) if the parties have not stipulated to the deposition and:
  - (i) the deposition would result in more than 10 depositions being taken under this rule or Rule 31 by the plaintiffs, or by the defendants, or by the third-party defendants;
  - (ii) the deponent has already been deposed in the case; or
  - (iii) the party seeks to take the deposition before the time specified in Rule 26(d), unless the party certifies in the notice, with supporting facts, that the deponent is expected to leave the United States and be unavailable for examination in this country after that time; or
- (B) if the deponent is confined in prison.

A discovery deposition generally may be taken of any person, whether or not the person is a party, and whether or not the person resides in the United States. However, the Board’s permission must be obtained under the following circumstances:

(1) If the person to be examined is confined in prison; or
(2) If, without written stipulation of the parties, (i) a proposed deposition would result in more than ten discovery depositions being taken by the plaintiffs, or by the defendants, or (ii) the person to be examined already has been deposed in the case. [ Note 1.]

Deposition of a non-party witness residing in the United States may be taken by subpoena under Fed. R. Civ. P. 45 or, or on notice alone, if the non-party witness agrees to appear voluntarily. See TBMP § 404.03(a)(2).

For information concerning limitations on the right to discovery, see TBMP § 402.02.

NOTES:

1. See Fed. R. Civ. P. 30(a).

404.03 Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent

404.03(a) Person Residing in the United States – In General

37 CFR § 2.120(b) Discovery deposition within the United States .

The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree by stipulation. ...

The discovery deposition of a person shall be taken in the federal judicial district where the person resides or is regularly employed or at any place on which the parties agree by stipulation. [ Note 1.] The deposition may be taken either orally, or on written questions in the manner described in 37 CFR § 2.124. [ Note 2.]

For information on the taking of a discovery deposition on written questions, see TBMP § 404.07.

NOTES:

1. 37 CFR § 2.120(b). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998) (general rule in federal district court that a plaintiff is required to make itself available for examination in district where suit is brought does not apply in Board proceedings).

2. See Fed. R. Civ. P. 30 and 31.

404.03(a)(1) Person Residing in the United States – Party

If a proposed deponent residing in the United States is a party, or, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, the deposition may be taken on notice alone. [ Note 1.] When such a proposed deponent fails to appear for a noticed deposition, the deposing party may seek to compel attendance by a motion to compel. See TBMP § 523.

For information concerning notices of deposition, see TBMP § 404.05.

For information concerning testimonial depositions of adverse party witnesses residing in the United States, seeTBMP § 703.01(f)(2).

NOTES:

1. 37 CFR § 2.120(b); Fed. R. Civ. P. 30(b); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976).

404.03(a)(2) Person Residing in the United States – Non-party

35 U.S.C. § 24 Subpoenas, witnesses.

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.

37 CFR § 2.120(b) Discovery deposition within the United States .

... The responsibility rests wholly with the party taking discovery to secure the attendance of a proposed deponent other than a party or anyone who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure.

The responsibility rests wholly with the deposing party to secure the attendance of a proposed deponent residing within the United States unless the proposed deponent is a party, or a person who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party. [ Note 1.] If the proposed deponent is not willing to appear voluntarily, the deposing party must secure the deponent's attendance by subpoena, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [ Note 2.]

The subpoena must be issued from the United States district court in the federal judicial district where the deponent resides or is regularly employed. [ Note 3.]

If a person named in a subpoena compelling attendance at a discovery deposition fails to attend the deposition, or refuses to answer a question propounded at the deposition, the deposing party must seek enforcement from the United States District Court that issued the subpoena; the Board has no jurisdiction to enforce the subpoena. [ Note 4.]

For information regarding the taking of a non-party testimonial deposition of a non-party witness residing in the United States, see TBMP § 703.01(f)(2).

NOTES:

1. 37 CFR § 2.120(b).

2. Fed. R. Civ. P. 30(a)(1) and Fed. R. Civ. P. 45; Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2048-49 (TTAB 1988) (deposition of former employee can only be taken by voluntary appearance or by subpoena). Cf. regarding testimony depositions, Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (testimony deposition on written questions of adverse party); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (testimony deposition of adverse witness).

Please Note: To the extent that Fed. R. Civ. P. 45(a)(2) and 45(f), as amended in 2013, conflict with the provisions of 35 U.S.C. § 24, the statute is controlling. See 37 CFR § 2.116(a) ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

3. See generally cases cited in preceding Note 2.

4. See, e.g., Ate My Heart v. GA GA Jeans, 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (notice of deposition of unwilling non-party witness must include subpoena, and related motions must be filed with district court that issued subpoena, not Board); Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942 n.4 (TTAB 2013) (Board cannot modify or quash a subpoena issued by a district court); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (motion to quash subpoenaed third-party depositions due to scheduling problems denied). See also In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201 (D. Del. 1973) (asserting jurisdiction to enforce subpoenas for TTAB proceeding); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971).

404.03(b) Person Residing in a Foreign Country – Party

37 CFR § 2.120(c) Discovery deposition in foreign countries .

(1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by §2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders or the parties stipulate, that the deposition be taken by oral examination.

The discovery deposition of a natural person who resides in a foreign country, and who is a party, or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party may be taken on notice alone. [ Note 1.]

However, if the discovery deposition of such a person is taken in a foreign country, it must be taken on written questions, in the manner described in 37 CFR § 2.124, unless the Board, on motion for good cause, orders, or the parties stipulate, that the deposition be taken by oral examination. [ Note 2.] Similarly, a testimony deposition taken in a foreign country must be taken by deposition on written questions, as described in 37 CFR § 2.123(a)(2) unless the Board, on motion for good cause orders the deposition taken by oral examination, or the parties so stipulate. See TBMP § 703.01(b). It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Citizens Consular Services, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

For information concerning the procedure for taking discovery depositions on written questions, see TBMP § 404.07.

For information on a motion to take a foreign deposition orally, see TBMP § 520. For information on taking the testimony deposition of a willing or unwilling adverse party or non-party witness in a foreign country through the letter rogatory procedure or by procedures provided under the Hague convention or other applicable treaties, see TBMP § 703.01(g).

The Board will not order a natural person residing in a foreign country to come to the United States for the taking of his or her discovery deposition. [ Note 3.]

Parties seeking to take the discovery deposition of a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude the taking of such depositions. [ Note 4.] In determining when it is appropriate to impose sanctions for non-compliance with discovery due to a conflict with foreign laws, the following factors are considered: (1) the good faith of the non-complying party; (2) whether the non-complying party would incur foreign criminal liability; and (3) whether alternative sources of information are available. [ Note 5.]

NOTES:

1. See 37 CFR § 2.120(c) and 37 CFR § 2.124.

2. 37 CFR § 2.120(c)(1). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998). See also Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1925 (TTAB 1989) (by motion); Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (by stipulation).

3. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978) (deposition may only be taken by written questions unless otherwise stipulated, or unless the party is present in the U.S.). See also Miller v. N. V. Cacao-En Chocoladefabrieken Boon, 142 USPQ 364, 365-66 (E.D.N.Y. 1964); Cf. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises, Ltd, 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (foreign corporation party required to obey a subpoena issued by the district court, pursuant to Rule 30(b)(6) notice, to appear in the United States to give trial testimony).

4. Cf. Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 200-01 (1958) ( Swiss government ordered Swiss plaintiff in U.S. court proceeding not to produce certain documents).

5. Cf. Cochran Consulting Inc. v. Uwatec USA Inc., 102 F.3d 1224, 41 USPQ2d 1161, 1163-67 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).

404.03(c) Person Residing in a Foreign Country – Non-party

404.03(c)(1) Willing Non-party

The discovery deposition of a natural person who resides in a foreign country, and is not a party, or an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, but is willing to appear voluntarily to be deposed, may be taken in the same manner as the discovery deposition of a natural person who resides in a foreign country and who is a party, i.e., in the manner described in TBMP § 404.03(b). [ Note 1.] It should be noted, however that some countries prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Citizens Consular Services, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

NOTES:

1. Cf. 37 CFR § 2.120(c) and 37 CFR § 2.123(a).

404.03(c)(2) Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure

28 U.S.C. § 1781 Transmittal of letter rogatory or request.

(a) The Department of State has power, directly, or through suitable channels—
- (1) to receive a letter rogatory issued, or request made, by a foreign or international tribunal, to transmit it to the tribunal, officer, or agency in the United States to whom it is addressed, and to receive and return it after execution; and
- (2) to receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution.
(b) This section does not preclude—
- (1) the transmittal of a letter rogatory or request directly from a foreign or international tribunal to the tribunal, officer, or agency in the United States to whom it is addressed and its return in the same manner; or
- (2) the transmittal of a letter rogatory or request directly from a tribunal in the United States to the foreign or international tribunal, officer, or agency to whom it is addressed and its return in the same manner.

There is no certain procedure for obtaining, in an inter partes proceeding before the Board, the discovery deposition of a natural person who resides in a foreign country, is not a party, or an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party, and does not agree to appear voluntarily to be deposed. However, a party may be able to obtain the discovery deposition of such a person through the letter rogatory procedure, whereby an unwilling non-party witness in a foreign country sometimes may be compelled to respond to questions routed through diplomatic channels to an appropriate judicial authority in the foreign country. [ Note 1.]

The term "letter rogatory"or "letter of request" is defined in Black’s Law Dictionary (9th edition 2009) as follows:

letter of request. 1. A document issued by one court to a foreign court, requesting that the foreign court (1) take evidence from a specific person within the foreign jurisdiction or serve process on an individual or corporation within the foreign jurisdiction and (2) return the testimony or proof of service for use in a pending case. See Fed. R. Civ. P. 28. — Also termed letter rogatory; rogatory letter; requisitory letter.

While the letter rogatory procedure is usually conducted through the judicial system, because the Board proceeding is before an administrative body, the Board would function as the initiating "court" contemplated by the rule.

A party that wishes to have the Board issue a letter rogatory should file a written request therefor with the Board. [ Note 2.] The party must also submit an original and two copies of the proposed letter rogatory, and an original and two copies of the questions to be propounded to the non-party witness. If the official language of the foreign country is not English, the propounding party must submit an original and two copies of the letter rogatory and questions in English, and an original and two copies thereof translated into the official language of the country in which the witness will be deposed. In addition, the propounding party must serve on each adverse party a copy of every paper submitted to the Board. [ Note 3.]

If the request by the Board is granted (i.e. it is willing to issue the letter once all questions are exchanged and translations are provided) each adverse party will be given an opportunity to submit cross questions, a copy of which must also be served on the propounding party. If an adverse party does submit cross questions, the propounding party, in turn, will be given an opportunity to submit redirect questions, a copy of which must be served on each adverse party. [ Note 4.] As in the case of the initial questions, an original and two copies of any cross questions and redirect questions must be submitted to the Board; if the official language of the foreign country is not English, an original and two copies of the questions in English, and an original and two copies thereof translated into the official language, must be submitted.

After the original and copies of the letter rogatory, and of all of the questions, have been submitted to the Board, and the letter rogatory has been approved as to form, the letter rogatory will be issued by the Board. The letter rogatory will be signed by the Chief Administrative Trademark Judge; the signature will be authenticated in such a manner as to meet the requirements of the foreign country; and the original and one copy of the letter rogatory and accompanying questions will be forwarded to the United States Department of State with a transmittal letter from the Board (the remaining copy of these papers will be retained in the Board proceeding file). In its transmittal letter, the Board will request, pursuant to 28 U.S.C. § 1781 (which authorizes the Department of State to, inter alia, "receive a letter rogatory issued, or request made, by a tribunal in the United States, to transmit it to the foreign or international tribunal, officer, or agency to whom it is addressed, and to receive and return it after execution"), that the Department of State transmit the letter rogatory to the appropriate judicial authority in the foreign country, and, after execution, receive it back and return it to the Board. Thereafter, the Department of State will transmit the letter rogatory, through diplomatic channels, to the appropriate judicial authority in the foreign country.

The party seeking discovery must pay all fees, including authentication, consular, and foreign government fees, charged in connection with the letter rogatory procedure. The Department of State will require the propounding party to make a deposit to cover the consular and foreign government fees. Payment must include a certified check payable to the U.S. Embassy [insert the name of the appropriate city, i.e., Paris, Bonn, Tokyo, etc.]. Any unused portion of the deposit will be returned to the depositor after completion of the letter rogatory process.

Further information concerning the letter rogatory process may be obtained from the U.S. Department of State, Office of American Citizen Services, SA-17, 10^th Floor, 2201 C Street NW, Washington, D.C. 20522-1710 or at the U.S. Department of State’s website at http//travel.state.gov/law/judicial/judicial 683.html.

Once the appropriate foreign judicial authority has received the letter rogatory, it may or may not be executed. As indicated above, the letter rogatory "rests entirely upon the comity of courts towards each other." Some countries refuse or are reluctant to lend assistance in the taking of a discovery deposition in their country through the letter rogatory procedure, and compliance with the procedural requirements for a letter rogatory does not ensure that the requested deposition will be completed. [ Note 5.] Before a request for issuance of a letter rogatory is filed with the Board, the requesting party should examine the law and policy of the involved foreign country, and consult with the Office of American Citizen Services, Department of State, in order to determine whether the country in question is likely to honor a letter rogatory, particularly a letter rogatory issued by the Board. The likelihood that the Board will agree to issue the letter rogatory may be influenced by any information the requesting party is able to provide about the likelihood that the foreign country will execute the letter.

Even in those foreign countries that may be willing to execute a letter rogatory, the foreign judicial authority may refuse to honor a letter rogatory issued by the Board (an administrative tribunal) rather than by a United States district court. Further, if the foreign country has a "blocking statute" prohibiting its residents from disclosing certain types of information in judicial or administrative proceedings outside of the foreign country, a letter rogatory may not be honored if the foreign judicial authority believes that disclosure of the information requested therein would violate the blocking statute.

If a letter rogatory is honored, its probative value may be limited. In executing the letter rogatory, the foreign judicial tribunal will follow its customary procedures for taking discovery or testimony. The fact that these procedures may differ from those normally followed in proceedings before the Board does not mean that the deposition must necessarily be excluded. Rather, any such differences are matters to be considered by the Board in determining the probative value of the deposition. [ Note 6.]

A party considering the filing of a request for issuance of a letter rogatory should bear in mind not only the complexity and uncertain outcome of the procedure, but also its time-consuming nature. The entire process, from the filing of the initial request for issuance of a letter rogatory, to receipt by the Board either of the completed deposition, or of notification that the letter rogatory will not be honored; will consume months, if not years. During the interim, proceedings in the case before the Board most likely will be suspended pending the execution and return to the Board of the letter rogatory. [ Note 7.]

The Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (commonly known as the "Hague Convention"), opened for signature March 18, 1970, 23 U.S.T. 2555, T.I.A.S. No. 7444, prescribes procedures under which a judicial authority in one member country may request evidence located in another. The Convention offers another possible method by which a party to an inter partes proceeding before the Board may attempt to obtain the discovery deposition of an unwilling non-party witness residing in a foreign country, if the foreign country is a member of the Convention. [ Note 8.]

The Hague Convention provides for the compulsion of evidence (including the deposition of an unwilling witness) in a member country pursuant to a "letter of request," which is very similar in nature to a letter rogatory. [ Note 9.] However, the Board has been advised by the Department of State that foreign countries are more likely to lend assistance in the taking of a discovery deposition if the request therefor is made under the more formal letter rogatory procedure. Before filing a motion for issuance of a letter of request under the Hague Convention, the moving party should consult with the Office of American Citizen Services, Department of State, in order to determine whether the foreign country in question is likely to honor a letter of request, particularly a letter of request issued by the Board.

NOTES:

1. Cf. DBMS Consultants Ltd. v. Computer Associates International, Inc., 18 Fed. R. Serv. 3d 33, 131 F.R.D. 367 (D. Mass. 1990) (court granted application for issuance of a letter rogatory finding that it would be unjust and inappropriate to require oral examination and that opposing party has shown no good reason to deny the application).

2. See Fed. R. Civ. P. 28(b).

3. 37 CFR § 2.119(a). Cf. 37 CFR § 2.124(b)(2).

4. Cf. 37 CFR § 2.124(d)(1).

5. See Fed. R. Civ. P. 28(b) Advisory Committee’s notes (1963 amendment) and 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2083 (2014).

6. See Fed. R. Civ. P. 28(b) Advisory Committee’s notes (1963 amendment); and 8A C.WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2083 (2014).

7. Cf. 37 CFR § 2.124(d)(2).

8. See, e.g., Societe Nationale Industrielle Aerospatiale v. U.S. District Court for the Southern District of Iowa, 482 U.S. 522, 533-40 (1987) (although Hague Convention not exclusive discovery procedure, it may apply even if Federal Rules of Civil Procedure are available); In re Anschuetz & Co., 838 F.2d 1362, 1364 (5th Cir. 1988) (U.S. district courts have discretion to resolve discovery conflicts between Federal Rules of Civil Procedure and Hague Convention); 8 C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2005.1 (2014). For general information concerning the Hague Convention, see Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991) (applicant failed to establish necessity of using Hague procedures). [NOTE: This case involved the taking of discovery by interrogatories, requests for production of documents, and requests for admissions, rather than by deposition].

9. For information concerning the letter of request procedure under the Hague Convention, see Chapter 1 of the Convention. See also Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991).

404.03(d) Foreign Person Present Within the United States – Party

37 CFR § 2.120(e)(2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.

Whenever a natural person who is a foreign party, or an officer, director, or managing agent, of a foreign party, or some other person who consents to testify on a foreign party’s behalf, is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party, officer, director, managing agent, or other person may be deposed, while in the United States, by oral examination on notice pursuant to 37 CFR § 2.120(c)(2). Indeed, this option was available even before the adoption of 37 CFR § 2.120(c)(2). [ Note 1.]

When the discovery deposition of a foreign party, or an officer, director, managing agent, or other person who consents to testify on behalf of a foreign party, is taken in the United States by oral examination pursuant to 37 CFR § 2.120(c)(2), the deposition must be taken in the federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a federal judicial district, where the witness is at the time of the deposition. [ Note 2.]

NOTES:

1. See Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373-74 (TTAB 1978). Cf. Jonergin Co. v. Jonergin Vermont Inc., 222 USPQ 337, 340 (Comm’r 1983) (parties may agree to take oral deposition of foreign domiciliary in U.S.).

2. 37 CFR § 2.120(c)(2).

404.03(e) Foreign Person Present Within the United States – Non-party

If the proposed deponent is a foreign person who is present within the United States but the person is not a party to the proceeding and is not willing to appear voluntarily, it may be necessary to secure the deponent’s attendance, if at all, by the procedures set forth in TBMP § 404.03(c).

404.04 Persons Before Whom Depositions May be Taken

Fed. R. Civ. P. 28(a)(1). Persons Before Whom Depositions May Be Taken Within the United States. In General. Within the United States or within a territory or insular possession subject to the jurisdiction of the United States, a deposition must be taken before:

(A) an officer authorized to administer oaths either by federal law or by the law in the place of examination; or
(B) a person appointed by the court where the action is pending to administer oaths and take testimony.

Fed. R. Civ. P. 28(a)(2) Definition of "Officer." The term "officer" in Rules 30, 31 and 32 includes a person appointed by the court ... or designated by the parties under Rule 29(a).

Fed. R. Civ. P. 28(b)(1) In a Foreign Country. In General. A deposition may be taken in a foreign country:

(A) under an applicable treaty or convention;
(B ) under a letter of request, whether or not captioned a "letter rogatory";
(C ) on notice, before a person authorized to administer oaths either by federal law or by the law in the place of examination; or
(D) before a person commissioned by the court to administer any necessary oath and take testimony.

Fed. R. Civ. P. 28(b)(2) Issuing a Letter of Request or a Commission. A letter of request, a commission, or both may be issued:

(A) on appropriate terms after an application and notice of it; and
(B) without a showing that taking the deposition in another manner is impracticable or inconvenient.

Fed. R. Civ. P. 28(b)(3) Form of a Request, Notice, or Commission. When a letter of request or any other device is used according to a treaty or convention, it must be captioned in the form prescribed by that treaty or convention. A letter of request may be addressed "To the Appropriate Authority in [name of country]."A deposition notice or a commission must designate by name or descriptive title the person before whom the deposition is to be taken.

Fed. R. Civ. P. 28(b)(4) Letter of Request –Admitting Evidence. Evidence obtained in response to a letter of request need not be excluded merely because it is not a verbatim transcript, because the testimony was not taken under oath, or because of any similar departure from the requirements for depositions taken within the United States.

Fed. R. Civ. P. 28(c) Disqualification. A deposition must not be taken before a person who is any party’s relative, employee, or attorney; who is related to or employed by any party’s attorney; or who is financially interested in the action.

Discovery depositions in Board inter partes proceedings may be taken before the persons designated by Fed. R. Civ. P. 28.

Thus, in the United States (or in any territory or insular possession subject to the jurisdiction of the United States) a discovery deposition in a Board proceeding "must be taken before an officer authorized to administer oaths either by federal law or by the law in the place of examination; or a person appointed by the court where the action is pending to administer oaths and take testimony." [ Note 1.] As a practical matter, Board proceeding depositions taken in the United States are usually taken before a court reporter that is authorized to administer oaths in the jurisdiction where the deposition is taken.

In a foreign country, a discovery deposition in a Board proceeding may be taken pursuant to Fed. R. Civ. P. 28(b). This means, for example, that discovery deposition in a Board proceeding, taken of a willing witness in a foreign country, usually may be taken on notice before a United States consular official, or before anyone authorized by the law of the foreign country to administer oaths therein. Some countries, however, may prohibit the taking of testimony within their boundaries for use in any other country, including the United States, even though the witness is willing; or may permit the taking of testimony only if certain procedures are followed. [ Note 2.] A party which wishes to take a deposition in a foreign country should first consult with local counsel in the foreign country, and/or with the Office of Citizens Consular Services, Department of State, in order to determine whether the taking of the deposition will be permitted by the foreign country, and, if so, what procedure must be followed.

NOTES:

1. Fed. R. Civ. P. 28(a).

2. See 8AC. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2083 (2014).

404.05 Notice of Deposition

Fed. R. Civ. P. 30(b) Notice of Deposition; Other Formal Requirements.

(1) Notice in General. A party who wants to depose a person by oral questions must give reasonable written notice to every other party. The notice must state the time and place of the deposition and, if known, the deponent’s name and address. If the name is unknown, the notice must provide a general description sufficient to identify the person or the particular class or group to which the person belongs.
(2) Producing Documents. The notice to a party deponent may be accompanied by a request under Rule 34 to produce documents and tangible things at the deposition.
(6) Notice or Subpoena Directed to an Organization.
In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

37 CFR § 2.124(b)(2) [Depositions upon written questions] A party desiring to take a discovery deposition upon written questions shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify him or the particular class or group to which he belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.

37 CFR § 2.124(c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.

In an inter partes proceeding before the Board, the discovery deposition of a natural person who is a party, or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(4) to testify on behalf of a party may be taken on notice alone.

Prior to the taking of a discovery deposition on notice alone, the party seeking to take the deposition ("the deposing party") must give reasonable notice in writing to every adverse party. [ Note 1.] Whether notice is reasonable depends upon the individual circumstances of each case. [ Note 2.] The elements to be included in the notice are specified in Fed. R. Civ. P. 30(b)(1), for a deposition on oral examination, and in 37 CFR § 2.124(b)(2) and 37 CFR § 2.124(c), for a deposition on written questions. [ Note 3.] It is strongly recommended that the deposing party contact the party sought to be deposed (or whose officer, director, etc., is sought to be deposed) well in advance of the proposed deposition in order to arrange a mutually convenient time for the deposition. The closing of a party’s discovery period does not constitute a compelling need for failing to provide reasonable notice of deposition. [ Note 4.]

A party may request from a party deponent the production of documents at a deposition under Fed. R. Civ. P. 34. [ Note 5.] Proceeding under this rule facilitates discovery when the documents are few and simple and closely related to the oral examination. [ Note 6.] In requesting documents, the deposing party must allow at least 30 days between the date of the request and the deposition (or 35 days if served by first-class mail Priority Mail Express®, or overnight courier) to comply with Fed. R. Civ. P. 34. [ Note 7.] For information concerning the procedure for combining a notice of taking a discovery deposition with a request for production of documents, see TBMP § 406.01. A deposition must be taken prior to the expiration of the discovery period (unless the parties stipulate that the deposition may be taken outside of the period). [ Note 8.]

In noticing the deposition of a corporation, partnership, association, governmental agency, or other juristic person, the deposing party may, in lieu of naming a person to be deposed, simply name as the deponent the corporation, partnership, association, governmental agency, or other juristic person, and describe with reasonable particularity the matters on which examination is requested. The named organization must, in turn, designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may state, for each person designated, the matters on which he or she will testify. Each designated person must testify not only as to those matters within his or her knowledge, but also as to matters known or reasonably available to the organization. [ Note 9.]

For information regarding notice of testimonial deposition, see TBMP § 703.01(e).

For information regarding the time for service of discovery requests, see TBMP § 403.02.

For information regarding a motion to quash a notice of deposition or for protective order, see TBMP § 521 and TBMP § 410.

NOTES:

1. Fed. R. Civ. P. 30(b)(1); 37 CFR § 2.124(b)(2); 37 CFR § 2.124(c). See Fed. R. Civ. P. 31(a)(3) and 37 CFR § 2.120(c). Cf. 37 CFR § 2.123(c).

2. Gaudreau v. American Promotional Events Inc., 82 USPQ2d 1692, 1696 (TTAB 2007).

3. See, e.g., Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (subject matter of deposition to be described with reasonable particularity in the notice).

4. Cf. Gaudreau v. American Promotional Events Inc., 82 USPQ2d 1692, 1696 (TTAB 2007).

5. Fed. R. Civ. P. 30(b)(2).

6. Fed. R. Civ. P. 30(b), Advisory Committee’s notes (1970 amendment).

7. Fed. R. Civ. P. 34(b)(2)(A).

8. National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008) (granting motion to quash opposer’s notice of Fed. R. Civ. P. 30(b)(6) deposition noticed on the last day of discovery but setting date of deposition to take place after close of discovery).

9. Fed. R. Civ. P. 30(b)(6); Fed. R. Civ. P. 31(a)(4).

404.06 Taking a Discovery Deposition

Fed. R. Civ. P. 30(b)(4) By Remote Means. The parties may stipulate — or the court may on motion order — that a deposition be taken by telephone or other remote means. For the purpose of this rule and Rules 28(a), 37(a)(2), and 37(b)(1), the deposition takes place where the deponent answers the questions.

The manner of taking a discovery deposition in an inter partes proceeding before the Board is very similar to taking a testimony deposition. [ Note 1.]

For information concerning the procedure for taking a testimony deposition (including the examination of witnesses, the form of a deposition, and the protection of confidential information or trade secret material forming part of a deposition transcript or exhibits thereto), see TBMP § 703.01 and TBMP § 703.02. For a discussion of significant differences between discovery depositions and testimony depositions, see TBMP § 404.09. For information concerning the procedure for taking a discovery deposition on written questions, see TBMP § 404.07.

On stipulation of the parties, or on motion granted by the Board, a deposition may be taken or attended by telephone or other remote means, such as video conferencing. [ Note 2.] A deposition taken by telephone or other remote means is regarded as taken in the federal judicial district and at the place where the witness is to answer the questions propounded to him or her. A discovery deposition taken by remote means (such as by video conference) must be transcribed if submitted as evidence at trial. See TBMP § 703.01(i).

NOTES:

1. Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991).

2. See Fed. R. Civ. P. 30(b)(4); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1654 (TTAB 2007) (to resolve conflict in scheduling a deposition where travel is involved, parties may stipulate or the Board may order upon motion that deposition be taken by telephone or other remote means); Hewlett-Packard Co. v. Healthcare Personnel Inc., 21 USPQ2d 1552, 1553 (TTAB 1991) (leave to take telephonic depositions should be liberally granted in appropriate cases as current federal practice favors use of technological benefits).

404.06(a) Fed. R. Civ. P. 30(b)(1) Depositions by Oral Examination of a Natural Person

Fed. R. Civ. P. 30(b)(1) Notice in General. A party who wants to depose a person by oral questions must give reasonable written notice to every other party. The notice must state the time and place of the deposition and, if known, the deponent’s name and address. If the name is unknown, the notice must provide a general description sufficient to identify the person or the particular class or group to which the person belongs.

Fed. R. Civ. P. 30(b)(1) provides for the taking of a discovery deposition of a natural person. An individual witness deposition under Fed. R. Civ. P. 30(b)(1) seeks information regarding an individual’s personal knowledge of facts. If the party is a corporation, organization, partnership association or other juristic person, Fed. R. Civ. P. 30(b)(1) allows an adverse party to notice the deposition of a particular officer, director, or managing agent of a party organization. [ Note 1.] Taking a deposition of a party’s officer, director or managing agent in his or her individual capacity under Fed. R. Civ. P. 30(b)(1) is different from taking a deposition of a party’s officer, director or managing agent in his or her organizational capacity under Fed. R. Civ. P. 30(b)(1) or as an organization’s representative under Fed. R. Civ. P. 30(b)(6). The deposition of a party’s officer, director or managing agent in his or her individual capacity probes that individual deponent’s personal knowledge of the facts and not that of the party organization. [ Note 2.] On the other hand, a Fed. R. Civ. P. 30(b)(1) deposition of a named officer, director, or managing agent of the party organization in his or her organizational capacity, just like a Fed. R. Civ. P. 30(b)(6) deposition taken of a representative of an organization, is testimony of the organization. Assuming that the organization is a party, the testimony elicited from a Fed. R. Civ. P. 30(b)(1) deposition of a named officer, director, or managing agent of the organization in his or her organizational capacity may be used at trial by the adverse party for any purpose. [ Note 3.] See TBMP § 412.06(a) regarding the taking of a deposition of a high-level official or executive of a corporation. See TBMP § 404.06(b) regarding the taking of a deposition of a corporation, organization, partnership, association or other juristic person under Fed. R. Civ. P. 30(b)(6).

An employee or agent of an organization who does not qualify as an officer, director, or managing agent is not subject to deposition by notice under Fed. R. Civ. P. 30(b)(1). [ Note 4.] If a person does not qualify as an officer, director, or managing agent, he or she must be treated as a non-party witness. [ Note 5.]

It is possible for a witness to be deposed in his or her individual capacity under a Fed. R. Civ. P. 30(b)(1) notice of deposition and in his or her representative capacity as a Fed. R. Civ. P. 30(b)(6) designee under a Fed. R. Civ. P. 30(b)(6) notice of deposition. [ Note 6.]

For more information regarding depositions of natural persons, both parties and non-parties, see TBMP § 404.03.

NOTES:

1. United States v. One Parcel of Real Estate at 5860 North Bay Road, Miami Beach, Fla., 121 F.R.D. 439, 440 (S.D. Fla. 1988).

2. See 8A C.WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2103 (2014) (discussing differences between a Fed. R. Civ. P. 30(b)(6) deposition and a "normal deposition").

3. United States v. One Parcel of Real Estate at 5860 North Bay Road, Miami Beach, Fla., 121 F.R.D. 439, 440 (S.D. Fla. 1988).

4. JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services., Inc., 220 F.R.D. 235, 238 (S.D.N.Y 2004).

5. JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services, Inc., 220 F.R.D. 235, 238 (S.D.N.Y 2004). See, e.g., HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1906 (TTAB 2008) (expert witness in employ of opposer for Board opposition proceeding was not an officer, director or managing agent of opposer and was "technically a non-party witness" subject to deposition by subpoena).

6. See Fed. R. Civ. P. 30(b)(6) ("This paragraph (6) does not preclude a deposition by any other procedure authorized under these rules."); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1673 (TTAB 2005) (noting that Board granted motion to continue deposition of an officer in his capacity as Fed. R. Civ. P. 30(b)(6) witness and in his individual capacity).

404.06(b) Fed. R. Civ. P. 30(b)(6) Deposition of a Corporation, Organization, Partnership, Association or Other Juristic Person

Fed. R. Civ. P. 30(b)(6) Notice or Subpoena Directed to an Organization. In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

The preferred method for deposing a corporation, organization, partnership, association or other juristic person is through a deposition under Fed. R. Civ. P. 30(b)(6). [ Note 1.] A Fed. R. Civ. P. 30(b)(6) deposition provides a party an efficient way to find out details about the organization as well as learn information that might warrant further exploration through individual depositions of natural persons.

The deponent at a Fed. R. Civ. P. 30(b)(6) deposition is the organization, and the organization speaks through the representative appearing at the deposition. [ Note 2.] A Fed. R. Civ. P. 30(b)(6) witness is responsible for providing all the relevant information known or reasonably available to the organization and his or her answers bind the organization. [ Note 3.] A party may notice a Fed. R. Civ. P. 30(b)(6) deposition of an organization without naming a specific person to be deposed, instead describing the information sought. The organization then must designate one or more individuals to testify on the organization’s behalf. [ Note 4.] A party seeking to depose the adverse party organization through a particular officer, director, or managing agent may notice the deposition of that officer, director, or managing agent, in their organizational capacity, under Fed. R. Civ. P. 30(b)(1). [ Note 5.] See TBMP § 404.03 and TBMP § 404.06(a) regarding depositions of natural persons, both parties and non-parties.

When an organization is named by a party seeking discovery as a deponent, the subject matter of the deposition is to be described with reasonable particularity in the notice. [ Note 6.] An organization served with a Fed. R. Civ. P. 30(b)(6) notice of deposition has an obligation not only to pick and produce persons that have knowledge of the subject matter identified in the notice [ Note 7.] but also to prepare those persons so that they can give complete, knowledgeable, and binding answers as to matters known or reasonably available to the organization. [ Note 8.] The organization may either produce as many deponents as are necessary to respond to the areas of inquiry in the notice if there is no witness with personal knowledge of all areas of inquiry [ Note 9.], or alternatively, may produce a witness who reviews the organization’s records to become familiar with the topics for the deposition so that he or she may give knowledgeable and binding answers for the organization. [ Note 10.] If more than one Fed. R. Civ. P. 30(b)(6) witness will be designated, those individuals should be identified and the areas on which each person will testify be described. [ Note 11.] Even if no current employees have knowledge of matters identified in the notice, an organization is not relieved of preparing a Fed. R. Civ. P. 30(b)(6) designee for deposition to the extent that such matters are reasonably available to the organization from past documents, past employees or other sources. [ Note 12.]

If it becomes obvious during the course of a Fed. R. Civ. P.30(b)(6) deposition that the organization’s designee is deficient regarding his or her knowledge of matters reasonably known to the organization, the organization is obliged to provide a substitute and to prepare a designee to provide testimony in areas as to which its other representatives were uninformed. [ Note 13.]

A party may be subject to a motion to compel for failure to designate a person pursuant to Fed. R. Civ. P. 30(b)(6) or if such designated person fails to appear for deposition or fails to answer any question propounded in a discovery deposition. [ Note 14.]. A party may be subject to sanctions for failure of a designated person to attend the Fed. R. Civ. P. 30(b)(6) discovery deposition if after being served with proper notice, the party informs the party seeking the deposition that no response will be made. [ Note 15.] The production of an unprepared witness is tantamount to a failure to appear. [ Note 16.]

For more information regarding motions to compel and motions for sanctions, see TBMP § 523 and TBMP § 527.

Even though more than one person may be designated to testify under Fed. R. Civ. P. 30(b)(6) on various topics identified in the deposition notice, for purposes of the ten deposition limit under Fed. R. Civ. P. 30(a)(2)(A)(i), the Fed. R. Civ. P. 30(b)(6) deposition is treated as a single deposition. [ Note 17.] For purposes of the time limitation under Fed. R. Civ. P. 30(d)(1) limiting a deposition to "1 day of 7 hours," the deposition of each designated person under a Fed. R. Civ. P. 30(b)(6) notice of deposition is considered a separate deposition. [ Note 18.]

Prior deposition testimony from an individual witness on a particular topic does not relieve a party organization of its responsibility to designate a witness in response to a Fed. R. Civ. P. 30(b)(6) notice of deposition on that topic as individual witness testimony under Fed. R. Civ. P. 30(b)(1) is not binding on the organization. [ Note 19.]

NOTES:

1. Folwell v. Hernandez, 210 F.R.D. 169, 173 (M.D.N.C. 2002). See also City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1672 n.4 (TTAB 2013) ("one purpose of this rule is that it ‘will curb the ‘bandying’ by which officers or managing agents of a corporation are deposed in turn but each disclaims knowledge of facts that are clearly known to persons in the organization and thereby to it."’) (citing Fed. R. Civ. P. 30(b)(6) Advisory Committee Notes).

2. Fed. R. Civ. P. 30(b)(6); see Pioneer Drive, LLC v. Nissan Diesel America, Inc., 262 F.R.D. 552, 558 (D. Mont., 2009) (Fed. R. Civ. P. 30(b)(6) designee speaks for the organization as a whole and must make efforts to be able to do so). 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2103 (2014).

3. Fed. R. Civ. P. 30(b)(6); 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2103 (2014).

4. Folwell v. Hernandez, 210 F.R.D. 169, 172 (M.D.N.C. 2002). ("One of the important consequences of Rule 30(b)(6) is that under it, only the [organization] selects the persons who will testify.")

5. See JSC Foreign Economic Association Technostroyexport v. International Development and Trade Services, Inc., 220 F.R.D. 235, 238 (S.D.N.Y 2004). (A corporate officer, director, or managing agent may be subject to deposition by notice under Fed. R. Civ. P. 30(b)(1); however a corporate employee or agent who does not qualify as an officer, director, or managing agent of the corporation is not subject to deposition by notice under Fed. R. Civ. P. 30(b)(1)); see, e.g., HighBeam Marketing LLC v. Highbeam Research LLC, 85 USPQ2d 1902, 1906 (TTAB 2008) (expert witness in employ of opposer for Board opposition proceeding was not an officer, director or managing agent of opposer and was "technically a non-party witness" subject to deposition by subpoena).

6. Fed. R. Civ. P. 30(b)(6).

7. City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1672 n.4 (TTAB 2013) ("Rule 30(b)(6) anticipates that a party’s designated witness will not necessarily have personal knowledge of all matters but will nonetheless offer testimony regarding information that the ‘party’ should be able to provide."); Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2049 n.5 (TTAB 1988). See also Mattel Inc. v. Walking Mountain Productions, 353 F3d 792, 69 USPQ2d 1257, 1260 n.4 (9th Cir. 2003) ("Rule 30(b)(6) depositions ... are often referred to as ‘persons most knowledgeable’ or ‘persons most qualified’ depositions because ‘the notice of deposition or subpoena is directed at the entity itself’ and ‘[t]he entity will then be obligated to produce the ‘most qualified’ person [or persons] to testify on its behalf.").

8. A&E Products Group L.P. v. Mainetti USA Inc., 70 USPQ2d 1080, 1086 (S.D.N.Y. 2004) (and cases cited therein).

9. International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002).

10. International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002).

11. Fed. R. Civ. P. 30(b)(6).

12. United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1062 (E.D. Mich. 1998).

13. United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1062 (E.D. Mich. 1998). See Tulip Computers International B.V. v. Dell Computer Corp., 63 USPQ2d 1527, 1533 (D. Del. 2002) (purported failure to produce an adequately prepared Fed. R. Civ. P. 30(b)(6) witness may require a second deposition of that or another Fed. R. Civ. P. 30(b)(6) witness and payment of costs for second deposition).

14. 37 CFR § 2.120(e). See United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1063 (E.D. Mich. 1998) (motion to compel due to unprepared 30(b)(6) witness); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1297-98 (TTAB 1997) (motion to compel appearance at Fed. R. Civ. P. 30(b)(6) deposition due to refusal to appear).

15. 37 CFR § 2.120(g).

16. United Technologies Motor Systems Inc. v. Borg-Warner Automotive Inc., 50 USPQ2d 1060, 1061 (E.D. Mich. 1998).

17. Fed. R. Civ. P. 30(b)(6) Advisory Committee’s notes (1993 amendment).

18. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

19. Cf. Foster-Miller Inc. v. Babcock & Wilcox Canada, 210 F.3d 1, 54 USPQ2d 1193, 1205 (1st Cir. 2000) (fact that examining party had previously taken individual depositions of employees who were regarded as most knowledgeable on certain topics identified in a Fed. R. Civ. P. 30(b)(6) notice of deposition does not obviate responsibility of responding party to designate and produce those individuals as witnesses competent to testify on those topics on behalf of corporation).

404.06(c) Time for Deposition

Fed. R. Civ. P. 30(d)(1) Duration. Unless otherwise stipulated or ordered by the court, a deposition is limited to 1 day of 7 hours. The court must allow additional time consistent with Rule 26(b)(2) if needed to fairly examine the deponent or if the deponent, another person, or any other circumstance impedes or delays the examination.

A deposition is limited to one day of seven hours unless stipulated by the parties or otherwise authorized by Board order. [ Note 1.] Only actual deposition time counts against the presumptive limit; reasonable lunch and other breaks do not count against the seven hours. [ Note 2.] For Fed. R. Civ. P. 30(b)(6) depositions, the deposition of each designated person is considered a separate deposition for purposes of the durational limit. [ Note 3.]

The party seeking an order extending the examination or otherwise altering the time limitation is expected to show good cause. [ Note 4.] Fed. R. Civ. P. 30(d)(1) allows for additional time consistent with Fed. R. Civ. P. 26(b)(2) if needed for fair examination of the deponent. [ Note 5.] If the deponent or other person impedes or delays examination, additional time must be allowed. [ Note 6.] Additional time for deposition should be allowed if examination is delayed by "other circumstance" which might include "a power outage, health emergency, or other event." [ Note 7.] Orders directing shorter depositions or limited periods on several days are permitted. [ Note 8.]

The parties are expected to make reasonable accommodations to obviate the need for motion practice before the Board regarding deposition time limits. However, a party who requires Board intervention may wish to contact the Board attorney by telephone for assistance. See TBMP § 413.01.

NOTES:

1. Fed. R. Civ. P. 30(d)(1).

2. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

3. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

4. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

5. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

6. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

7. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment).

8. Fed. R. Civ. P. 30(d) Advisory Committee’s notes (2000 amendment); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (limiting depositions of three deponents to three hours per deponent and conducted consecutively over one and one half days).

404.06(d) Re-Deposing a Witness

Fed. R. Civ. P. 30(a)(2)(A)(ii) With Leave. A party must obtain leave of court, and the court must grant leave to the extent consistent with Rule 26(b)(2): (A) if the parties have not stipulated to the deposition and: … (ii) the deponent has already been deposed in the case.

When a person has already been deposed in the case, a party must seek leave of the Board to take a second deposition if the parties have not stipulated thereto. [ Note 1.]

The decision to grant or deny leave to re-depose a witness is at the discretion of the Board and is guided by Fed. R. Civ. P. 26(b)(2). [ Note 2.]

In deciding the motion, the Board will consider whether the discovery sought is unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; and the burden or expense of the proposed discovery outweighs its likely benefit. [ Note 3.]

The requirement to seek leave does not apply if the deposition is temporarily recessed for the convenience of counsel or the deponent or to enable additional materials to be gathered for review or discussion during the deposition. [ Note 4.] If significant travel costs would be incurred to resume the deposition, the parties should consider the possibility of conducting the remaining examination by telephonic or other remote means, if feasible. [ Note 5.]

NOTES:

1. Fed. R. Civ. P. 30(a)(2)(A)(ii).

2. Fed. R. Civ. P. 30(a)(2).

3. Fed. R. Civ. P. 26(b)(2)(C)(i)-(iii); International Finance Corp. v. Bravo Co., 64 USPQ2d 1597, 1605 (TTAB 2002) (denying motion to take a second Fed. R. Civ. P. 30(b)(6) witness deposition when a designated Fed. R. Civ. P. 30(b)(6) witness had already testified at length on the same noticed topics).

4. Fed. R. Civ. P. 30(a)(2)(A)(ii) Advisory Committee’s notes (1993 amendment). Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1673 (TTAB 2005) (noting that Board had previously granted motion to compel continued deposition of officer in individual and corporate capacity because original deposition had been adjourned to enable completion of document production).

5. Fed. R. Civ. P. 30(a)(2)(A)(ii) Advisory Committee’s notes(1993 amendment).

404.07 Discovery Depositions on Written Questions

Discovery depositions on written questions are taken in the manner prescribed by 37 CFR § 2.124.

404.07(a) Depositions on Written Questions: Before Whom Taken

37 CFR § 2.124(a) A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

A deposition on written questions, like a deposition on oral examination, may be taken before the persons described in Fed. R. Civ. P. 28. [ Note 1.] TBMP § 404.04.

NOTES:

1. 37 CFR § 2.124(a).

404.07(b) Depositions on Written Questions: When Taken

37 CFR § 2.120(a)(3) ... Discovery depositions must be taken, ...on or before the closing date of the discovery period as originally set or as reset..

Discovery depositions must be both noticed and taken during the discovery period. [ Note 1.] TBMP § 404.01. Thus, it is recommended that a party, which desires to take a discovery deposition on written questions, initiate the procedure early in its discovery period. The question whether to suspend discovery activities unrelated to a proposed discovery deposition on written questions, or to allow other discovery activities to proceed, is a matter left to the Board’s exercise of its discretion to schedule matters before it. [ Note 2.]

NOTES:

1. 37 CFR § 2.120(a)(3).

2. 37 CFR § 2.124(d)(2).

404.07(c) Depositions on Written Questions: Place of Deposition

For information concerning the place where a discovery deposition on written questions is taken, see TBMP § 404.03.

404.07(d) Depositions on Written Questions: Notice of Deposition

37 CFR § 2.124(b)(2) A party desiring to take a discovery deposition upon written questions shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify him or the particular class or group to which he belongs shall be stated in the notice, and the party from whom the discovery disposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.

A party that desires to take a discovery deposition on written questions must serve notice thereof on each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. [ Note 1.]

The notice must state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the person is to be provided so the responding party can designate one or more persons to be deposed. The notice must also be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken. [ Note 2.] Copies of the notice served on adverse parties must be accompanied by the written questions to be propounded on behalf of the deposing party. [ Note 3.]

For further information concerning notices of deposition in general, see TBMP § 404.05.

NOTES:

1. 37 CFR § 2.124(b)(2).

2. 37 CFR § 2.124(b)(2) and 37 CFR § 2.124(c).

3. 37 CFR § 2.124(d)(1).

404.07(e) Depositions on Written Questions: Examination of Witness

37 CFR § 2.124(d)(1) Every notice served on any adverse party under the provisions of paragraph (b) of this section shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Within twenty days from the date of service of the notice, any adverse party may serve cross questions upon the party who proposes to take the deposition; any party who serves cross questions shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.

37 CFR § 2.124(d)(2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. ...

37 CFR § 2.124(e) Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.

Within 20 days from the date of service of the notice (25 days, if service of the notice and accompanying questions was made by first-class mail, Priority Mail Express®, or overnight courier [ Note 1.]) any adverse party may serve cross questions on the deposing party. A party that serves cross questions on the deposing party must also serve copies thereof on every other adverse party. Within 10 days from the date of service of the cross questions (15 days, if service of the cross questions was made by first-class mail, Priority Mail Express®, or overnight courier), the deposing party may serve redirect questions on every adverse party. Within 10 days from the date of service of the redirect questions (15 days, if service of the redirect questions was made by first-class mail, Priority Mail Express®, or overnight courier), any party that served cross questions may serve recross questions on the deposing party. A party which serves recross questions on the deposing party must also serve copies thereof on every other adverse party. [ Note 2.]

Written objections to questions may be served on the party that propounded the questions. A party that serves objections on a propounding party must also serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within 10 days from the date of service of the objections (15 days, if service of the objections was made by first-class mail, Priority Mail Express®, or overnight courier). The substitute questions must also be served on every other adverse party. [ Note 3.]

As all discovery depositions must be completed within the discovery period, including depositions on written questions, on motion for good cause filed by any party, or on its own initiative, the Board may extend any of the time periods specified in 37 CFR § 2.124(d)(1), that is, the time periods for serving cross questions, redirect questions, recross questions, objections, and substitute questions to allow for the orderly completion of the depositions on written questions. [ Note 4.]

Within 10 days after the last date when questions, objections, or substitute questions may be served, the deposing party must mail a copy of the notice and copies of all the questions to the officer designated in the notice. See TBMP § 310.03(b) (five-day addition under 37 CFR § 2.119(c) does not apply to deadlines set by Board). A copy of the notice and of all the questions mailed to the officer must also be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions, and shall record each answer immediately after the corresponding question. [ Note 5.]

NOTES:

1. 37 CFR § 2.119(c).

2. 37 CFR § 2.124(d)(1). See Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing the procedure for deposition on written questions under 37 CFR § 2.124(d)); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

3. 37 CFR § 2.124(d)(1). See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990).

4. See 37 CFR § 2.124(d)(2) regarding suspension of proceedings for testimonial depositions on written questions.

5. 37 CFR § 2.124(e).

404.07(f) Depositions on Written Questions: Objections

37 CFR § 2.124(d)(1) ... Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.

* * * *

37 CFR § 2.124(g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.

Written objections to questions propounded for a deposition on written questions may be served on the party that propounded the questions. Any party that serves written objections on a propounding party must also serve a copy of the objections on every other adverse party. [ Note 1.] For information regarding objections to testimony depositions on written questions, see TBMP § 703.02(k).

Objections to questions and answers in depositions on written questions, as in oral depositions, generally are considered by the Board (unless waived) at final hearing. [ Note 2.] If a party’s objections have been overcome by service of revised questions, the objecting party should file and serve notice of which objections no longer need be considered by the Board. Further, objections not maintained in a brief at final hearing may be considered waived by the Board. See TBMP § 707.03(c) and TBMP § 707.04.

For further information concerning the raising of objections to discovery depositions, see TBMP § 404.08. For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532.

NOTES:

1. 37 CFR § 2.124(d)(1).

2. 37 CFR § 2.124(g); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (objections based on relevancy deferred until final hearing). See also Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (discussing objections on depositions on written questions under 37 CFR § 2.124(d)(1)).

404.07(g) Depositions on Written Questions: Form of Deposition; Signature

37 CFR § 2.124(e) ... The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question.

The officer before whom a deposition on written questions is taken shall record each answer immediately after the corresponding question. [ Note 1.]

For further information concerning the form of a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(g) and TBMP § 703.01(i). For information concerning signature of a deposition taken in an inter partes proceeding before the Board, see 37 CFR § 2.123(e)(5), and TBMP § 703.01(j).

NOTES:

1. 37 CFR § 2.124(e).

404.07(h) Depositions on Written Questions: Certification of Deposition

After the officer designated in the notice of deposition has taken a deposition on written questions, the officer must certify the transcript of the deposition. When the transcript has been certified, the officer shall mail the transcript and exhibits to the party that took the deposition. [ Note 1.]For further information concerning certification of a deposition taken in an inter partes proceeding before the Board, see TBMP § 703.01(k).

NOTES:

1. 37 CFR § 2.124(e). See 37 CFR § 2.123(f).

404.07(i) Depositions on Written Questions: Service, Correction, and Making the Deposition of Record

37 CFR § 2.124(f) The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(b)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(j)....

The party that took the deposition on written questions must promptly serve a copy of the transcript, with exhibits, on every adverse party.[ Note 1.] See also TBMP § 703.01(m) regarding service of a testimony deposition transcript. The party that took the deposition must also assure that the transcript is correct. [ Note 2.] For information concerning correction of errors in a testimony deposition taken in a Board inter partes proceeding, see TBMP§ 703.01(n).

If the discovery deposition is to be made of record, the same procedures provided by 37 CFR § 2.120(j) are to be followed. [ Note 3.] With respect to making a discovery deposition of record, see TBMP § 704.09.

NOTES:

1. 37 CFR § 2.124(f).

2. 37 CFR § 2.124(f) and 37 CFR § 2.125(b).

3. 37 CFR § 2.124(f). See also Fischer Gesellschaft M.b.H. v. Molnar and Co., Inc., 203 USPQ 861, 866 n.6 (TTAB 1979).

404.07(j) Deposition on Written Questions: Utility

A deposition on written questions is a cumbersome, time-consuming procedure. It requires that cross questions, redirect questions, recross questions, and objections all be framed and served before the questions on direct examination have even been answered. Moreover, it deprives an adverse party of face-to-face confrontation and the opportunity to ask follow-up questions based on answers to previous questions. [ Note 1.] For information regarding the utility of taking testimony depositions on written questions, see TBMP § 703.02(m).

Nevertheless, it has some utility. It may be the only means by which a deposition may be taken in a foreign country. Moreover, the deposition on written questions may be less expensive than the deposition on oral examination, and is usually more convenient for the witness.

NOTES:

1. 37 CFR § 2.124(d)(1); Orion Group Inc. v. Orion Insurance Co. P.L.C., 12 USPQ2d 1923, 1926 (TTAB 1989).See also Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990), corrected at 19 USPQ2d 1479; Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 591 (TTAB 1980); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979).

404.08 Discovery Deposition Objections

Objections made to the taking of a discovery deposition include errors and irregularities to the notice of deposition, the manner of taking the deposition, the form of a question or answer, the oath or affirmation or a party’s conduct, and the disqualification of an officer. [ Note 1.] Objections may also be made as to the competency of a witness or to the competency, relevancy, or materiality of discovery deposition testimony. [ Note 2.]

NOTES:

1. Fed. R. Civ. P. 30(c)(2); Fed. R. Civ. P. 32(d)(1)-(2); Fed. R. Civ. P. 32(d)(3)(B).

2. Fed. R. Civ. P. 30(c)(2); Fed. R. Civ. P. 32(d)(3)(A).

404.08(a) Objections to Notice

Objections to errors and irregularities in a notice of the taking of a discovery deposition must be promptly served, in writing, on the party giving the notice; any such objections that are not promptly served are waived. [ Note 1.] For information concerning the raising of objections to a notice of reliance on a discovery deposition, see TBMP § 707.02 and TBMP § 532. For information regarding a motion to quash a notice of deposition or for a protective order, see TBMP § 521 and TBMP § 410.

NOTES:

1. See Fed. R. Civ. P. 32(d)(1). Compare S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (Board will not rule in advance of deposition as to whether information sought is confidential or otherwise objectionable); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB1974) (objections to subject matter of deposition may only be raised during, not prior to, the deposition), with Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001) (objections to subject matter of Fed. R. Civ. P. 30(b)(6) deposition raised prior to deposition). Cf. with regard to notice of testimony depositions, 37 CFR § 2.123(j); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1652 and 1655 (TTAB 2007) (overruling objections that notice of deposition was facially deficient and noting that a ruling on sufficiency of notice could have been made prior to the deposition by seeking a telephone conference with a Board attorney); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (premature taking of testimony deposition could have been corrected upon seasonable objection); Steiger Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 169 (TTAB 1984) (testimony deposition excluded where notice did not name witness and objection was timely made and consistently maintained), reconsideration granted on other grounds, 3 USPQ2d 1708 (TTAB 1984); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982).

404.08(b) Objections as to Disqualification of Officer

An objection to the taking of a discovery deposition because of a disqualification of the officer before whom the deposition is to be taken is waived unless it is made before the deposition begins, or as soon thereafter as the disqualification becomes known or could be discovered with reasonable diligence. [ Note 1.]

NOTES:

1. Fed. R. Civ. P. 32(d)(2). Cf. 37 CFR § 2.123(j).

404.08(c) Objections During Deposition

Fed. R. Civ. P. 30(c)(2) Objections. ... An objection must be stated concisely in a nonargumentative and nonsuggestive manner. A person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3).

Fed. R. Civ. P. 32(d)(3)(A)Objection to Competence, Relevance, or Materiality. An objection to a deponent’s competence—or to the competence, relevance, or materiality of testimony--is not waived by a failure to make the objection before or during the deposition, unless the ground for it might have been corrected at that time.

Fed. R. Civ. P. 32(d)(3)(B)Objection to an Error or Irregularity. An objection to an error or irregularity at an oral examination is waived if:

(i) it relates to the manner of taking the deposition, the form of a question or answer, the oath or affirmation, a party’s conduct, or other matters that might have been corrected at that time; and
(ii) it is not timely made during the deposition.

Objections to the competency of a witness or to the competency, relevancy, or materiality of discovery deposition testimony are not waived by failure to make them before or during the taking of the deposition, unless the ground of the objection is one which might have been obviated or removed if presented at that time. [ Note 1.]

In the case of a discovery deposition taken on oral examination, objections to errors and irregularities occurring at the deposition in the manner of taking the deposition, in the form of the questions or answers, in the oath or affirmation, or in the conduct of the parties, and objections to errors of any kind which might be obviated, removed, or cured if promptly presented, are waived unless seasonably made at the deposition. [ Note 2.]

For information concerning objections to the form of questions in the case of a discovery deposition on written questions, see TBMP § 404.07(f).

If a party believes that a question propounded at a discovery deposition is improper, it may state its objection thereto. Objections should be made concisely and in a nonargumentative manner. [ Note 3.] Objections should ordinarily be limited to those that under Fed. R. Civ. P. 32(d)(3) might be waived if not made at that time. [ Note 4.] Questions objected to ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information which is, for example, privileged or not otherwise subject to disclosure under the terms of either the Board’s standard protective order or, if the parties have made modifications thereto, the parties’ agreed and approved protective order. [ Note 5.] If a witness, having stated an objection to a discovery deposition question, answers the question subject to the objection, and the deposition is subsequently made of record in the proceeding pursuant to the provisions of 37 CFR § 2.120(j)(1), 37 CFR § 2.120(j)(2), 37 CFR § 2.120(j)(3)(i), and 37 CFR § 2.120(j)(4) ,the propriety of the objection will be considered by the Board at final hearing when the objections are preserved in the final briefs; that is, the Board will evaluate the testimony in light of the stated objection. [ Note 6.]

For information concerning the propounding party’s options if a witness not only objects to, but also refuses to answer, a particular question during a discovery deposition, see TBMP § 411.04. [ Note 7.]

NOTES:

1. Fed. R. Civ. P. 32(d)(3)(A). Cf. 37 CFR § 2.123(k); Nahshin v. Product Source International LLC, 107 USPQ2d 1257, 1259 (TTAB 2013) (in unusual circumstance involving testimonial deposition on written questions where adverse party had opportunity to review deponent’s answers before drafting its cross-questions, procedure was akin to an oral deposition and adverse party’s failure to object at the time of service of cross-questions when defect could have been cured resulted in waiver).

2. Fed. R. Civ. P. 32(d)(3)(B). Cf. 37 CFR § 2.123(j).

3. Fed. R. Civ. P. 30(c)(2).

4. Fed. R. Civ. P. 30(d); Fed. R. Civ. P. 30(d) Advisory Committee’s notes (1993 amendment).

5. See 37 CFR § 2.116(g) and 37 CFR § 2.123(e)(4); Fed. R. Civ. P. 26(b), 30(c)(2), and 37(a); Fed. R. Evid. 501; 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2113 (2014). See also Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (Board, upon motion to compel, allowed parties time to work out protective order under which confidential information would be provided).

6. 37 CFR § 2.120(j)(3)(i); Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 866 (TTAB 1979) (objections to discovery deposition questions should be preserved and argued in the briefs at final hearing); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).Cf. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (objections made during testimonial deposition waived due to failure to preserve the objections by renewing them in brief); Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1746-47 (TTAB 2006) (while objections made at time of testimonial deposition were renewed in brief on case, Board deemed objections insufficiently preserved because brief failed to identify the objections with specificity).

7. See also Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974) (if party objects to and refuses to answer certain deposition questions, party deposing may seek subpoena from court to compel responses or file motion with Board to compel answers).

404.09 Discovery Depositions Compared to Testimony Depositions

A discovery deposition, like a testimony deposition, may be taken either on oral examination or on written questions. [ Note 1.] In fact, the actual taking of a discovery deposition is very similar to the taking of a testimony deposition. Nevertheless, there are substantial differences between the two, stemming from the differences between the discovery and trial stages of a proceeding. Some of the most significant differences are discussed below. A discovery deposition is a broad discovery device used by a party to obtain from an adversary information about the adversary’s case, or to obtain from a non-party information that may be helpful to the deposing party’s case. The discovery deposition is taken of the adversary or a non-party, or an official or employee of the adversary or a non-party. A testimony deposition, on the other hand, is a narrower device used by a party to present evidence in support of its own case. During a party’s testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness testifying (either willingly or under subpoena) on behalf of the party. [ Note 2.]

The discovery deposition may only be taken during the discovery period, which is ongoing for all parties at the same time. See also TBMP § 403.02. [ Note 3.] A party may only take a testimony deposition during the party’s assigned testimony period; each party has an assigned testimony period, and only the party to which a particular testimony period is assigned may take testimony therein. [ Note 4.]

In a discovery deposition, a party may seek information that would be inadmissible at trial, provided that the information sought appears reasonably calculated to lead to the discovery of admissible evidence. [ Note 5.] In a testimony deposition, a party may properly adduce only evidence admissible under the applicable rules of evidence; inadmissibility is a valid ground for objection. [ Note 6.]

In both types of depositions, questions objected to ordinarily should be answered subject to the objection, but a witness may properly refuse to answer a question asking for information that is, for example, privileged or not otherwise subject to disclosure under the terms of either the Board’s standard protective order or if the parties have made modifications thereto, the parties’ agreed and approved protective order. [ Note 7.] Both types of depositions are taken out of the presence of the Board, and if a witness not only objects to, but also refuses to answer a particular question, and if the deposition is being taken pursuant to a subpoena, issued pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45, the propounding party may attempt to obtain an immediate ruling on the propriety of the objection only by adjourning the deposition and applying, under 35 U.S.C. § 24, to the federal district court, in the jurisdiction where the deposition is being taken, for an order compelling the witness to answer. [ Note 8.]

In the case of a discovery deposition, there is also available to the propounding party the simpler and more convenient alternative of completing the deposition and then filing a motion with the Board to compel the witness to answer the unanswered question. [ Note 9.] A motion to compel is not available, however, in the case of a testimony deposition taken in a proceeding before the Board, nor is there any other mechanism for obtaining from the Board, prior to final hearing, a ruling on the propriety of an objection to a question propounded during a testimony deposition. [ Note 10.]

Accordingly, in those cases where the witness in a testimony deposition refuses to answer a particular question, no court action is sought, and the Board finds at final hearing that the objection was not well taken, the Board may presume that the answer would have been unfavorable to the position of the party whose witness refused to answer, or may find that the refusal to answer reduces the probative value of the witness testimony. [ Note 11.]

A discovery deposition does not form part of the evidentiary record in a case unless a party entitled to offer it into evidence files, during the party’s testimony period, the deposition together with a notice of reliance thereon. [ Note 12.] TBMP § 704.09. That is, the offering of a discovery deposition in evidence is voluntary, not mandatory. [ Note 13.] See TBMP § 704.09 regarding introducing discovery depositions into evidence.

Every testimony deposition taken must be filed, and, when filed, becomes part of the record; a notice of reliance thereon is not necessary. [ Note 14.] TBMP § 703.01(l).

The discovery deposition of an adverse party may be taken on notice alone. TBMP § 404.03. However, the testimony deposition of an adverse party, unless obtained voluntarily, may only be taken pursuant to a subpoena issued by a United States district court. [ Note 15.] See TBMP § 703.01(f) regarding securing attendance of an adverse party or non-party and TBMP § 707.03(d) regarding the refusal of a party to answer testimony deposition question.

NOTES:

1. See Fed. R. Civ. P. 30 and Fed. R. Civ. P. 31.

2. See Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 865-66 (TTAB 1979); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).Cf. Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) ("The purpose of discovery is to provide information which may aid a party in the preparation of its own case or in the cross-examination of its adversary’s witnesses.").

3. See Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (deposition notices served before discovery period ended for depositions but scheduled after discovery period ended are untimely).

4. 37 CFR § 2.121(a).

5. See Fed. R. Civ. P. 26(b)(1).

6. See 37 CFR § 2.122(a) and 37 CFR § 2.123(k).

7. See 37 CFR § 2.116(g); 37 CFR § 2.123(e)(4); Fed. R. Civ. P. 26(b)(5), 30(c)(2), and 37(a)(3)(B); Fed. R. Evid. 501; 8A C.WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil 3d § 2113 (2014).

8. See Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

9. 37 CFR § 2.120(e); Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184, 189 (TTAB 1974).

10. See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431-32 (TTAB 1998) (motion to compel not available for testimonial depositions);Ferro Corp. v. SCM Corp., 219 USPQ 346, 351 (TTAB 1983) (should have applied to district court for order compelling answers).

11. See Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1411 (TTAB 1990) (a refusal to answer, if found to be unjustified, may be construed against the objecting party).

12. See, e.g., Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (motion granted allowing opposer to offer into evidence discovery deposition of non-party witness residing in a foreign country via notice of reliance because witness unavailable during trial phase and not willing to appear voluntarily); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1831 (TTAB 2013) (parties stipulated that either party "may use any and all discovery depositions" as testimonial depositions); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1847 n.5 (TTAB 2008) (parties stipulated in notice of reliance to use of discovery depositions as trial testimony); Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1014 (TTAB 2007) (applicant’s discovery deposition submitted by applicant by way of notice of reliance with consent of opposer). But see Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1901 (TTAB 2006) (discovery deposition of adverse party’s president, although not submitted properly via notice of reliance was treated as being of record by the parties and therefore considered to have been stipulated into the record).

13. See, e.g., Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979); 37 CFR § 2.120(j)(1), 37 CFR § 2.120(j)(2), and 37 CFR § 2.120(j)(3)(i).

14. See generally 37 CFR § 2.123.

15. See 35 U.S.C. § 24; 37 CFR § 2.120(b); Fed. R. Civ. P. 30(b) and Fed. R. Civ. P. 45; Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976). For further information concerning differences between discovery and testimony depositions, see Fischer Gesellschaft m.b.H. v. Molnar & Co., 203 USPQ 861, 865-67 (TTAB 1979)( discovery deposition of non-party is not admissible as evidence under a notice of reliance absent compelling circumstances or consent of the adverse party given the functional and historical differences between discovery and trial); and Smith International, Inc. v. Olin Corp., 201 USPQ 250, 250 (TTAB 1978) (discovery and testimony depositions are "quite distinguishable").

Please Note: Fed. R. Civ. P. 45(a)(2) and 45(f), as amended in 2013, are not applicable as 35 U.S.C. § 24 is controlling. See 37 CFR § 2.116(a) ("Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").

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404 Discovery Depositions

404.01 When Permitted and By Whom

404.02 Who May be Deposed

404.03 Place of Deposition; Oral or Written Deposition; Securing Attendance of Deponent

404.03(a) Person Residing in the United States – In General

404.03(a)(1) Person Residing in the United States – Party

404.03(a)(2) Person Residing in the United States – Non-party

404.03(b) Person Residing in a Foreign Country – Party

404.03(c) Person Residing in a Foreign Country – Non-party

404.03(c)(1) Willing Non-party

404.03(c)(2) Unwilling Non-party – The Hague Convention and Letter Rogatory Procedure

404.03(d) Foreign Person Present Within the United States – Party

404.03(e) Foreign Person Present Within the United States – Non-party

404.04 Persons Before Whom Depositions May be Taken

404.05 Notice of Deposition

404.06 Taking a Discovery Deposition

404.06(a) Fed. R. Civ. P. 30(b)(1) Depositions by Oral Examination of a Natural Person

404.06(b) Fed. R. Civ. P. 30(b)(6) Deposition of a Corporation, Organization, Partnership, Association or Other Juristic Person

404.06(c) Time for Deposition

404.06(d) Re-Deposing a Witness

404.07 Discovery Depositions on Written Questions

404.07(a) Depositions on Written Questions: Before Whom Taken

404.07(b) Depositions on Written Questions: When Taken

404.07(c) Depositions on Written Questions: Place of Deposition

404.07(d) Depositions on Written Questions: Notice of Deposition

404.07(e) Depositions on Written Questions: Examination of Witness

404.07(f) Depositions on Written Questions: Objections

404.07(g) Depositions on Written Questions: Form of Deposition; Signature

404.07(h) Depositions on Written Questions: Certification of Deposition

404.07(i) Depositions on Written Questions: Service, Correction, and Making the Deposition of Record

404.07(j) Deposition on Written Questions: Utility

404.08 Discovery Deposition Objections

404.08(a) Objections to Notice

404.08(b) Objections as to Disqualification of Officer

404.08(c) Objections During Deposition

404.09 Discovery Depositions Compared to Testimony Depositions