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).
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.").