406.01 When Permitted and By Whom
For inter partes proceedings commenced on or after November 1, 2007, a party may serve discovery, including requests for the production of documents and things, on any other party only during the discovery period and provided that the serving party has either previously served or is serving concurrently therewith its initial disclosures, absent a stipulation or a granted motion or upon order of the Board to the contrary. [ Note 1.] TBMP § 403.02. Requests for production may be served through the last day of the discovery period, even though the responses thereto may not be served until after the discovery period has closed. [ Note 2.] TBMP § 403.03 (Time for Service of Discovery Responses). If requests for production are combined with a notice of taking a discovery deposition (i.e., if it is requested that the deponent bring designated documents to the deposition), the requests for production must be served at least 35 days prior to the scheduled date of the deposition if service of the requests for production is made by first-class mail, Priority Mail Express®, or overnight courier, and at least 30 days prior to the deposition if service of the requests for production is made by one of the other methods specified in 37 CFR § 2.119(b). [ Note 3.] TBMP §113.04 (Manner of Service), TBMP § 113.05 (Additional Time for Service by Mail), and TBMP § 403.03 (Time for Service of Discovery Responses).
Requests for production may not be served on a non-party.[ Note 4.] However, if a discovery deposition deponent is a non-party witness residing in the United States, production of designated documents by the witness at the deposition may be obtained by means of a subpoena duces tecum. [ Note 5.] See TBMP § 404.03(a)(2). A subpoena is unnecessary, however, if the non-party witness is willing to produce the documents voluntarily.
Parties seeking to serve document production requests on a natural person residing in a foreign country should be aware that the laws of some foreign countries may serve to preclude such discovery. [ Note 6.] 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 7.]
NOTES:
2. See Fed. R. Civ. P. 34(a); Smith International, Inc. v. Olin Corp., 201 USPQ 250, 251 (TTAB 1978).
4. See Fed. R. Civ. P. 34(a).
5. 35 U.S.C. § 24; Fed. R. Civ. P. 45. But see Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013) (discussing notice requirement to adverse party under Fed. R. Civ. P. 45(b)(1) for a subpoena duces tecum (without deposition) issued to non-party and noting that respondent could have sought its own subpoena of the non-party to obtain additional documents and/or a discovery deposition).
6. 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).
7. Cochran Consulting Inc. v. Uwatec USA Inc.,102 F.3d 1224, 41 USPQ2d 1161, 1163 (Fed. Cir. 1996) (citing Societe Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197 (1958)).