404.03(a) Person Residing in the United States – In General
37 C.F.R. § 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 in writing* * * *
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. [ Note 1.] The deposition may be taken either orally, or on written questions in the manner described in 37 C.F.R. § 2.124. [ Note 2.]
For information on the taking of a discovery deposition on written questions, see TBMP § 404.07.
NOTES:
1. 37 C.F.R. § 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 C.F.R. § 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 C.F.R. § 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 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 non-party deponent is not willing to appear voluntarily, the deposing party must secure the non-party 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:
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 C.F.R. § 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. 37 C.F.R. § 2.120(b). 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).