412.06(a) Depositions
Although issuance of a protective order totally prohibiting a deposition occurs only in extraordinary circumstances, the Board has the discretion to limit a deposition or order a deposition not to be had if it determines that the discovery sought is obtainable from other sources that are more convenient and less burdensome or duplicative. [ Note 1.] The party seeking a protective order to limit a deposition or for a deposition not to be had bears the burden to show good cause therefor. [ Note 2.] To establish good cause, the movant must submit "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." [ Note 3.]
As a general rule, a lack of personal knowledge is an insufficient basis for obtaining a protective order that a discovery deposition not be had, as a party seeking discovery may test a witness’ asserted lack of knowledge. [ Note 4.] On the other hand, a motion for protective order may be granted if it is shown that the party has no unique or superior personal knowledge of the facts and that discovery may be obtained from other individuals with equivalent or greater knowledge. [ Note 5.] A party may file a motion for a protective order (or alternatively, a motion to quash) if, for example, absent a stipulation of the parties or leave of the Board, the notice of deposition would result in the inquiring party exceeding the permitted number of ten discovery depositions or if it would result in a second deposition of an individual or if the notice would result in a deposition being taken outside the discovery period. An assertion that the deponent is too busy, or that the examination would cause undue labor, expense or delay is generally an insufficient basis for obtaining a protective order. [ Note 6.]
If a party moves for a protective order to prohibit the deposition of a very high-level official or executive of a large corporation, the movant must demonstrate through an affidavit or other evidence that the high-level official has no direct knowledge of the relevant facts or that there are other persons with equal or greater knowledge of the relevant facts. [ Note 7.]
If the movant meets this initial burden, then the burden shifts to the party seeking the deposition to show that the official has unique or superior personal knowledge of relevant facts. [ Note 8.] If the party seeking the deposition does not satisfy this showing, then the Board will grant the motion for protective order and require the party seeking the deposition to attempt to obtain discovery through less intrusive methods. [ Note 9.] Depending upon the circumstances of the case, these methods should include the depositions of lower-level employees, Fed. R. Civ. P. 30(b)(6) depositions, requests for admissions, or interrogatories and requests for production of documents directed to the corporation. [ Note 10.]
If, after making a good faith effort to utilize less intrusive methods of discovery, the party is unable to obtain the information it seeks, a party may file a motion to vacate or modify the protective order. Such a motion should include a showing (1) that there is a reasonable indication that the high-level official’s deposition may or will lead to the discovery of admissible evidence, and (2) that the less intrusive methods of discovery are unsatisfactory, insufficient or inadequate. [ Note 11.] In granting the motion to vacate or modify the protective order, the Board may limit the topics and duration of the deposition. [ Note 12.]
A party moving for a protective order to delay, limit or prevent a deposition on the basis of medical grounds or health concerns has the burden of making a specific and documented factual showing. [ Note 13.]
A party opposing a motion for protective order with respect to taking the deposition of a non-testifying or consulting expert on notice alone has the burden of establishing exceptional circumstances. [ Note 14.]
Please Note: The Board has no jurisdiction over depositions by subpoena, and in such a case, a motion for protective relief would be filed in the district court for which the subpoena issued and not with the Board.
NOTES:
1. Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1674 (TTAB 2005); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761-62 (TTAB 1999).
2. Fed. R. Civ. P. 26(c)(1); 37 C.F.R. § 2.120(g).
3. The Phillies v. Philadelphia Consolidated Holding Corp., 107 USPQ2d 2149, 2152 (TTAB 2013) (citing FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1761 (TTAB 1999)).
4. 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2037 (3d ed. 2016).
5. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1675 (TTAB 2005).
6. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1762 (TTAB 1999).
7. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).
8. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).
9. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).
10. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).
11. FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999).
12. Cf. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672, 1677 (TTAB 2005) (denying a motion for protective order that depositions not be had with regard to certain individuals but limiting the depositions to three hours in duration and to one particular topic).
13. 8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE Civil § 2037 (3d ed. 2016) and cases cited therein.
14. Fed. R. Civ. P. 26(b)(4)(D)(ii); Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1568 (TTAB 2014) (motion to take deposition of consulting expert denied because opposer did not establish exceptional circumstances).