521    Motion to Quash Notice of Deposition

A party to an inter partes proceeding before the Board may file a motion, prior to the taking of a noticed discovery or testimonial deposition, to quash the notice of deposition. Alternatively, in the case of a notice of discovery deposition and under appropriate circumstances, the party may file a motion for a protective order. See TBMP § 410.

A motion to quash may be filed on a variety of grounds. For example, a party may move to quash a notice of deposition on the ground that: (1) the proposed deposition is untimely [ Note 1.]; (2) the proposed deposition constitutes harassment or is without proper basis [ Note 2.]; (3) in the case of a discovery deposition to be taken in the United States, the deposition is not scheduled to be taken in the federal judicial district where the proposed deponent resides or is regularly employed, or at another place agreed upon by the parties in writing [ Note 3.]; (4) in the case of a deposition to be taken in a foreign country, the deposition is scheduled to be taken orally in violation of 37 C.F.R. § 2.120(c)  or 37 C.F.R. § 2.123(a)(2)  [ Note 4.]; (5) the deposing party has noticed depositions for more than one place at the same time, or so nearly at the same time that reasonable opportunity for travel from one place of examination to another is not available [ Note 5.]; (6) there was not due (i.e., reasonable) notice in writing of the proposed deposition [ Note 6.], see TBMP § 404.05 and TBMP § 703.01(e); (7) the taking of the deposition should be deferred until after determination of a certain motion pending before the Board, such as a motion for summary judgment; (8) the deposing party improperly seeks to force a foreign natural person to come to the United States for the taking of a deposition [ Note 7.], see TBMP § 404.03(b); (9) a testimonial deposition scheduled to be taken upon written questions should be taken orally (usually, this motion is titled as a motion that a deposition be taken orally) [ Note 8.]; (10) the deposing party’s pretrial disclosures are insufficient, untimely or otherwise technically deficient [ Note 9.]; (11) the deposing party seeks to take the testimonial deposition of a witness who was not identified or who was improperly identified in that party’s pretrial disclosures [ Note 10.] or (12) in the case of a testimonial deposition, the deposition is not scheduled to be taken in a reasonable time and place. [ Note 11.]

However, the Board has no jurisdiction over nonparty depositions, or adverse witness depositions, taken by subpoena, and thus has no authority to quash such subpoenas. [ Note 12.] See TBMP § 404.03(a)(2) and TBMP § 703.01(f).

A motion to quash a notice of deposition should be filed promptly after the grounds therefor become known to the moving party. In the situation where a party becomes aware that a noticed testimonial deposition is of a party not identified in the pretrial disclosures, the preferred practice is to file a motion to quash rather than a motion to strike the deposition after the testimonial deposition has occurred. When time is of the essence, the moving party should telephone the Board attorney to whom the case is assigned and ask that the motion be resolved by telephone conference call. [ Note 13.] The Board has discretion to decide a motion by telephone conference prior to the expiration of the written briefing period for a response and reply. Telephone conference procedures on motions are fully discussed in TBMP § 413 and TBMP § 502.06(a).

NOTES:

 1.   See National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855 (TTAB 2008) (notice for deposition to be taken outside discovery period quashed when served on last day of discovery); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1298 (TTAB 1997) (notice was reasonable and timely; no scheduling conflict with depositions in civil action); Marshall Field & Co. v. Mrs. Field’s Cookies, 17 USPQ2d 1652, 1652 (TTAB 1990) (notices of 13 depositions on written questions served eight months after original opening of testimony period, but within ten days of latest extension, were timely); Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373 (TTAB 1978) (deposition noticed during discovery but scheduled for date after discovery closed was untimely).

 2.   See Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2049 (TTAB 1988) (notice to take deposition of CEO merely to discuss settlement was found baseless); Gold Eagle Products Co. v. National Dynamics Corp., 193 USPQ 109, 110 (TTAB 1976) (written discovery requests directed to assignor need not be answered where assignment occurred prior to institution of proceeding). Cf. Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1567-68 (TTAB 2014) (motion for protective order to take deposition of non-testifying expert granted where no showing of "exceptional circumstances" has been made).

 3.   See 37 C.F.R. § 2.120(b); Cf. Andrew R. Flanders v. DiMarzio, Inc., 2020 USPQ2d 10671, at *5 (TTAB 2020) (construed motion seeking protective order that respondent’s Rule 30(b)(6) designee be deposed at a location other than respondent’s principal place of business denied where movant did not present sufficient justification).

 4.   See Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 373-74 (TTAB 1978).

 5.   See 37 C.F.R. § 2.123(c).

 6.   See 37 C.F.R. § 2.123(c); Fed. R. Civ. P. 30(b) and 31(a); Sunrider Corp. v. Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (six days’ notice reasonable); Gaudreau v. American Promotional Events, Inc., 82 USPQ2d 1692, 1695 (TTAB 2007) (two days’ notice unreasonable); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000) (whether notice is reasonable depends upon the circumstances of each case; one and two-day notices were not reasonable without compelling need for such haste, but three-day notice was reasonable).

See also, where objection to notice was raised by other means, Electronic Industries Association v. Potega, 50 USPQ2d 1775, 1776 (TTAB 1999) (two-day notice unreasonable and failure of opposing counsel to attend was excused); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1284 (TTAB 1998) (one-day notice for deposition of expert witness was short but not prejudicial where party gave notice "as early as possible" and moreover offered to make witness again available at a future date), appeal dismissed, 178 F.3d 1306 (Fed. Cir. 1998); Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1074 (TTAB 1990) (24 hours not sufficient time for applicant to prepare for deposition but opposer allowed time to recall witness for purpose of cross-examination and redirect); Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802, 804 n.6 (TTAB 1982) (two-day notice of deposition, although short, was not unreasonable where deposition was held a short distance from applicant’s attorney’s office and where no specific prejudice was shown).

 7.   Cf. Jain v. Ramparts Inc., 49 USPQ2d 1429, 1430-31 (TTAB 1998) (issue raised by motion to compel). See also Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385, 1391 (4th Cir. 2007) (a district court could issue a subpoena for the deposition of a foreign party in the U.S. in connection with a Board case), cert. denied, 128 S. Ct. 2508 (2008).

 8.   See 37 C.F.R. § 2.123(a)(1); Century 21 Real Estate Corp. v. Century Life of America, 15 USPQ2d 1079, 1080 (TTAB 1990) (good cause shown for oral deposition), corrected, 19 USPQ2d 1479 (TTAB 1990); Feed Flavors Inc. v. Kemin Industries, Inc., 209 USPQ 589, 590-91 (TTAB 1980) (good cause shown for oral deposition).

 9.   See Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1242-43 (TTAB 2012) (witness first identified in pretrial disclosure not previously identified in initial disclosures, discovery responses, or any disclosure or discovery supplements).

 10.   37 C.F.R. § 2.121(e). Cf. Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1328 (TTAB 2011) (motion to quash and exclude testimony of witnesses identified for first time in amended and supplemental pretrial disclosures granted); Jules Jurgenson/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444-45 (TTAB 2009) (motion to strike testimony of witness not identified in pretrial disclosures).

 11.   See USPS v. RPost Communication Ltd., 124 USPQ2d 1045, 1046-47 (TTAB 2017) (motion to quash granted where oral cross-examination of declarants of testimony declarations noticed for California while declarants reside and work in the vicinity of Washington, D.C.).

 12.   See Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 USPQ2d 1564, 1565 n.5 (TTAB 2014) (if subpoena accompanies notice of deposition, motion to quash would be filed in district court for which subpoena issued, not with the Board); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (Board has no jurisdiction over third-party subpoenas). See also Highbeam Marketing LLC v. Highbeam Research, LLC, 85 USPQ2d 1902, 1906-07 (TTAB 2008) (failure to have subpoena for discovery deposition quashed resulted in sanction precluding party from using survey evidence at trial).

 13.   See 37 C.F.R. § 2.120(i)(1). See also Spier Wines (PTY) Ltd. v. Shepher, 105 USPQ2d 1239, 1240 (TTAB 2012) (judicial economy served by promptly filing a motion to quash).