703.01(f)(3) Unwilling Witness Residing in Foreign Country
There is no certain procedure for obtaining, in a Board inter partes proceeding, the trial testimony deposition of a witness who resides in a foreign country, is an adverse party or a non-party (or an official or employee of an adverse party or non-party), and is not willing to appear voluntarily to testify. However, the deposing party may be able to obtain the testimony deposition of such a witness through the letter rogatory procedure or The Hague Convention letter of request procedure. [ Note 1.]
For information concerning these procedures, see TBMP § 404.03(c)(2) and TBMP § 703.01(g).
The U.S. Court of Appeals for the Fourth Circuit has held, however, that a district court has the power to issue a subpoena for a trial deposition noticed under Fed. R. Civ. P. 30(b)(6), requiring a foreign corporate applicant to produce an appropriate representative in the United States for testimony on the subjects identified in the subpoena, regardless of the domicile of the representative. [ Note 2.]
The deposition of an unwilling witness (adverse party or non-party) who resides in a foreign country may not be taken on notice alone; steps must be taken to compel the unwilling witness to appear. [ Note 3.]
NOTES:
1. See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (quoting TBMP § 703.01(f)(3)); Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009) (attendance of non-party witness residing outside the United States could not be compelled).
2. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, 128 S. Ct. 2508 (2008).
3. See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (steps must be taken to compel attendance of Cuban declarants).