703.01(f) Securing Attendance of Unwilling Adverse Party or Non-party for Testimony Deposition
Please Note: This section only pertains to testimony depositions, as a party who takes testimony by affidavit or declaration must make the witness available for cross-examination under 37 C.F.R. § 2.123(a) and 37 C.F.R. § 2.123(a)(2). See TBMP § 703.01(b).
703.01(f)(1) In General
Normally, during a party’s testimony period, testimony depositions are taken, by or on behalf of the party, of the party himself or herself (if the party is an individual), or of an official or employee of the party, or of some other witness who is willing to appear voluntarily to testify on behalf of the party. These testimony depositions may be taken, at least in the United States, on notice alone.
However, where a party wishes to take the testimony of an adverse party or non-party, or an official or employee of an adverse party or non-party, and the proposed witness is not willing to appear voluntarily to testify, the deposition may not be taken on notice alone. Rather, the party that wishes to take the deposition must take steps, discussed below, to compel the attendance of the witness. [ Note 1.] If the witness resides in a foreign country, the party may not be able to take the deposition. See TBMP § 703.01(f)(2) (securing attendance of unwilling witness residing in United States), TBMP § 703.01(f)(3) (securing attendance of unwilling witness residing in foreign country), and TBMP § 703.02 (testimony depositions on written questions).
NOTES:
1. See Empresa Cubana Del Tabaco v. General Cigar Co., 2019 USPQ2d 227680, at *3 n.12 (TTAB 2019) (to the extent the nonparty employee witnesses located outside the United States are not willing to appear voluntarily to testify during respondent’s testimony period, the deposition may not be taken on notice alone, but respondent must take steps to compel their attendance); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990) (after unsuccessfully attempting to take testimony deposition on written questions of adverse party’s officer on notice alone, opposer obtained subpoena from U.S. district court ordering appearance); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583 (TTAB 1976) (it is incumbent on deposing party to have a subpoena issued from the U.S. district court where witness is located and have same properly served on witness with sufficient time to apprise him that he is under order to appear). See also Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 55 n.7 (TTAB 1983) (no adverse inference can be drawn from adverse party’s failure to appear and produce requested documents at testimony deposition where party attempted to secure attendance by notice alone), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).
703.01(f)(2) Unwilling Witness Residing in United States
If a party wishes to take the trial testimony of an adverse party or non-party (or an official or employee of an adverse party or non-party) residing in the United States, and the proposed witness is not willing to appear voluntarily to testify, the party wishing to take the testimony must secure the attendance of the witness by subpoena pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45. [ Note 1.] Cf. TBMP § 404.03(a)(2) (securing attendance of non-party residing in U.S. at discovery deposition).
The subpoena must be issued, pursuant to 35 U.S.C. § 24 and Fed. R. Civ. P. 45, from the United States district court in the federal judicial district where the witness resides or is regularly employed. [ Note 2.] Occasionally district courts may request a "matter number" for the issuance of a subpoena. If that is the case, the requesting party should obtain one from the court or determine whether the Board’s proceeding number will satisfy the court. If, for any reason, a certified copy of the notice of deposition is required in connection with the subpoena, such as for purposes of a motion to quash the subpoena, or a motion to enforce the subpoena, the interested party should contact the clerk of the court to determine whether the court will require a formal certified copy (i.e., a certified copy bearing a USPTO seal) of the notice. [ Note 3.] A certified copy of a notice of deposition is a copy prepared by the party noticing the deposition, and certified by the USPTO as being a true copy of the notice of deposition filed in the proceeding before the Board. A copy of a notice of deposition cannot be certified by the USPTO unless it has been filed in the Board proceeding. For information relating to USPTO certification of a notice of deposition, see TBMP § 121 and TBMP § 122.
If a person named in a subpoena compelling attendance at a testimony 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. Similarly, any request to quash a subpoena must be directed to the United States district court that issued the subpoena. The Board has no jurisdiction over depositions by subpoena. [ Note 4.]
NOTES:
1. See Galaxy Metal Gear Inc. v. Direct Access Technology Inc., 91 USPQ2d 1859, 1862 (TTAB 2009); Health-Tex Inc. v. Okabashi (U.S.) Corp., 18 USPQ2d 1409, 1410 (TTAB 1990); Consolidated Foods Corp. v. Ferro Corp., 189 USPQ 582, 583-84 (TTAB 1976).
2. Cf. 37 C.F.R. § 2.120(b).
Please Note: To the extent that the 2013 amendments to Fed. R. Civ. P. 45(a)(2) and Fed. R. Civ. P. 45(f) conflict with 35 U.S.C. § 24, § 24 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. Please Note: The Board no longer provides verified copies of filings.
4. See, e.g., In re Johnson & Johnson, 59 F.R.D. 174, 178 USPQ 201, 201 (D. Del. 1973) (no power to grant protective order with respect to depositions taken by subpoena); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d 1303, 1304 n.3 (TTAB 1987) (no authority to quash subpoena); PRD Electronics Inc. v. Pacific Roller Die Co., 169 USPQ 318, 319 n.3 (TTAB 1971) (opposer’s allegation in its brief that applicant defied a subpoena to produce witnesses is a matter opposer should have pursued before the court that issued the subpoena). Cf. 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).
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).