Producing a Witness in an Interference for Cross-Examination AbroadMay 2000 – Intellectual Property Today, Vol. 7, No. 5, May 2000, page 6
by Charles L. Gholz *
Section 36 of the standard "NOTICE DECLARING THE INTERFERENCE" used by the Trial Section of the Board of Patent Appeals and Interferences states that:
Cross-examination shall take place at a reasonable location within the United States. Upon failure of the parties to agree, a conference call shall be placed to the administrative patent judge.
However, 37 CFR 1.673(a) says that:
Depositions to be taken in the United States may be noticed for a reasonable time and place in the United States. A deposition may not be noticed for any other place without [prior] approval of an administrative patent judge. [Emphasis supplied.]
That rule clearly contemplates the taking of depositions outside the United States. Moreover, the "legislative history" of the 1995 amendments to the interference rules makes it clear that the authors of those amendments contemplated the taking of depositions abroad. 1
For some reason not clear to me, the Trial Section is apparently quite reluctant to grant motions for leave to produce witnesses for cross-examination abroad.2 In one of my interferences, the APJ to whom the interference was assigned granted an unopposed motion for leave to produce a witness for cross-examination in Germany, but he did so with the provisos (1) that "the deposition must be conducted between the hours [of] 9:00 a.m. and 5:00 p.m. (EST), when the APJ will be available for a telephone conference, if necessary," and (2) that the transcript of the deposition could not be filed with the board until further authorized. As to the latter point, the APJ stated that, if the filing of the transcript was not authorized, the witness's declaration (i.e., his direct testimony) would not be admissible and that, "In the event that filing of the transcript is authorized, the parties['] attention is directed to 37 CFR § 1.671(j)[,] which governs the weight to be given deposition testimony taken in a foreign country."
First, note that the requirement that the deposition "must be conducted between the hours [of] 9:00 a.m. and 5:00 p.m. (EST)..." meant that the deposition would have had to have been conducted 3 between the hours of 4 p.m. and 12 midnight in Germany. Since there was no apparent reason why the availability of the APJ for a telephone conference was any more likely to be "necessary" for this deposition than for any other deposition, the requirement that the deposition take place during those inconvenient hours seemed a little punitive. There is no corresponding requirement that a deposition start in the middle of the night if it is being conducted in Hawaii -- as often used to be the case with Japanese witnesses. 4
Second, the threat that the filing of the transcript of the witness's deposition might ultimately not be authorized seemed very harsh. Any deposition is expensive, but one in Germany is particularly so. I had to wonder whether the threat was designed to encourage the parties not to go through with the deposition.
Third, 37 CFR 1.671(j) does indeed remain a problem, but an unnecessary one in my judgment. It reads as follows:
The weight to be given deposition testimony taken in a foreign country will be determined in view of all the circumstances, including the laws of the foreign country governing the testimony. Little, if any, weight may be given to deposition testimony taken in a foreign country unless the party taking the testimony proves by clear and convincing evidence, as a matter of fact, that knowingly giving false testimony in that country in connection with an interference proceeding in the United States Patent and Trademark Office is punishable under the laws of that country and that the punishment in that country for such false testimony is comparable to or greater than the punishment for perjury committed in the United States. The administrative patent judge and Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.
The implication of 37 CFR 1.671(j) is that people tell the truth (to the extent that they do!) in interference depositions because they are afraid of being prosecuted for perjury. However, I think that that is clearly untrue.
In the first place, I have been told by a former Justice Department attorney who was active in such matters that, in the entire history of the interference system, only one witness has been prosecuted for perjury -- and I am here to tell you that there have been a lot more than one lying interference witness! Thus, at least if the witness knows the score, the threat of a perjury prosecution is really no inducement to tell the truth.
However, most interference witnesses do tell the truth. Why? Because some people are natural born truth tellers. Because some witnesses don't care enough to lie. And, most importantly, because most people are afraid of being caught lying and being embarrassed in public -- and the ability of lawyers to catch people lying has been somewhat overstated in books and movies. All of those factors are just as applicable to witnesses testifying abroad as they are to witnesses testifying in the United States. Hence, in my judgment, witnesses testifying abroad are just as likely to tell the truth (and just as likely to lie) as witnesses testifying in the United States.
Unless and until the PTO repeals 37 CFR 1.671(j), the best solution to the problem presented by 37 CFR 1.671(j) that I have come up with is a stipulation that the testimony to be taken abroad will be treated as if it had been taken in the United States. Of course, you can't force your opponent to agree to such stipulation. But if he or she also wants to produce one or more witnesses abroad, he or she may well agree to the stipulation. As for the APJ, why should he or she care if the parties want to take testimony abroad and have it treated as if it had been taken in the United States?
Note also that 37 CFR 1.671(j) seems to have been drafted with direct testimony in mind. Since in this case I had submitted the witness's declaration as his direct testimony and was only producing him for cross-examination, what did I care if the panel at final hearing gave "[l]ittle, if any, weight" to his testimony on cross-examination? That testimony could only hurt me! However, the answer to that rhetorical question is that the fact that the testimony of a witness produced for cross-examination abroad may be given "[l]ittle, if any, weight" makes it harder to get a stipulation permitting the production of witnesses abroad. The long term solution is (1) to repeal 37 CFR 1.671(j) and (2) to rewrite the rules to treat testimony taken abroad on exactly the same footing as testimony taken in the United States.
Published in Intellectual Property Today, Vol. 7, No. 5, May 2000, page 6.
* Mr. Gholz is a senior partner in and head of the Interference Section of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. in Arlington, VA. His E-mail address is CGHOLZ@OBLON.COM.
1. 1173 O.G. 36, 38 col. 1 first full paragraph (April 11, 1995).
2. Note that this article deals only with witnesses who are testifying voluntarily. Obtaining the testimony of witnesses who testify under compulsion presents entirely different issues. However, most interference witnesses produced for cross-examination are testifying voluntarily.
3. Ultimately, for reasons unconnected to this issue, the deposition did not take place.
4. But see Gholz et al., The Taking of Voluntary Testimonial Depositions in Japan for Use in U.S. Patent Interferences, 78 JPTOS 138 (1996).