Bronshtein v. Roser

Informative decision only: persuasive authority, not binding precedent. Under 37 CFR § 1.672(i), in an unusual circumstance and on a showing that testimony cannot be taken in accordance with the ordinary rules, an administrative patent judge may, case by case, authorize cross-examination in a foreign country even though the general rule is that cross-examination takes place in the United States. The Board may do so before the party makes its 37 CFR § 1.671(j) showing on foreign perjury-type penalties if it is reasonably certain that the foreign law is highly likely to be similar to U.S. law, and it may impose conditions such as later proof of foreign law. No prior precedent directly addressed this issue in the text. The order says the Board would ordinarily require a party to make out its case under Rule 1.671(j) before authorizing a foreign cross-examination, and it relaxes that sequencing here because English and U.S. law are highly likely to be similar. For the opposing party in an interference, an unopposed foreign deposition can proceed, but the movant bears the burden of proving foreign law, and the opponent may cross-examine any affiant on that proof. For the movant, the order shows that a foreign deposition can be authorized now and the Rule 671(j) proof supplied afterward, though the testimony may get little or no weight without that proof. The order cites no Federal Circuit, CCPA or Supreme Court authority; it relies on 37 CFR §§ 1.671(b), 1.671(d), 1.671(j) and 1.672(i) and Fed. R. Evid. 201. LEGAL TEST OR STANDARD: Under 37 CFR § 1.672(i), 'In an unusual circumstance and upon a showing that testimony cannot be taken in accordance with the provisions of this subpart, an administrative patent judge upon motion (§ 1.635) may authorize testimony to be taken in another manner.' The decision is made case by case. The general rule is that all cross-examination takes place within the United States (37 CFR § 1.671(d)). Weight of the testimony is governed separately by 37 CFR § 1.671(j), which requires clear and convincing proof of comparable penalties for false testimony. TRIGGERING FACTS: Unopposed motion. Counsel represented an uncertain political situation, and official notice was taken of concern about air travel after the 11 September 2001 attacks and the start of military action in Afghanistan. The witness was believed to be a British subject residing in Germany, not a U.S. citizen abroad. The party retained the witness and filed his affidavit before 11 September 2001. The opponent did not object, and the movant agreed to pay the excess travel cost for two of the opponent's counsel. The Board was reasonably certain English and U.S. law, and the proof required by Rule 671(j), are highly likely to be similar. The related preliminary motion was on an expedited schedule. KEY QUOTE: "A decision as to whether to allow cross-examination to proceed in a foreign country is made on a case-by-case basis." (Paper 29, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When moving to cross-examine a witness abroad, address each circumstance the Board weighed: the reason the witness will not travel, the witness's citizenship and residence, whether you knowingly retained the witness, the opponent's consent, who pays the opponent's travel costs, and your plan to prove foreign law under Rule 671(j). Be ready to file an affidavit with the foreign statutes, court rules and precedent, because an affidavit resting solely on an attorney's opinion is unlikely to get much weight.