Intellectual Concepts, LLC v. Zannier, Inc.

Informative decision only: persuasive authority, not binding precedent. When a party relies on an affidavit that does not contain a statement that the affiant will make himself available in the United States for cross-examination, the affidavit is not admissible, even without an opponent's objection. The Board will decline to exercise its discretion to authorize cross-examination abroad where the movant fails to establish that false testimony there is a crime for testimony used in a U.S. administrative tribunal and would be an extraditable offense, and where fear of arrest and an uncorroborated medical excuse are offered as reasons for non-appearance. No prior precedent directly addressed this issue as a rule the text announces; the Board cites Bronshtein v. Roser, 61 USPQ2d 1742 (Bd. Pat. App. & Int. 2001), which allowed testimony in England, and distinguishes it on its facts. For the opposing party, the decision supports objecting to, or having the Board disregard, declarations of witnesses who will not appear for cross-examination in the United States, and the Board said most of the evidence was inadmissible even without an objection. For a party that needs a foreign witness, particularly a junior party with the burden of proof, it means that a witness's unwillingness to come to the United States will not excuse compliance with the cross-examination requirement, and the party may have to make its case without that testimony. Such a party must also file a clear statement of facts with its motion and supply original-language and verified translations of foreign law, with credible, authenticated medical evidence. The text cites no Federal Circuit, CCPA or Supreme Court authority that binds this analysis, apart from a concurrence cited with a cf. signal on the English-language record. LEGAL TEST OR STANDARD: An affidavit is not admissible unless it contains a statement that the affiant will make himself available in the United States for cross-examination (Paper 1, pages 10-11; STANDING ORDER, ¶ 157). Authorizing testimony in a foreign country is a matter of Board discretion. The Board declined to exercise that discretion because the movant failed to establish that (1) perjury in Ecuador is a crime when testimony is given for use in a United States Executive Branch administrative tribunal and (2) it would be an extraditable offense to the United States. The Board also declined to credit the claimed medical inability to travel. TRIGGERING FACTS: Junior party Intellectual Concepts relied on a declaration of Caton, the alleged sole inventor, who lives in Ecuador and stated he would not come to the United States. He gave two reasons: fear of arrest for violating supervised release after a criminal conviction, and a medical condition said to bar flying above 30,000 feet. Supporting exhibits were an unauthenticated medical report with an unverified translation, a hearsay-laden Wright affidavit, and an Ecuadorian lawyer's affidavit with an unverified translation of the criminal code. No Spanish-language code text, extradition showing, or credible corroboration of the medical limit was provided. KEY QUOTE: "The Caton "affidavit" is not admissible because it does not contain a statement that Caton will make himself available in the United States for cross-examination." (Paper 66, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision cites and distinguishes Bronshtein v. Roser, 61 USPQ2d 1742 (Bd. Pat. App. & Int. 2001), where convincing medical evidence was presented and the opponent consented to cross-examination in England. PRACTICE TIP: Before relying on a declaration from a foreign or reluctant witness, make sure it includes a commitment to appear in the United States for cross-examination. If you instead seek cross-examination abroad, move with a clear statement of facts and with authenticated medical evidence, original-language foreign law, verified translations, and a showing on perjury liability and extraditability, or expect to lose the witness's testimony.