Square, Inc. v. REM Holdings 3, LLC
Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to conduct a deposition by remote means, a declarant must be made available for a deposition in the United States. Square, Inc. v. REM Holdings 3, LLC, Case No. IPR2014-00312 (PTAB, Dec. 9, 2014) (Bisk, APJ).
In the course of an inter partes review (IPR) the petitioner, Square, requested a call with the Board on the patent owner’s refusal to make its expert available for a deposition in the United States. In response, the patent owner, REM Holdings 3, argued that the Federal Rules of Civil Procedure allowed for testimony taken outside the United States upon agreement of the parties or as the Board specifically directs. The Board found that they “are unaware, however, of any rule stating that the Federal Rules of Civil Procedure apply to [their] proceedings.” The Board further found that, even if the Federal Rules of Civil Procedure applied to their proceedings, the rule requires that the parties must agree to an expert deposition being taken by remote means outside the United States. As the parties in this case did not agree to a remote deposition outside the United States, the Board found that either the patent owner’s expert must be made available in the United States for cross-examination or the patent owner may request to withdraw the expert’s declaration from consideration in the proceeding.