Bronshtein v. Roser

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The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 29
Filed by: 	Fred E. McKelvey
Senior Administrative Patent Judge
Box Interference 	Filed
Washington, D.C. 	20231
Tel: 	703-308-9797
15 October 2001
Fax: 	703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
VICTOR BRONSHTEIN,
Junior Party,
(Patent 5,766,520),
v.
BRUCE ROSER and ENDA MARTIN GRIBBON,
Senior Party
(Application 08/923,783).
Patent Interference 104,727 (McK)
ORDER AUTHORIZING CROSS-EXAMINATION IN ENGLAND
A. 	Introduction
Following a conference call on 12 October 2001, Roser has
filed an unopposed miscellaneous motion (Paper 27) seeking leave
to take cross-examination of Professor Geoffrey Lee in London,
England. 	Prof. Lee's testimony is relied upon by Roser, inter
alia, in connection with Roser's opposition to be filed with
respect to Bronshtein preliminary motion for judgment alleging no
interference-in-fact (Paper 22).

B. 	Applicable regulations
The rules give the board discretion to authorize cross-
examination testimony to be taken in a foreign country. 	37 CFR
§ 1.672(i). 	Subsection (i) of Rule 672 reads as follows:
(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 rules also proscribe the conditions which must be
satisfied to avoid testimony taken in a foreign country from
being given little, if any, weight. 	37 CFR § 1.671(j).
Subsection (j) of Rule 671 reads as follows (emphasis added):
(j) 	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 *** 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.
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C. 	Discussion
A decision as to whether to allow cross-examination to
proceed in a foreign country is made on a case-by-case basis.
The general rule is that all cross-examination take place within
the United States. 	37 CFR § 1.671(d). 	However, as noted above,
the board may exercise its discretion to permit cross-examination
to take place outside the United States. 	The following
paragraphs provide a discussion as to why discretion in this case
is being exercised to permit Prof. Lee to be cross-examined in
London, England, on 26 October 2001.
1.
Counsel for Roser represents that there exists at this time
an "uncertain political situation" (Paper 28, page 2). 	While
there is no evidence in the record to support of counsel's
representation, official notice (37 CFR § 1.671(b) and Fed. R.
Evid. 201) is taken of the fact that at this time individuals
have become concerned about air travel within the United States
since (1) the terrorist attacks on the World Trade Center in New
York City and the Pentagon in Arlington, Virginia on 11 September
2001 and (2) the recent commencement of military-type action in
Afghanistan.
2.
Prof. Lee is believed to be a subject of Great Britain and a
resident of Germany. 	Hence, this is not a case where the witness
is a citizen of the United States residing abroad.
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3.
During the conference call, counsel for Roser represented
that Prof. Lee's family did not want him to travel to the United
States via airplane. 	In this respect, it will be noted that
Roser had retained Prof. Lee and submitted his affidavit prior to
11 September 2001. 	Hence, this is not a case where a party has
knowingly retained an expert-type witness knowing that the
witness might not want to travel to the United States.
4.
Counsel for Bronshtein indicated during the conference call
that there was no objection on the part of Bronshtein or counsel
for Bronshtein to have counsel travel to London, England, for a
cross-examination deposition of Prof. Lee. 	Hence, this is not a
case where an opponent objects to travel to a foreign country to
effect cross-examination.
5.
Counsel for Roser represented, and counsel for Bronshtein
agreed, that Roser would pay the excess cost (i.e., air travel
and per diem) for two of Bronshtein's counsel to travel to
London, England. 	Hence, this is not a case where an opponent
will have to pay expenses to travel to a foreign country.
6.
Counsel for Roser understood that as a condition precedent
to any deposition testimony being given any weight that Roser
(not Bronshtein) would have to comply with the requirements of
37 CFR § 1.671(j). 	Ordinarily, the board would require a party
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to make out its case under Rule 1.671(j) prior to authorizing any
cross-examination deposition in a foreign country. 	In this case,
however, the board is reasonably certain that the law,
jurisprudence and nature of judicial proceedings of England (much
of which has been adopted in the United States) and the United
States, that the proof required by Rule 671(j) are highly likely
to be similar. 	Accordingly, Roser reasonably could be expected
to be able to successfully present the needed proof shortly after
Prof. Lee's deposition is concluded. 	It bears noting at this
point that in this particular interference, Bronshtein's
preliminary motion alleging no interference-in-fact is being
handled on an expedited basis. 	The needed proof required by Rule
671(j) may be any appropriate proof. 	As discussed during the
conference call, the proof may be in the form of an affidavit of
a person knowledgeable with the laws of England. 	Any affidavit
should include copies of any Statutes of England, applicable
English court rules, and any precedent of English courts upon
which the affidavit relies; in other words, an affidavit based
solely on an opinion of an attorney is not likely to be accorded
much weight. 	Cf. § 42 of the STANDING ORDER (Paper 2). 	To the
extent Roser may elect to rely on an affidavit, it should be
prepared, filed and served on Bronshtein in such a manner that
Bronshtein would have, if it chose, an opportunity to cross-
examine any affiant at the same time cross-examination of Prof.
Lee is to take place.
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7. 	The parties agreed to conduct cross-examination in
England on 26 October 2001 at a time when I can participate via
telephone and thereby hear testimony. 	Roser is responsible for
having a speaker phone at the location of the deposition and for
placing a telephone call to the board at the time the deposition
begins. 	On 26 October 2001, I will be in the office no later
than 6:30 a.m. and would suggest that any cross-examination
deposition begin after 7:00 a.m. (Eastern Time in the U.S.).
Prior to leaving for England, Bronshtein shall file under seal
and ex parte a copy of any document it may use to cross-examine
Prof. Lee so that I can have a copy of any document handed to
Prof. Lee. 	Counsel should advise the board of the time when
cross-examination is to begin. 	A copy of any document may be
made available given to counsel for Roser and Prof. Lee during
cross-examination.
8.
Roser must file a copy of Prof. Lee's affidavit (and any
exhibits relied upon therein) prior to leaving for England so
that it will be available at the board during cross-examination.
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Order
Upon consideration of Roser Unopposed Miscellaneous Motion
for permit cross-examination of Prof. Lee to take place in
London, England, on 26 October 2001, and for the reasons given,
it is
ORDERED that the motion is granted subject to the
conditions set out herein.
Fred E. McKelvey
Senior Administrative Patent Judge
15 October 2001
Arlington, VA
cc (via fax):
Attorney for Bronshtein
(real party in interest
Universal Preservation Technologies, Inc.):
Daniel E. Altman, Esq.
Brenton R. Babcock, Esq.
Mark R. Benedict, Esq.
KNOBBE MARTENS OLSON & BEAR LLP
Attorney for Roser
(real party in interest
Quadrant Healthcare (U.K.) Limited,
a wholly owned subsidiary of
Quadrant Healthcare PLC (U.K.):
Debra A. Shetka, Esq.
Thomas E. Ciotti, Esq.
Madeline I. Johnston, Esq.
MORRISON & FOERSTER, LLP
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