Filewrapper®

Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts

December 31, 2007
Post by Blog Staff

The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction. The decision generated a lengthy dissent that argued that this holding greatly extended the reach of the district court in such interference proceedings and was not supported by the applicable statute and USPTO procedures.

More detail of Rosenruist-Gestao E Servicios LDA v. Virgin Enters., Ltd. after the jump.

This case arose from attempt to register the mark VIRGIN GORDA for use with clothing, footwear, and a wide variety of travel related goods. Virgin, which holds numerous marks comprising or incorporating the word VIRGIN associated with a wide variety of businesses, opposed the registration which gave rise to an opposition proceeding between Rosenruist and Virgin.

During its testimony period, Virgin sought to take deposition testimony from Rosenruist via a 30(b)(6) notice, seeking to depose the "person having the most knowledge" regarding "the factual representations made in [Rosenruist's trademark] Application." Rosenruist refused to produce a deponent on the grounds it had no officers or employees in the United States, and refused to produce a deponent at its corporate headquarters in Portugal. The TTAB denied Virgin's motion to compel, finding that Virgin was required to seek a deposition either via the Hague Convention or letters rogatory. Virgin then served a 30(b)(6) subpoena from the Eastern District of Virginia. Rosenruist moved to quash the subpoena arguing that the district court lacked the authority to issue the subpoena. The motion was denied by the district court, and Rosenruist did not appeal the denial of its motion to quash. Virgin then re-served the subpoena and rescheduled the deposition. At the deposition, counsel for Rosenruist announced that they had no intention of complying with the subpoena. Virgin sought and received attorney fees as a sanction for the failure of Rosenruist to appear at the deposition.

Subsequently, Virgin filed a motion to compel Rosenruist to obey the summons. Rosenruist argued that the motion to compel was improper as the district court did not have the authority to issue the original subpoena. The court denied Virgin's motion, holding that while the subpoena was valid, no witness could be compelled because none either resided or could be found in the district. Virgin appealed.

The court first considered whether juristic entities (such as corporations) could be considered a "witness" in the context of the statute permitting district court to issue subpoenas to appear in USPTO administrative proceedings, 35 U.S.C. § 24. In considering the context of the statute and its interplay with Rule 45, the court concluded that "witness" was "not limited only to natural persons."

The court next considered Rosenruist's allegation that the subpoena was improper because the district court lacked personal jurisdiction. Regarding this argument, the court determined that Rosenruist's failure to challenge the district court's first ruling holding the subpoena to be valid precluded them from challenging the court's jurisdiction.

The court summarily dealt with Rosenruist's argument that the TTAB's Manual of Procedure (TBMP) precluded enforcement of the subpoena stating that "the TBMP does not provide, or even purport to provide, authoritative interpretive guidance with regard to the scope of 35 U.S.C. § 24 or any other statute." Finally, the court rejected arguments about the insufficiency of service as the service had been made on one of Rosenruist's designated agents for service of process.

The dissent (which acknowledged that it was "extensive") focused on the language of 35 U.S.C. § 24 as well as the TBMP as the basis for the conclusion that the district court did not have the power to issue the subpoena. The dissent was also uncomfortable with the fact that, in essence, the court was setting a nationwide precedent, as the USPTO is located in the Fourth Circuit, thereby essentially precluding the other circuits from hearing appeals on this issue.

It appears that if Rosenruist had appealed the district court's refusal to quash the subpoena in the first instance, the majority would have had to address the jurisdictional issues raised by the dissent in more detail (instead of dismissing them in a footnote), and the decision might have come out differently.

For the full decision in Rosenruist-Gestao E Servicios LDA v. Virgin Enters., Ltd. click here.

Update (1/2): John Welch at the TTABlog discusses the decision here, calling it "surprising and dubious."


Post Categories

Comments (0)
Post a Comment



Captcha Image
Return to the Filewrapper Blog

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image