In Ariosa Diagnostics v. ISIS Innovation Limited, the Patent Trial and Appeal Board (PTAB) set guidelines for taking foreign language depositions under 37 C.F.R. § 42.53(e).

37 C.F.R. Part 42 governs trial practice before the PTAB.  The PTAB is an administrative law body of the U.S. Patent and Trademark Office (USPTO) and includes a Trial Division and an Appeals Division.  The Trial Division handles interference proceedings and contested cases.

Foreign Language Depositions in PTAB Cases

37 C.F.R. § 42.53(a) states:

Form. Uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24, must be in the form of a deposition transcript…

37 C.F.R. § 42.53(e) sets forth the process for taking depositions in a foreign language:

If an interpreter will be used during the deposition, the party calling the witness must initiate a conference with the Board at least five business days before the deposition.

Background

The dispute in Ariosa involved Isis’s U.S. Patent 6,258,540 for a method of non-invasive prenatal diagnosis.

Ariosa filed a petition for Inter Partes Review, challenging the validity of the patent.  It asserted that one of the claims in the patent was invalid because it had been anticipated by work done by a Professor Kazakov, a Russian-speaker.  Ariosa sought to take Prof. Kazakov’s deposition, either in the U.S. or abroad if he was unable to obtain a visa.

Guidelines for Foreign Language Depositions

At the request of the parties, the PTAB provided the following additional guidance on the taking of depositions in a foreign language:

In the guidelines below, “party” refers to the party proffering the witness, and “opponent” refers to the party cross-examining the witness.

1. The party proffering the witness is responsible for providing a “first interpreter” who can interpret using a consecutive mode of interpretation.

2. At least five (5) business days before the cross-examination deposition, the party shall provide to the opponent the name, business address, business telephone number, e-mail address, and resume of the first interpreter.

3. The opponent may engage the services at the counsel table of a “second interpreter.”

4. At least five (5) business days before the cross-examination deposition, the opponent shall provide to the party the name, business address, business telephone number, e-mail address, and resume of the second interpreter.

5. The consecutive mode of interpretation shall be used.

6. If the second interpreter has a disagreement with the first interpreter regarding the interpretation of the question and/or the answer, the second interpreter should inform counsel by note. If counsel desires to raise the disagreement on the record, the second interpreter, using the consecutive mode, will be allowed to interpret the question for the witness, as well as the witness’ answer to the second interpreter’s interpretation of the question.

7. If there is a disagreement as to interpretation, and the first and second interpreter cannot work out a mutually agreeable interpretation, an objection should be made on the record, and the first and second interpreter should specify on the record what they believe to be the correct interpretation.

8. In such an event, the Board will determine which interpretation, if any, is to be accorded more weight.

9. Collateral attacks with respect to the qualifications of any interpreter, or the manner in which any question or answer was interpreted, shall not be allowed after the conclusion of the deposition.

10. Copies of any documents which an interpreter will be required to “sight translate” at the deposition shall be provided to the interpreter no later than three days before the deposition is to take place. Failure to timely provide the documents may result in their exclusion from evidence. Unless agreed to by both parties, the interpreter shall not reveal to opposing counsel the nature of any document so provided.

11. If, at any time during the deposition, the interpreter is unable to interpret or translate a word, expression, or special term, the interpreter shall, on the record, advise the parties of the issue.

12. An individual may not serve simultaneously as both an attorney for a party and as an interpreter.

Additional Time for Foreign Language Depositions

Normally, the time limits for taking deposition testimony in PTAB cases are as follows:

(1) Unless stipulated by the parties or ordered by the Board, direct examination, cross-examination, and redirect examination for compelled deposition testimony shall be subject to the following time limits: Seven hours for direct examination, four hours for cross-examination, and two hours for redirect examination.

(2) Unless stipulated by the parties or ordered by the Board, cross-examination, redirect examination, and re-cross examination for uncompelled direct deposition testimony shall be subject to the following time limits: Seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination.

However, the Board acknowledged in Ariosa that there might be a need for additional time for a deposition conducted using an interpreter.

If so,

the parties should agree to how those situations should be handled before the deposition. If problems arise and the parties cannot come to an agreement, the parties should contact the Board for additional guidance.

The PTAB’s order is available here.