Ariosa Diagnostics v. Isis Innovation Ltd.
Paper No. 55, August 7, 2013
IPR2012-00022 (Patent 6,258,540)
Ariosa requested a conference call on Tuesday, August 1, 2013 between representatives of both parties and before the tribunal. See Paper 55, p.1. Ariosa informed the PTAB that “there may be a need for alternative accommodations to conduct the deposition of Professor Kazakov.” Id. at p.2. Professor Kazakov was originally scheduled to give deposition in the middle of August, but Ariosa was unsure if he would be able to obtain a visa in time. Id. Ariosa offered an alternative plan, where Professor Kazakov would give his deposition in late August or early September, in a jurisdiction other than the U.S. that did not require a visa. Id.
Pursuant to rule 37 C.F.R. § 42.53(b)(3), “[u]ncompelled deposition testimony outside the United States may only be taken upon agreement of the parties or as the Board specifically directs.” Id. The parties agreed to discuss the alternative plan that Ariosa proposed and wanted to come to an agreement for taking the deposition in a location outside of the U.S., if it is needed. Id.
“The parties also requested guidance as to taking a deposition in a foreign language as required by 37 C.F.R. § 42.53(e).” Id. Isis requested particular clarification as to “whether the guidelines set forth by the Board in Interference No. 104,539, Paper 54, would also apply to AIA proceedings.” Id.
The “guidelines shall cover the taking of a deposition in a foreign language in this proceeding.” See Paper 55, p.5. The parties shall determine for themselves the best procedure to use to conduct the deposition and shall contact the PTAB if they need further guidance. Id. at *4-*5.
Rule 42.53 governs the taking of testimony and gives a series of guidelines for conducting a deposition in a foreign language. See Paper 55, p.2. The guidelines are as follows:
- The party proffering the witness is responsible for providing a “first interpreter” who can interpret using a consecutive mode of interpretation.
- 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.
- The opponent may engage the services at the counsel table of a “second interpreter.”
- 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.
- The consecutive mode of interpretation shall be used.
- 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.
- 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.
- In such an event, the Board will determine which interpretation, if any, is to be accorded more weight.
- 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.
- 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.
- 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.
- An individual may not serve simultaneously as both an attorney for a party and as an interpreter.
Id. at p.3-4.
The PTAB determined that beyond the text of Rule 42.53 and the guidelines, “the parties are in the best position to determine the procedure by which the deposition is to be conducted.” Id. at p.4.
A copy of the PTAB order can be found here.