Ariosa v. Isis (IPR2012-00022, Paper 55): Guidelines for a Deposition Through an Interpreter

Cross-examining a declarant who does not testify in English raises practical questions the rules answer only partly. Ariosa Diagnostics v. Isis Innovation Limited, IPR2012-00022, Paper 55, entered August 7, 2013, supplied the missing detail. The Board designated this order informative. Designations can change, so readers should check the USPTO’s current list of precedential and informative decisions.

Earlier papers in the same inter partes review, on the petition’s filing date and the patent owner’s § 315(a) challenge, are covered in a separate note.

Background

Petitioner Ariosa requested a call about the deposition of Professor Kazakov. The deposition was set for mid-August 2013, but it was unclear whether he would obtain a U.S. visa in time. Ariosa proposed taking it later in a country that did not require a visa. The parties also asked for guidance on taking the deposition in a foreign language. The patent owner, Isis, asked whether guidelines the Board had issued in an earlier interference applied to AIA trials.

What the Board decided

Depositions abroad. The Board pointed to 37 C.F.R. § 42.53(b)(3): uncompelled deposition testimony outside the United States may be taken only by agreement of the parties or as the Board specifically directs. The parties said they would try to agree on a location.

Interpreted depositions. The rule the Board cited requires the party calling a witness to initiate a conference with the Board at least five days before a deposition that will use an interpreter. The Board then set guidelines, using “party” for the side offering the witness and “opponent” for the side cross-examining. In summary:

1. The party provides a “first interpreter” using consecutive interpretation.
2. At least five business days before the deposition, the party gives the opponent the first interpreter’s name, contact details and résumé.
3. The opponent may bring a “second interpreter” to the counsel table.
4. The opponent gives the same information about the second interpreter at least five business days in advance.
5. Consecutive interpretation is used throughout.
6. If the second interpreter disagrees, he or she tells counsel by note. If counsel raises it on the record, the second interpreter may interpret the question, and the witness answers that version.
7. If the interpreters cannot agree, an objection is made on the record and each states the interpretation he or she believes correct.
8. The Board decides which interpretation, if any, deserves more weight.
9. No collateral attacks on an interpreter’s qualifications or interpretations are allowed after the deposition ends.
10. Documents an interpreter must sight-translate are given to the interpreter at least three days ahead, on pain of possible exclusion. The interpreter keeps them confidential from opposing counsel unless both sides agree.
11. An interpreter who cannot translate a word or term says so on the record.
12. No one may act as both attorney and interpreter.

Beyond these guidelines, the Board left logistics such as extra time and breaks for interpreters to the parties, asking them to agree in advance and contact the Board if they could not. It ordered that the August 1 call and the order satisfied the conference requirement, so no further call was needed.

Why it matters

The guidelines give both sides a fair way to test interpreted testimony. The second interpreter acts as a check. Disputes are preserved on the record and resolved by the Board when it weighs the evidence, rather than fought over after the fact. The no-collateral-attack rule pushes objections into the deposition itself.

The order also connects to other rules on non-English evidence. Under 37 C.F.R. § 42.63(b), a party relying on a document not in English must file a translation with an affidavit attesting to its accuracy. Interpreted testimony and translated documents both go to the weight the Board gives the evidence. See taking a deposition in an IPR or PGR and evidentiary considerations in PTAB trials. Deposition rules and guidelines have been updated since 2013, so readers should check current USPTO guidance.

Key takeaways

• Uncompelled depositions outside the United States need party agreement or Board direction under § 42.53(b)(3).
• A party using an interpreter must arrange a conference with the Board in advance.
• The Board’s twelve guidelines provide for a first and second interpreter, consecutive interpretation and on-the-record resolution of disputes.
• Challenges to interpretation must be raised during the deposition, not afterward.