by Tom Engellenner
The new AIA post grant proceedings not only authorize depositions but also make provisions for deposing witnesses in a foreign language. Similar to rules that have governed foreign language depositions in PTO interference proceedings (37 C.F.R. 41.157(d)), the new AIA rules for inter partes review, post grant review and covered business method review (37 C.F.R. 42.53(d)) require that “[i]f 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.” Beyond that the rules provide little guidance as to how the foreign language deposition is conducted.
Recently, in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, a PTAB panel was asked to confirm that the further guidance that has evolved in interference practice should be followed. Specifically, Isis asked the PTAB to adopt the guidelines set forth in Interference No. 104,539, Paper 54. In an order issued August 7, 2013 (IPR2012-00022, Paper 55), Judge Green did just that and set out twelve specific guidelines:
“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.”
Judge Green’s order deviated somewhat from interference practice in not specifically authorizing voir dire of the parties’ interpreters. (During “voir dire,” counsel is typically permitted to question an individual about their background and explore potential biases.)When asked about this in a subsequent telephone conference, Judge Green said:
I think that’s between the parties. If you feel that voir dire would be useful, I think you should do it. I don’t think the Board is going to require it.
The Ariosa v. Isis case also sheds some light on the mechanics of taking depositions outside of the United States in AIA proceedings. In this case, it was not clear that Ariosa’s witness on the issue of anticipation would be able to get a visa to come to the U.S. in time to comply with the discovery schedule. The parties agreed to a deposition in Mexico City, Mexico, instead. Under established practice (e.g., the Federal Rules of Civil Procedure), witnesses must be sworn in by a U.S. consular official. – making coordination with the U.S. embassy or consulate an important consideration.
Judge Green was also asked to rule on whether an oath should be administered to the interpreters. She agreed to issue a further order that the interpreters take an oath that “they would make a true and impartial interpretation using their best skills and judgment in accordance with the standards and ethics of the interpreter profession.” The order is forthcoming.
Neither the guidelines nor the teleconference transcripts address the issue of confidentiality and the obligations of the interpreters to maintain the confidentiality of anything the parties agree should be protected from public disclosure. Presumably, interpreters fall within the category of “support personnel” as that term is used in the model protective order. However, it may be worth keeping in mind and explicitly addressing when drafting protective orders in cases where foreign language testimony is foreseeable.