Ariosa Diagnostics v. Isis Innovation Ltd.

Informative decision only: persuasive authority, not binding precedent. When a deposition in an AIA trial will be conducted in a foreign language with interpreters, the Board will apply, in addition to 37 C.F.R. § 42.53, a twelve-point set of guidelines (borrowed from Interference No. 104,539, Paper 54), including a first and second interpreter, consecutive interpretation, five-business-day disclosure of interpreter identity and resume, and no collateral attacks on interpretation after the deposition. The parties remain free to agree on further procedure, and the call and order satisfy the 37 C.F.R. § 42.53(e) conference requirement. The text shows the parties asked whether the guidelines the Board set in Interference No. 104,539, Paper 54, would also apply to AIA proceedings, and the Board answered by adopting them here; it names no other precedent. For the party cross-examining a foreign-language witness (here the petitioner, though the guidelines are written for any opponent), the guidelines give a right to a second interpreter at counsel table, advance notice of the first interpreter's credentials, and a way to put interpretation disputes on the record for the Board to weigh. For the party proffering the witness, the guidelines impose the duty to supply a consecutive-mode first interpreter, to make timely disclosures, and to provide documents for sight translation at least three days ahead or risk exclusion. The order cites no Federal Circuit, CCPA or Supreme Court authority; it relies only on 37 C.F.R. § 42.53. LEGAL TEST OR STANDARD: Rule 42.53 governs, and the guidelines supplement it. The twelve guidelines are: (1) the proffering party provides a first interpreter able to use consecutive mode; (2) at least five business days before the deposition it gives the opponent the first interpreter's name, business address, business telephone number, e-mail address and resume; (3) the opponent may engage a second interpreter at counsel table; (4) the opponent gives the same information about the second interpreter at least five business days before; (5) the consecutive mode shall be used; (6) the second interpreter informs counsel of disagreements by note, and counsel may raise it on the record; (7) unresolved disagreements are objected to on the record, with each interpreter stating the interpretation they believe correct; (8) the Board determines which interpretation, if any, gets more weight; (9) no collateral attacks on interpreter qualifications or interpretation after the deposition concludes; (10) documents for sight translation go to the interpreter no later than three days before, with late documents possibly excluded; (11) the interpreter must advise on the record if unable to interpret a word, expression or special term; (12) an individual may not serve as both attorney and interpreter. TRIGGERING FACTS: A party in an AIA trial plans a deposition, here the cross-examination of Prof. Kazakov, to be conducted in a foreign language with an interpreter, which triggers 37 C.F.R. § 42.53(e)'s requirement of a conference with the Board at least five days before. The parties asked for guidance, and the Board's order applies the guidelines to this proceeding. The Board also noted that uncompelled deposition testimony outside the United States may be taken only on agreement of the parties or as the Board specifically directs under 37 C.F.R. § 42.53(b)(3). That issue arose because a visa for the witness was uncertain. KEY QUOTE: "The Board acknowledges that, beyond Rule 42.53 and the above guidelines, the parties are in the best position to determine the procedure by which the deposition is to be conducted." (Paper 55, p. 4) PRIOR PRECEDENT AFFECTED: Interference No. 104,539, Paper 54, whose guidelines for foreign language depositions the parties asked about and which the Board used as the basis for these guidelines in an AIA proceeding. No prior precedential or informative decision is otherwise directly affected. PRACTICE TIP: As soon as a foreign-language deposition is foreseen, request the 37 C.F.R. § 42.53(e) conference at least five days before and calendar the five-business-day interpreter disclosures and three-day sight-translation document deadline. Also agree in advance with opposing counsel on extra time, interpreter breaks and any foreign location, because the Board expects the parties to settle these matters themselves.