In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the Board at least five days before the deposition, the Board directed the parties to the following guidelines:
In the guidelines below, "party" refers to the party proffering the witness, and "opponent" refers to the party cross-examining the witness.
- 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.
In a subsequent decision, in response to being informed that the parties agreed that experts would be deposed in Mexico City, the Board expressed concern about the proper swearing in of the witnesses. The Petitioner informed the Board that the appropriate consular official would swear in the witnesses. The Board then addressed four additional issues raised by the parties concerning the use of translators.
First, the Board stated that voir dire of the interpreter(s) was not required, but could be performed by the parties should they have concerns about the interpreter's qualifications that could not be resolved in advance of the deposition. However, the Board emphasized that such voir dire should be the exception and not the rule. The Board further stated that it will not entertain any objections to a translator's qualification at the time of the deposition that could have been resolved in advance.
Second, the Board reiterated the requirement that the parties provide the other party the name, business address, business telephone number, e-mail addresses, and resume of the first interpreter in order to resolve any concerns about the choice of interpreter in advance of the depiction.
Third, the Board stated that, in accordance with Guideline 30 set forth in Interference No. 104,539 (Paper 54), "[a]t the request of an interpreter, the party and opponent shall provide the interpreter with an opportunity to converse with the witness. Counsel for the party or opponent may inquire on voir dire as to any conversation between the witness and the interpreter." Finally, the Board held that the first interpreter could be used to prepare the witness, but that opposing counsel cannot inquire into the substance of the preparation:
The Board has determined that the same interpreter may be used in the deposition and to prepare the witness, as opposing counsel will have a check interpreter, and thus will have the opportunity to raise any issues as to the interpretation of the question or the witness' answer. We do not think it appropriate that inquiries of the interpreter as to what occurred during the preparation of the witness be allowed, as such inquiries touch on issues of privilege, and perhaps other issues. We do think it is appropriate, however, to permit [Patent Owner] to inquire only as to the fact of whether the interpreter was involved in preparing the witness.
In these decisions the Board has set forth specific procedures regarding the examination of witnesses using a translator. Not surprisingly, many of these procedures, including the use of check translators, are commonly are used in litigation.
Ariosa Diagnostics v. ISIS Innovation Limited, Case IPR2012-00022, Papers 55 and 67 (Green, A.P.J.).