This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 8: Cross-border Proceedings
United States Patent and Trademark Office Patent Trial and Appeal Board (USPTO PTAB) [2013]: Ariosa Diagnostics v Isis Innovation Ltd., Case IPR2012-00022
Date of judgment: August 7, 2013
Issuing authority: United States Patent and Trademark Office Patent Trial and Appeal Board (USPTO PTAB)
Level of the issuing authority: First Instance
Type of procedure: Judicial (Administrative)
Subject matter: Patents (Inventions)
Plaintiff: Ariosa Diagnostics
Defendant: Isis Innovation Ltd.
Keywords: PTAB, Discovery, Uncompelled deposition, Abroad
Basic facts: An expert witness in an inter partes review proceeding could not obtain a visa to the United States in time to testify in a deposition. Alternate arrangements had to be made for the deponent to testify in a foreign jurisdiction that does not require a visa.
The Board pointed to rule 37 C.F.R. § 42.53(b)(3), which states that “[u]ncompelled deposition testimony outside the United States may only be taken upon agreement of the parties or as the Board specifically directs.”
Held: PTAB set forth twelve (12) specific requirements for taking testimony abroad (in a foreign jurisdiction), to include: a duty to provide interpreters, adopting the consecutive mode of interpretation, methods for handling disagreements for interpretation, documents used by the translator during the deposition, and a prohibition against an attorney for a party also serving as an interpreter.
Relevant holdings in relation to cross-border proceedings: Obtaining evidence held outside the local territory
Relevant legislation: 37 C.F.R. § 42.53(b)