Takeaway: The Board has discretion to limit routine discovery, especially with regard to cross-examination of a translator’s affidavit testimony.

In its Order, the Board denied a motion to authorize Patent Owner to apply for a subpoena for the deposition of Mr. Yanming Chu, who is the translator of one of the prior art references at issue in the IPR. In an email to the Board, Patent Owner asserted that Mr. Chu’s declaration was submitted as supplemental evidence in response to Patent Owner’s objections regarding Petitioner’s failure to include translator affidavits. Patent Owner also asserted that this request is necessary because of questions regarding ambiguities in the translation, that cross examination of translators is a matter of routine discovery, and that Petitioner does not oppose the request.

The Board noted that Patent Owner failed to provide: (1) identification of the prior art reference at question; (2) identification of the alleged ambiguities; or (3) any information or evidence forming the basis of Patent Owner’s belief that the translation is ambiguous. Also, the Board explained that Patent Owner overlooked the full text of 37 C.F.R. § 42.51(b)(1) when it asserted that “cross examination of translators is available as a matter of routine discovery.” Specifically, the Board noted that 37 C.F.R. § 42.51(b)(1) “is subject to Board discretion to limit or prohibit cross examination of a translator’s affidavit testimony, depending on the facts of a particular proceeding.” In this proceeding, the Board exercised its discretion to deny Patent Owner’s request for authorization to apply for a subpoena for the deposition testimony of Mr. Chu.

However, the Board provided that Patent Owner could send an additional email with copy to Petitioner that included “(1) an identification of the specific exhibit in which the alleged ambiguities appear and a citation of the proceeding or proceedings in which the exhibit is of record; (2) a complete list of all alleged ambiguities in the exhibit and (3) identification of the evidence forming the basis of Patent Owner’s belief that each of the alleged ambiguities is ambiguous.” Patent Owner followed this procedure, and obtained from the Board an order granting authorization to apply for a subpoena of Mr. Chu. In that Order, the Board also permitted Petitioner to attend the deposition and to conduct redirect examination of the witness.

Daifuku Co., Ltd. and Daifuku America Corp. v. Murata Machinery, Ltd., IPR2015-00083; IPR2015-00085; IPR2015-00088
Paper 16: Order Regarding Authorization to Apply for a Subpoena
Dated: July 2, 2015
Patent: 8,197,172 B2; 7,771,153 B2; and 7,165,927 B2
Before: Ken B. Barrett, Barry L. Grossman, and Brian P. Murphy
Written by: Grossman