Takeaway: A patent owner is entitled to cross-examine, as routine discovery, individuals who translate prior art references that form the basis for the Board’s institution of review, and the Patent Owner is not required to produce documents to be used in the cross-examination before the deposition.

In its Order, the Board resolved a dispute between the parties concerning whether Patent Owner is permitted to depose individuals who translated one of the references that forms the basis for the Board’s institution of review. In particular, the Board ordered Petitioner to file the declarations of individuals who translated portions of the prior art reference, ordered that Patent Owner is authorized to cross examine the individuals who translated the reference, and denied Petitioner’s request to file a motion for additional discovery.

Petitioner submitted a 337-page English translation of a Japanese-language reference known as the Tokyo Stock Exchange (TSE) publication along with an affidavit certifying that the translation was true and accurate. Patent Owner objected to the affidavit as failing to comply with 37 C.F.R. § 42.63. Petitioner then served several declarations from individuals who had translated various portions of TSE. Patent Owner alleged that the translation is inaccurate and sought to depose the individuals who translated TSE, but Petitioner resisted the depositions based on its belief that cross examinations of the individuals are not permitted per the routine discovery rule.

In CBM proceedings, cross examination of affidavit testimony is authorized under the routine discovery rule.  After considering the parties’ arguments, the Board concluded that, under the circumstances of these proceedings, cross examination of the translators is permitted as routine discovery.

In view of the Board’s explanation that cross examination is permitted, Petitioner sought authorization to file a motion for additional discovery for documents in Patent Owner’s possession in support of its theory that the TSE English translation is inaccurate. The Board denied the request because Patent Owner does not know yet whether it will raise the accuracy of the translation as an issue and it would undermine the cross examination process if Patent Owner was required to provide copies of documents it will rely upon days or weeks prior to the cross examination. Under the rules, any documents a deposing party will rely on for cross examination, if not previously served, must be served at the deposition.

TD Ameritrade Holding Corp., et al. v. Trading Technologies Int’l, Inc., CBM2014-00131, CBM2014-00137 
Paper 27: Order on Conduct of the Proceeding 
Dated: January 22, 2015 
Patents: 7,533,056 and 7,685,055 
Before: Sally C. Medley, Meredith C. Petravick, and Philip J. Hoffmann
Written by: Medley