Creative COVID-Time Deposition Procedure

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Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S.  See 37 C.F.R. § 42.53(b)(2), (b)(3).  Furthermore, many foreign jurisdictions have restrictions on taking depositions within their jurisdictions for use in U.S. courts.  Therefore in PTAB proceedings, expert witnesses who reside abroad often travel to the U.S. for cross‑examination.  However, this arrangement is becoming increasingly difficult due to the various travel restrictions and quarantine requirements currently in place around the world.  The PTAB and the parties were faced with this challenge in BlueCatBio MA Inc. v. Yantai AusBio Laboratories Co., Ltd., PGR2020-00051, and the solution they reached illustrates what the “new normal” may be.

In this case, Petitioner BlueCatBio filed PGR petition on April 1, 2020, which included an expert declaration from Yoshiki Yagi, a resident in Japan.  The PTAB instituted the case on December 15, 2020.  The cross-examination of Mr. Yagi, however, presented a number of challenges.  The PTAB regulations require that depositions to be taken at a “location within the United States before any disinterested official authorized to administer oaths,” 37 C.F.R. § 42.53(b)(2), which is impractical given the current status of international travel.  Alternatively, while PTAB regulations permit depositions outside the U.S. “upon agreement of the parties or as the Board specifically directs,” id. § 42.53(b)(3), Japanese law only allows this within U.S. embassy or consulates in Japan.  See Depositions in Japan, U.S. Embassy & Consulates in Japan, https://jp.usembassy.gov/u-s-citizen-services/attorneys/depositions-in-japan/.  Moreover, the U.S. embassy and consulates in Japan are no longer making their facilities available for taking depositions due to the pandemic.

Faced with this challenge, the parties came to a creative solution: they would conduct an unsworn “interview” of Mr. Yagi via video conferencing; an interpreter would translate between English and Japanese; and Mr. Yagi would sign a bilingual transcript of the interview, which would be filed as his witness statement.

The PTAB approved this solution.  Considering “the statutory requirement to complete the post‑grant review within one year,” the PTAB said it was “necessary to waive the normal requirements that testimony be submitted in the form of a deposition transcript and that depositions take place within the United States before an official authorized to administer oaths and take testimony under 35 U.S.C. § 23.”  BlueCatBio, PGR2020-00051, Paper 47 (Feb. 24, 2021).

Takeaway

Courts, including the PTAB, are becoming increasingly receptive to remote video deposition, due to the pandemic.  The trend may persist even after the pandemic.  It would be advantageous for PTAB practitioners to become familiar with this new format of “deposition.”

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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