Wojciak v. Nishiyama

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The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 54
Filed by: 	Fred E. McKelvey
Senior Administrative Patent Judge
Box Interference 	Entered
Washington, D.C. 	20231
Tel: 	703-308-9797
23 February 2001
Fax: 	703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
(Fred E. McKelvey, Senior Administrative Patent Judge)
STAN WOJCIAK
Junior Party,
(Patent 5,922,783),
v.
YUKO NISHIYAMA and HIRAYUKI MIKUNI
Senior Party
(Application 08/730,025).
Patent Interference No. 104,539
MEMORANDUM OPINION and ORDER
(Cross-examination through interpreter)
A. 	Conference call
A telephone conference call was held on 23 February 2001, at
approximately 09:30 a.m., involving:
(1) 	Counsel for Wojciak;
(2) 	Counsel for Nishiyama; and
(3) 	Fred E. McKelvey, Senior Administrative Patent
Judge.

B. 	Discussion
During the telephone conference call, the board was advised
that cross-examination of at least one of Nishiyama's witnesses
would take place through an interpreter (English to Japanese and
vice-versa). 	An order will be entered establishing guidelines to
be used in connection with cross-examination through an
interpreter so that any cross-examination deposition can proceed
in an orderly fashion consistent with the "just, speedy and
inexpensive" philosophy of the rules (37 CFR § 1.601). 	The
guidelines will govern further proceedings in this interference.
C. 	Guidelines
1. 	The term "party" refers to the party who presents
direct affidavit testimony to be cross-examined.
2. 	The term "opponent" means the party who will
cross-examine.
3. 	The party who presents direct affidavit testimony
of a witness is responsible for providing a "first interpreter"
who can interpret using a consecutive mode of interpretation.
Since consecutive interpretation is taxing on interpreters, there
may be situations where a party may wish to retain multiple
interpreters. 	The term "first interpreter" refers to one or more
interpreters as may be retained by the party.
4. 	The party bears the expense associated with any
first interpreter.
5. 	If an Administrative Patent Judge (APJ) attends
any cross-examination deposition, the APJ will conduct a voir
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dier on the record with respect to the qualifications of the
"first interpreter" prior to cross-examination. 	Thereafter, the
party and opponent may conduct such further voir dier as may be
appropriate. 	If an APJ does not attend the cross-examination
deposition, the party and opponent shall conduct the voir dire on
the record prior to cross-examination. 	The voir dire shall be
conducted in the absence of the witness. 	Interpreters shall
accurately and completely represent their certifications,
training and pertinent experience. 	A suggested voir dire appears
in Appendix A. 	The board ultimately will determine whether any
first interpreter is qualified, and what weight, if any, shall be
given to any interpretation by the first interpreter.
6. 	Prior to any voir dire, any interpreter shall take
an oath that they will make a true and impartial interpretation
using their best skills and judgment in accordance with the
standards and ethics of the interpreter profession.
7. 	At least five (5) business days before any cross-
examination deposition, the party shall provide to the opponent
the following material: 	(1) the name, (2) business address,
(3) business telephone number, (4) business e-mail (if any) and
(5) resume of the first interpreter.
8. 	Prior to any cross-examination deposition, counsel
for the opponent may contact the first interpreter ex parte.
9. 	The opponent may also have the services at counsel
table of a "second interpreter."
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10. 	The opponent bears the expense associated with any
second interpreter.
11. 	If a second interpreter is present at any
deposition, a voir dire shall be conducted in the manner
previously described. 	The board ultimately will determine
whether any second interpreter is qualified, and what weight, if
any, shall be given to any interpretation by the second
interpreter.
12. 	If the opponent plans to have a second interpreter
present, at least five (5) business days before cross-
examination, the party shall provide to the opponent the
following material: 	(1) the name, (2) business address,
(3) business telephone number, (4) business e-mail (if any) and
(5) resume of the second interpreter.
13. 	Prior to any cross-examination deposition, counsel
for the opponent may contact the first interpreter ex parte.
14. 	Cross-examination begins after any voir dire.
15. 	The consecutive mode of interpretation shall be
used.
16. 	Specifically, the following procedure is to be
followed in asking questions and obtaining answers:
a. 	Counsel for the opponent shall ask a question
(the "pending question") in English.
b. 	The first interpreter, using the consecutive
mode, shall interpret the pending question into the foreign
language.
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c. 	The witness will answer the pending question
in the foreign language.
d. 	The first interpreter, using the consecutive
mode, will interpret the answer into English.
17. 	In the event the second interpreter should have a
disagreement with the first interpreter with respect to any
interpretation of the pending question and/or the answer, the
second interpreter is to raise a hand (without speaking), but
steps (a) through (d) with respect to the pending question are to
continue until completed. 	If during steps (b) through (d), the
second interpreter raises a hand, upon completion of step (d),
the following procedure is to be followed (without discussion by
counsel for the party or opponent, or debate between
interpreters, if there is more than one interpreter) with respect
to the pending question and answer:
a. 	The second interpreter shall ask the court
reporter to read back the pending question in English.
b. 	The second interpreter, using the consecutive
mode, shall interpret the pending question into the foreign
language.
c. 	The witness will answer the pending question
in the foreign language.
d. 	The second interpreter, using the consecutive
mode, will interpret the answer into English.
18. 	If upon hearing the two interpreted English
answers, and should the answers in the opinion of counsel asking
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the pending question, appear to be different, inconsistent or
other confusing, counsel is on notice that a problem may have
occurred with the interpretation process. 	Counsel may wish to
rephrase the question or ask further questions.
19. 	There shall be no discussion or debate between
interpreters as to whether a particular interpretation is right
or wrong.
20. 	In cases where cross-examination takes place
before an administrative patent judge, the court reporter shall
use a steno machine and microphones will not be permitted.
21. 	The court reporter shall prepare a written
transcript in English.
22. 	The court reporter, as is usually the case, may
tape record the proceedings for the purpose of having a backup.
Any tape recording should record the entire proceeding (except
when matters are properly taken off the record), including
everything said in English and the foreign language.
23. 	In the event of different interpretations by
interpreters, the board will determine which interpretation, if
any, is to be accorded more weight.
24. 	Collateral attacks through a "third interpreter"
with respect to the qualifications of any interpreter, or the
manner in which a particular question or answer was interpreted,
shall not be allowed after conclusion of the deposition. 	Rather,
the party and opponent shall make a record during the deposition
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upon which the board may make findings with respect to accuracy
of interpretations or credibility of interpreters.
25. 	Any interpreter should be neutral, impartial,
detached and unbiased.
26. 	An interpreter shall render a complete and
accurate interpretation or sight translation, without altering,
omitting or adding anything to what is stated or written, and
without expression.
27. 	An interpreter, at any time, may inform the party
or opponent, their counsel or the witness that the role of an
interpreter does not include advocacy.
28. 	There is a fatigue factor associated with
consecutive interpreting. 	Hence, necessary pauses as may be
requested by the interpreter may be necessary. 	A request for a
pause every thirty (30) minutes is not unreasonable.
29. 	Copies of any documents which an interpreter will
be requested to "sight translate" at the deposition shall be
provided directly to the interpreter prior to any deposition no
later than three (3) days prior to any deposition. 	Failure to
timely provide copies may result in the document being excluded
from evidence. 	Unless otherwise agreed by the party and
opponent, the interpreter shall not reveal to opposing counsel
the nature of any document provided.
30. 	At 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
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inquire on voir dire as to any conversation between the witness
and the interpreter.
31. 	If at any time an interpreter reaches a conclusion
that the interpreter is unable to interpret or translate a word,
expression or special term, the interpreter, on the record, shall
immediately advise the APJ, if present, and if the APJ is not
present, shall immediately advise those in attendance at a
deposition.
32. 	Counsel shall advise witnesses that (1) they must
speak so that all present can hear, not just the interpreter,
(2) to direct answers to question to the person asking the
question (not the interpreter) and (3) not to ask questions, seek
advice or engage in discussion during a deposition with an
interpreter.
33. 	An interpreter may ask the APJ, if present, for
permission to ask a question of a witness to clarify an answer or
word. 	If the APJ is not present, the interpreter shall seek
permission from the attorney asking the question.
34. 	At any deposition, only one person shall speak at
any one time. 	An interpreter cannot interpret two statements
being made at the same time.
35. 	All individuals shall speak with clarity and in a
normal speech speed. 	Moreover, questions should be short and to
the point. 	An interpreter "translates" in the brain while a
pending question or answer is being given and if the pending
question is too long (1) it probably is not a good question and
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(2) it unduly taxes even the most proficient interpreter.
Additionally, counsel should assume that the witness is
unfamiliar with both legal and administrative proceedings which
take place in the United States. 	Thus, it is highly likely that
a witness will not know what is meant by "affidavit,"
"deposition," "interrogatory," "admission," etc.
36. 	Counsel, the party and the opponent must recognize
that a short question in English may turn out to be a long
question in a foreign language and vice versa.
37. 	An individual may not serve simultaneously as
attorney for a party and as an interpreter.
D. 	Order
Upon consideration of the record, including the discussion
at the telephone conference call, it is
ORDERED that the guidelines set out above govern further
proceedings in this interference.
FURTHER ORDERED that, unless otherwise agreed by the
parties, the opponent need not serve, prior to the deposition,
any document upon which it intends to base cross-examination.
FURTHER ORDERED that the parties shall have at the
deposition copies of all documents to be discussed on the record
for the court reporter, the interpreter, opposing counsel and the
APJ.
FURTHER ORDERED that a copy of this MEMORANDUM OPINION
and ORDER shall be provided to any interpreter to be present at
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the deposition at least three (3) business days prior to the
deposition.
__________________________________
FRED E. McKELVEY
Senior Administrative Patent Judge
23 February 2001
Arlington, VA
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Appendix A
1. 	What is your training as an interpreter?
2. 	What is your native language?
3. 	How did you learn English?
4. 	How did you learn the foreign language?
5. 	What is the highest grade you completed in school?
6. 	Have you spent any time in a foreign country where
the language we are interpreting today is spoken? 	If so,
explain.
7. 	Did you formally study English or the foreign
language in school? 	If so, explain.
8. 	How many times have you used the consecutive mode
of interpretation in court or administrative proceedings
involving live testimony?
9. 	What is your experience in interpreting in
proceedings involving scientific matters?
10. 	What is your experience in interpreting in matters
involving legal matters?
11. 	Are you a potential witness in this matter?
12. 	Do you have any known conflicts of interest?
13. 	Are you an inventor?
14. 	Have you ever filed a patent application? 	If so,
have you ever been involved in an interference?
15. 	Did you have an opportunity to speak to the
witnesses informally prior to today's proceeding? 	If so, were
there particular communication problems?
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16. 	In your opinion, does the witness have any
dialectal or idiomatic peculiarities? 	If so, are you familiar
with those dialectal or idiomatic peculiarities?
17. 	In your opinion, how long can you interpret using
the consecutive mode before fatigue sets in?
18. 	Do you have any language teaching experience? 	If
so, explain.
19. 	Have you had your interpreting skills evaluated?
If so explain.
20. 	Are you certified by the Federal or a state
government to interpret in the foreign language? 	If so, what do
you mean by "certified"? 	If a state, what state?
21. 	Have you been qualified before by a judge to
interpret in court? 	If so, explain.
22. 	Have you ever been disqualified from interpreting
in any court or administrative agency? 	If so, explain.
23. 	Have you had training in Professional Ethics for
Court Interpreters? 	When?
24. 	Do you belong to a professional interpreters
association? 	If so, which one and for how long?
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104,539
cc (via First Class Mail)
Practitioner for Wojciak
(real party in interest
Loctite Corporation):
Lawrence S. Perry, Esq.
Anthony M. Zupcic, Esq.
FITZPATRICK, CELLA, HARPER & SCINTO
30 Rockefeller Plaza
New York, NY 	10112
Tel: 	212-218-2100
Fax: 	212-218-2200
E-mail:
E-mail: lperry@fchs.com
azupcic@fchs.com
Practitioner for Nishiyama
(real party in interest
Three Bond Co., Ltd):
Louis Gubinsky, Esq.
George S. Jones, Esq.
SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
2100 Pennsylvania Avenue, N.W.
Suite 800
Washington, D.C. 	20037-3202
Tel: 	202-293-0760
Fax: 	202-293-7860
E-mail: 	lgubinsky@sughrue.com
E-mail: 	gjones@sughrue.com
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