In this patent infringement action between Industrial Technology Research Institute ("ITRI") and LG Corporation ("LG"), LG moved to compel ITRI to make a Taiwanese citizen, who was also the inventor of the patent-in-suit, but no longer an employee of ITRI, to sit for a deposition in the United States. The district court noted that "Courts have previously been called upon to address disputes over whether an agreement in which a non-U.S. resident inventor assigns patent rights to a business entity that subsequently becomes involved in patent enforcement litigation obligates the inventor to appear in the United States for a deposition in connection with the patent litigation."
Here, the language of the assignment agreement provided: " [Sheen] hereby agrees to execute any documents that legally may be required in connection with the filing, prosecution and maintenance of said application or any other patent application(s) in the United States for said invention . . . . [Sheen] also agrees, without further consideration and at [ITRI's] expense, to identify and communicate to [ITRI] at [ITRI's] request documents and information concerning the invention that are within [Sheen's] possession or control, and to provide further assurances and testimony on behalf of [ITRI] that lawfully may be required of [Sheen] in respect of [sic] the prosecution, maintenance and defense of any patent application or patent encompassed within the terms of this instrument."
The district court then noted that "Courts interpreting assignment agreements containing similar language have required the foreign inventor to sit for a deposition in connection with litigation over the patent. See Murata Mfg. Co. v. Bel Fuse, Inc., 242 F.R.D. 470, 478-80 (N.D. III. 2007) (finding agreement that "said assignors will, whenever counsel of . . . [Murata] . . . shall advise that . . . any proceeding in connection with [the subject patent] in any country . . . is lawful and desirable . . . take all lawful oaths, and do all acts necessary or required to be done for the . . . enforcement and defense of [the patent]" gave Murata the contractual power to require the inventor to sit for a deposition); Aerocrine, 267 F.R.D. at 111-12 (finding assignment agreement specifically contemplated the provision of testimony for purposes of enforcing patent rights in the United States); Minebea Co., Ltd. v. Papst, 370 F. Supp. 2d 302, 308-09 (D.D.C. 2005) (holding that assignment agreements contained express agreements by the assignor inventors to provide testimony at the request of the assignee patent holder."
Based on the language of the agreement and the case law, the district court then determined that the inventor was obligated to provide a deposition and that ITRI had the contractual power to require the inventor to do so.
The district court also analyzed whether the deposition should take place in the United States, Taiwan or another location. "The Court must next consider whether the deposition should take place in the United States, Taiwan, or another location. The courts in Minebea, Aerocrine, and Amgen required foreign-based inventors to be produced for deposition in the United States. See Minebea, 370 F. Supp. 2d at 308; Aerocrine, 267 F.R.D. at 111-12; Amgen, 2007 WL 1425854 at *3. Conversely, the courts in Yaskawa and Murata found that although the non-U.S. resident inventors had a contractual obligation to be deposed, they were not required to travel to the United States for their depositions. Yaskawa, 201 F.R.D. at 444; Murata, 242 F.R.D. at 480. Here, the assignment was made for the express purpose of ITRI's acquiring 'the entire right, title and interest' in the invention 'in the United States,' not any other country. See Assignment. It is clear that the assignment agreement was entered into for the specific purpose of ITRI obtaining the patent in the U.S. and protecting its patent rights here. The Court therefore finds that ITRI has the ability to compel Sheen to appear in the United States to provide testimony at its request."
Finally, the district court noted that the inventor no longer worked for ITRI and that so far ITRI had not been able to obtain the inventor's cooperation. Nonetheless, the district court ordered ITRI to work harder to compel the inventor's cooperation. "LG's request for an order compelling ITRI to make Jyh-Wen Sheen available to sit for a deposition in the United States is GRANTED. ITRI shall undertake more persuasive measures to ensure Sheen's compliance with his contractual obligation to testify, and shall produce Sheen for a deposition in the United States at its own expense, as provided for by the assignment agreement. Notwithstanding this ruling, given that the Court is able only to compel ITRI to make Mr. Sheen available for deposition, and that Mr. Sheen, a non-party foreign resident, is not himself subject to the Court's jurisdiction, the Court encourages the parties to cooperate with each other and to make any necessary accommodations for the witness in order to obtain a result that is satisfactory to both sides. This order does not foreclose LG from seeking a letter of request under Fed. R. Civ. P. 28(b) or pursuing other alternative means to secure some form of testimony from Mr. Sheen."
Industrial Technology Research Institute v. LG Corporation, Case No. 12-CV-393-IEG (JMA) (S.D. Cal. Dec. 4, 2012)