Foreign inventors must testify in U.S. if under control of party or contractually obligated to provide testimony
Aerocrine AB and Aerocrine Inc. v. Apieron Inc., Civ. No.08-787-LPS, March 30, 2010.
Stark, M. J. Defendant’s motion to take depositions of foreign inventors in the U.S. is granted in part and denied in part. Defendant’s motion to compel plaintiff to produce two NIOX devices is granted in part but limited to one.
The disputed technology involves medical devices capable of measuring nitric oxide levels in exhaled breath. Defendant sought to have 8 foreign (Finland or Sweden) inventors brought to the U.S. for deposition or alternatively for plaintiff to bear the cost of the depositions to take them abroad. The motion is denied as to 4 inventors not presently employed by plaintiff as no writing obligates them to testify for plaintiff. The motion is granted with respect to co-inventors who executed an assignment which included an agreement to “testify in any judicial . . . proceeding and generally do everything possible to aid [plaintiff]….” over an objection that the language did not obligate them to give testimony in the U.S. Two inventors under the control of plaintiff were required to travel to the U.S. despite the objection that since other depositions would be required in Sweden, it would be more efficient to depose these inventors there as well. Defendant moves to compel plaintiff to produce 2 NIOX devices. Plaintiff objects that the parties should split the retail cost (between $22,000 and $30,000). The court rules that plaintiff must produce 1 system which defendant will return at the end of the litigation, which will minimize the cost to plaintiff.
