Posted On: May 15, 2007 by Karen E. Keller

Assignment Language Requires Foreign-based Inventors to Testify in DJ Action

A frequent issue that arises in patent litigation is how to secure the testimony of inventors who are no longer employed by the plaintiff (or defendant in a declaratory judgment action). This issue becomes even more complicated when the inventors do not reside in the United States. The language of any assignment agreement is often outcome-determinative, as was the case in Amgen, Inc., et al. v. Ariad Pharmaceuticals, Inc., et al. C.A. No. 06-259, Memorandum Order (D. Del. May 14, 2007) (Thynge, J.).


Amgen in its declaratory judgment action against Ariad moved to compel the deposition of 3 (of 13 total) inventors on the patent-in-suit whom Ariad refused to produce. These three inventors were all located overseas and were no longer employed by the defendants, however, all three executed assignment agreements. The assignment provided, in relevant part, that they would: "…perform any other lawful acts which may be deemed necessary to secure fully the aforesaid invention to said ASSIGNEE…including the execution of applications for patents in foreign countries, and the execution of substitution, reissue, divisional or continuation applications and preliminary or other statements and the giving of testimony in any interference or other proceeding in which said invention or any application or patent directed thereto may be involved." Id. at 2.

Ariad opposed the deposition request because none of the inventors were ever employed by or affiliated with them, there were ten other inventors that were available for deposition and the language of the assignment was only related to perfecting title of the invention and did not require them to assist in infringement or declaratory judgment actions. Id. at 3.

The Court found that unlike the language in the assignment found in Minebea Co., LTD, et al. v. Papst, et al. , 370 F. Supp. 2d 302, 308 (D.D.C. 2005) ("to render such assistance…as may be necessary to perfect title to the…Patent Rights."), there was no mention in the current assignment of perfecting title and the assignment was further not limited to assisting in prosecuting patent applications. This assignment agreement specifically required the inventors to "secure fully the invention" and testify in any legal proceedings involving the invention or patent for that invention and therefore the Court required Ariad to produce the three inventors in the U.S. for deposition at Amgen's cost. Id. at 5, 6.

Ariad's argument that ten other inventors on the patent-in-suit were available for deposition also did not persuade the Court otherwise. The Court found that each inventor's contribution to this patent that "addresses complicated bioscience" is relevant. Furthermore, the Court noted, ARIAD had produced two of these inventors in other litigation surrounding the same patent. Id. at 6.