Magistrate Judge Stark issued several orders and memorandum orders last wednesday in Aerocrine AB v. Apieron, Inc., C. A. No. 08-787-LPS (Mar. 30, 2010), addressing inequitable conduct, stay of the litigation, and discovery issues. We have posts forthcoming on the other orders – this post addresses the discovery-related order.
In it, Magistrate Judge Stark dealt with a motion to compel depositions of various foreign inventors of asserted patents. Defendant Aperion moved to compel Aerocrine to produce each of 8 foreign inventors for depositions in the U.S. The Court granted four of the motions, and denied four. The inventors shared certain characteristics: all of them were co-inventors of a patent in suit, each was a co-founder of Aerocrine, and each had assisted with production. The deciding factor was the degree of control that Aerocrine could assert over the inventors. The Court granted the motion to compel as to the inventors who were either still working for Aerocrine as officers or directors, or who signed patent assignment agreements specifically requiring that they be available testify in relation to these patents.