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A Vacation to Europe… Deposition Testimony of Foreign Inventor

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Where the inventor of the patent-in-suit is a German citizen, former employee of the plaintiff’s predecessor and assigned all rights in the invention to his former employee, can he be subject to an “American-style” deposition? As with all things legal, it depends. Or so Judge Robinson recently held in the case. C.A. 06-164, Memorandum Order (D. Del. Jan. 26, 2007) (Robinson, J.).

The defendants in this case were seeking the deposition of a named inventor on the patent-in-suit and German citizen. The inventor was a former employee of an early predecessor company of the plaintiff. Crucial to the Court’s decision was the language in the assignment of the inventor’s rights to his former employee. The assignment required the inventor to: “�testify in any legal proceedings�” and “�do everything necessary to aid [his former employer] their successors and assigns, to obtain and enforce proper protection for said invention in the United States�” Id. at 2. (Note: the inventor had agreed to be deposed under the Hague Convention.) The Court held that this assignment only required the inventor to “testify in any legal proceedings” only on behalf of his former employer and “only generally obligates” him to “do everything necessary or desirable to aid” the former employer’s successors and assigns (such as the plaintiff here). Id. If the assignment had required him to testify in any legal proceeding on behalf of his former employer or their successors or assigns the outcome likely would have been different. The type of broad language at issue here will not require a non-party to participate in an American-style deposition, and therefore the inventor must be deposed under German law via the Hague Convention process.

Also see Chief Judge Robinson’s opinion on the issue of patent misuse .

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