Compelling Involuntary Depositions of Inventors in Taiwan

It is common in U.S. patent litigation for a party accused of infringement to seek to depose inventors of the patents-in-suit. If the inventors are officers, directors or managing agents of a party and live or work in the U.S., it should be a routine matter to compel their depositions pursuant to the federal rules of civil procedure (FRCP). If the inventors are located outside the U.S. and do not consent to be deposed, the process is more burdensome, but often their depositions can be compelled pursuant to the provisions of the Hague Convention or other relevant treaty.

However, the process may be especially difficult if the inventor is located in Taiwan, is unwilling, and is no longer, or never was, employed by a party. First, Taiwan is not a signatory to the Hague Convention, so any attempt to compel the unwilling witness will have to proceed by way of letters rogatory. Second, if the inventor is not an officer, director or managing agent, the FRCP won’t apply and one must find another legal basis for ordering the testimony.

A number of courts have found that legal basis in the invention assignment agreement that the inventor signed in order to give up his rights in the patent. Invention assignment agreements usually contain language requiring the inventor to render certain assistance to the assignee of the patent. Depending on the particular facts and contract language, it is not unusual for a U.S. court to order a party to produce a foreign inventor to testify at deposition or trial, overseas or in the U.S., based on the notion that the assignment agreement gives the party “control” over the inventor.

What the courts gloss over is the extreme difficulty a party may encounter attempting to compel the inventor to comply with the order if the inventor refuses. In Taiwan, in particular, parties generally lack such control.

Perhaps the leading case is Minebea v. Papst (D.D.C. 2005), in which the plaintiff sought voluntary depositions of several German inventors of defendant’s relevant patent, but the inventors declined, so the Special Master ordered defendant to sue the inventors in Germany, if necessary, to obtain their cooperation. Defendant objected that it had no control over the inventors, since they were not employees, and even if it had some control it had no duty to exercise it. The court disagreed.

The inventors in that case had signed assignment agreements requiring them to, “testify in any legal proceeding” and “generally do everything possible to aid assignee . . . to obtain and enforce proper patent protection for this invention in the United States.”
Defendant argued even if that language gave defendant a right to demand the inventors’ testimony, it was only meant to benefit defendant and not a third party. Again, the court disagreed, finding defendant’s requests for the inventors to appear at deposition were “made with a wink and a nod,” such that the inventors’ “failure to appear must be attributed to [defendant].” The court concluded that defendant had willfully failed to produce the witnesses and if it failed to produce them at trial the jury would be permitted to draw adverse inferences from their absence.

Likewise, in Amgen v. Ariad Pharmaceuticals (D. Del. 2007), a party was ordered to produce foreign inventors for deposition based on alleged “control” arising from the assignment agreements. The court admitted the inventors were not employees, officers, directors or managing agents of defendants, so FRCP 30 would not apply, but noted that each inventor executed an assignment requiring the “giving of testimony” in any proceeding concerning the invention. On that basis the court ordered the defendant to produce the foreign inventors of its patent for deposition in the U.S. See also, In re Nifedipine Capsule Patent Litigation (S.D.N.Y. 1989), which reached the same conclusion.

Admittedly, courts don’t find all language in assignment agreements sufficient to order a party to compel the testimony of its inventor. Notably, the agreement must require the inventor to provide “testimony.” Other witnesses in the Minebea case signed agreements merely requiring them to render assistance and not using the word testify, which the court found “too tenuous” to support an order compelling their appearance. See also, Litetronics Intl. v. Technical Consumer Products (N.D. Ill. 2006); Aerocrine AB v. Apieron, Inc. (D. Del. 2010).

And it must be clear the inventor’s obligation under the assignment agreement is owed to the party in the lawsuit. In Medpointe Healthcare v. Apotex (D. Del. 2002), the inventor signed an assignment agreement with a predecessor company to the party in the lawsuit and the agreement failed to mention successors and assigns, so the court declined to order the party to compel the attendance of the inventor.

However, as illustrated emphatically in the Minebea case, when an assignment agreement requires the inventor to testify in legal proceedings on behalf of a party to the lawsuit, courts are not afraid to brashly order the party to compel the inventors to testify and to sue them if necessary to bring about their compliance. As noted above, the court is asking for the impossible if the inventors live in Taiwan and refuse to testify.

To compel the inventors to comply, one must sue them in Taiwan and convince the local court that their signing of the invention assignment agreement creates an obligation for the inventors to submit to U.S.-style depositions, either in Taiwan or elsewhere. When ascertaining the meaning of contract provisions, Taiwan courts look at the intent of the parties. Unless the agreement explicitly refers to depositions, it is extremely unlikely an inventor in Taiwan ever considered that such an agreement might create such an obligation.

Unlike the common-law, adversarial system of the U.S., Taiwan is a civil-law country, which uses an inquisitorial legal system, in which the court plays an active role investigating the facts of a case. There is no public policy in favor of broad discovery and there are no formal discovery procedures. The closest one gets to a deposition is to convince the judge to question a witness on one’s behalf. Consequently, even most Taiwan lawyers have only a hazy notion of depositions; non-lawyers are generally completely ignorant about the subject. It is therefore, inconceivable that a Taiwan inventor would have anticipated being haled in for a formal deposition when he signed the assignment agreement.

Moreover, even if one succeeded in convincing a Taiwan court to order the inventor to testify at a deposition or trial, which seems extremely unlikely, the inventor could simply disregard the Taiwan court’s order. In general, refusal to comply with a Taiwan court’s order to appear can result in only a small fine, at most. So, it’s interesting to read the strong words of angry U.S. judges, ordering parties to compel recalcitrant individuals to comply with their demands, but here in Taiwan, at least, those words seem a little detached from reality.


For assistance with depositions in Taiwan, please contact a Taiwan deposition lawyer.

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