Litetronics Int’l., Inc. v. Technical Consumer Prods., Inc., No. 03 C 5733, 2006 WL 2850513 (N.D. Ill. Sept. 28, 2006) (Ashman, Mag. J.).
Magistrate Judge Ashman denied defendant’s motion to compel plaintiffs’ production of two inventors of a patent-in-suit for deposition, where the inventors were not, and had never been, employed by plaintiffs. Defendants argued that the assignment agreement gave plaintiff control over the inventors and obligated plaintiff to produce the inventors for deposition.
Specifically, the assignment obligated the inventors:
generally to do everything possible to aid [plaintiffs], their successors, assigns and nominees, at their request and expense in obtaining and enforcing patents for said invention in all countries.
The Court distinguished this language from that of the assignment in In re Nifedipine Capsule Patent Litigation, 13 U.S.P.Q.2d 1574 (S.D.N.Y. 1989), which required that the inventors “agree, whenever requested, to . . . testify in any legal proceedings.” Id. (emphasis in original). Because the language in the assignment at issue did not require that the inventors testify upon request, the Court held that the assignment did not create “meaningful contractual control over the inventors.” Accordingly, the Court did not compel plaintiffs to produce the inventors. The Court did, however, order plaintiffs to conduct a thorough search for the inventors’ current addresses and to produce all documents regarding the relationship between plaintiffs and the inventors. The Court also allowed defendant to refile its motion if the addresses are identified and any contracts between plaintiffs and the inventors show that plaintiffs have a sufficient degree of control over the inventors to require their attendance at depositions.