Plaintiff Gerber Scientific International ("Gerber") filed a patent infringement action against Roland DGA Corporation ("Roland"), asserting that Roland infringed Gerber's patent covering a method and apparatus for computerized graphic production. Roland filed a motion for protective order with respect to the depositions of three of its Japanese employees and its president.
In its motion for protective order, Roland argued that the depositions of its three Japanese employees should take place in Japan and that the deposition of its president should not take place at all because he is a senior executive with no unique or specialized knowledge relevant to the case. With respect to the employees in Japan, Roland argued that witnesses should be deposed near their residence or their place of business and both parties could equally bear the costs, as such Gerber could not satisfy its burden of proving that circumstances exist that warrant taking the depositions in the United States.
In opposing the motion, Gerber asserted that Roland regularly conducts business in the United States and that the district court had determined that it had personal jurisdiction over Roland. Gerber also noted that it had noticed the depositions in California rather than New York to minimize the inconvenience to the witnesses. Gerber also asserted that the procedural and legal impediments to deposing witnesses in Japan outweigh the witnesses' inconvenience in travelling to California.
In analyzing the parties' respective arguments, the district court ultimately determined that the facts weighed in favor of taking the depositions outside of the United States and closer to the defendant's place of business. The district court did, however, find that the depositions should be taken in Taipei, Taiwan instead of Japan due to the procedural impediments. "The facts in this case weigh in favor of taking the depositions in question outside of the Untied States and closer to the defendant's place of business. The factors of cost and convenience weigh in favor of conducting the depositions abroad. Although the court will have limited ability to oversee any issues that may arise during the depositions, counsel have had few problems thus far in the several depositions that have taken place. Finally, the court recognizes that the deponents do not currently have any plans to travel to the United States. The plaintiff has failed to show the requisite "peculiar" circumstances warranting taking the depositions in question in California.
"The court also concludes, however, that conducting the depositions at issues in Taipei, Taiwan, presents minimal inconvenience to the witnesses and avoids the procedural and legal impediments to conducting the depositions in Japan."
The district court also analyzed whether it would be appropriate to order the deposition of Roland's president because Roland argued that the president did not have unique or specialized knowledge relevant to the case. The district court found that it was possible that Gerber could obtain the information through less obtrusive means but did allow that Gerber could seek the deposition of the president if it did not obtain the information it seeks through other witnesses. If the deposition of the president of Roland "becomes necessary, the parties shall conduct it on the final day of depositions in Taiwan."
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.