In this patent infringement action between Industrial Technology Research Institute (“ITRI”) and LG Corporation (“LG”), LG moved to compel ITRI to make a Taiwanese citizen, who was also the inventor of the patent-in-suit, but no longer an employee of ITRI, to sit for a deposition in the United States. The district court noted that “Courts have previously been called upon to address disputes over whether an agreement in which a non-U.S. resident inventor assigns patent rights to a business entity that subsequently becomes involved in patent enforcement litigation obligates the inventor to appear in the United States for a deposition in connection with the patent litigation.”
Here, the language of the assignment agreement provided: ” [Sheen] hereby agrees to execute any documents that legally may be required in connection with the filing, prosecution and maintenance of said application or any other patent application(s) in the United States for said invention . . . . [Sheen] also agrees, without further consideration and at [ITRI’s] expense, to identify and communicate to [ITRI] at [ITRI’s] request documents and information concerning the invention that are within [Sheen’s] possession or control, and to provide further assurances and testimony on behalf of [ITRI] that lawfully may be required of [Sheen] in respect of [sic] the prosecution, maintenance and defense of any patent application or patent encompassed within the terms of this instrument.”
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