Illumina, Inc. v. BGI Genomics Co., Ltd

Background

Defendants moved to compel Plaintiffs to produce nine named inventors for deposition in two related patent-infringement actions. Plaintiffs opposed the motion. The court considered two issues: whether the depositions were relevant and proportional under Federal Rule of Civil Procedure 26, and what Plaintiffs were required to do under the inventors’ patent-assignment agreements.

Relevance and proportionality

The court held that inventor depositions were relevant because Defendants had pleaded invalidity defenses under patent-law section 112. Those defenses asserted that the patents lacked an adequate written description or enablement, including because the inventors allegedly did not possess the claimed inventions when the priority applications were filed. The court concluded that inventor testimony could provide evidence about those defenses.

The court rejected Plaintiffs’ argument that Defendants first had to show a substantial validity question or provide a detailed deposition outline. Defendants adequately pleaded the defenses and identified the subjects of the requested testimony. The court also rejected limiting the depositions to inventors selected by Plaintiffs.

On proportionality, the court viewed the depositions together with the parties’ proposed aggregate limits for depositions in both related cases. It noted that both sides’ proposals appeared to assume that all nine inventors would be deposed and concluded that aggregate limits were a better way to manage proportionality than deciding separately how many inventors could be deposed on each issue.

Assignment agreements

The assignment agreements stated that the inventors would communicate facts known to them about the patents, testify in any legal proceeding, sign lawful papers, and do everything possible to help the assignee obtain and enforce patent protection for the patents in the United States.

Plaintiffs said seven inventors were in the United Kingdom, one was in the Netherlands, and Plaintiffs did not know where the ninth inventor was. Plaintiffs argued that because the inventors were not their employees, officers, directors, or managing agents, they could not be compelled under Federal Rule of Civil Procedure 30 and should instead be questioned through the Hague Convention.

The court disagreed. It relied on decisions enforcing similar agreements to testify and concluded that the agreements here specifically required testimony in U.S. legal proceedings. The court distinguished decisions in which assignment language did not clearly require an American-style deposition or a deposition in the United States.

Order

The court concluded that Plaintiffs had to make the inventors available for deposition. Because of the pandemic, it ordered the depositions to occur by videoconference rather than requiring the inventors to travel to the United States. The court stated that the inventors could testify from their homes in the United Kingdom or the Netherlands in the same U.S. legal proceeding.

The court ordered Plaintiffs to make the inventors available by videoconference or face sanctions. For the inventor Plaintiffs could not locate, the court ordered Plaintiffs to advise the court within 10 days about their efforts to locate him. The court noted that sanctions might not be warranted if Plaintiffs showed that diligent efforts were defeated by events beyond their control, but said the court could consider Plaintiffs’ earlier communications that may have suggested the depositions were voluntary, inconvenient, or dangerous.

The discovery order was signed by Thomas S. Hixson, United States Magistrate Judge.