Illumina, Inc. v. BGI Genomics Co., Ltd
3:19-cv-03770
N.D. Cal.Aug 24, 2020Background
- Related patent-infringement actions: Illumina (plaintiff) sued BGI (defendant); defendants moved to compel depositions of nine named inventors of the asserted patents.
- Defendants assert §§112 invalidity defenses (written description/enablement); they contend inventors likely possess relevant evidence.
- Judge Orrick previously granted a preliminary injunction, rejecting enablement at that stage, but defendants claim new counsel/new theories and seek discovery regardless.
- Each inventor executed an assignment to Plaintiffs that expressly obligates them to "testify in any legal proceeding" and to aid enforcement of U.S. patent rights.
- Plaintiffs argued inventors are not employees and must be compelled via Hague Convention or Rule 45; defendants relied on assignment language to demand production.
- Court ordered Plaintiffs to make inventors available for deposition (by videoconference during the pandemic), warned of sanctions if Plaintiffs fail to diligently enforce the contractual obligation, and required a report about the missing inventor within 10 days.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Relevance/proportionality of inventor depositions under Rule 26 | Depositions are vague, unnecessary; Defendants failed to identify a substantial validity question; Plaintiffs offered to produce two inventors only | Inventors are natural, logical witnesses on written description/enablement; discovery is proper once defenses are adequately pled | Deposition discovery is relevant and proportional; Defendants need not prove merits to take discovery; inventors are proper deponents |
| Threshold to obtain inventor depositions | Defendants should be limited to plaintiffs’ chosen inventors; high bar to show substantial question of validity | No high bar; adequately pled invalidity defenses suffice to permit discovery | Court rejects a heightened pleading threshold; Defendants entitled to depose listed inventors |
| Effect of assignment agreements on ability to compel foreign inventors | Inventors are non-employees; Plaintiffs cannot "produce" them under Rule 30 and must use Hague/Rule 45 | Assignments expressly require inventors to testify in U.S. proceedings, so Plaintiffs can compel and must produce them | Assignment language is enforceable; Plaintiffs must make inventors available for deposition or face sanctions |
| Form/location of deposition & sanctions/diligence | Plaintiffs argued U.S.-style depositions may conflict with foreign practice and suggested Hague; some inventors ill, nonresponsive, or unlocatable | Defendants accept videoconference; pandemic makes remote depositions routine; Plaintiffs must diligently compel testimony | Videoconference from UK/Netherlands constitutes testimony in a U.S. proceeding and satisfies assignment; Court skeptical of Plaintiffs’ efforts, warns of sanctions, and orders a 10-day status on locating missing inventor |
Key Cases Cited
- Nuvo Pharm. (Ir.) Designated Activity Co. v. Dr. Reddy’s Labs. Inc., 923 F.3d 1368 (Fed. Cir. 2019) (inventor testimony can illuminate absence of critical written-description)
- Aerocrine AB v. Apieron Inc., 267 F.R.D. 105 (D. Del. 2010) (assignment language can obligate foreign inventors to travel or sit for deposition to enforce patents)
- Mineba Co., Ltd. v. Papst, 370 F. Supp. 2d 302 (D.D.C. 2005) (assignees who contractually require testimony may be ordered to produce foreign inventors and face sanctions for nonproduction)
- Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., 242 F.R.D. 470 (N.D. Ill. 2007) (discusses scope of assignment-to-testify language; distinguished where agreement expressly targeted U.S. proceedings)