Murata Mfg., Ltd. v. Bel Fuse, Inc., __ F.R.D. __, 2007 WL 1317100 (N.D. Ill. May 2, 2007) (Cole, Mag. J.).

Judge Cole granted in part defendants’ motion to compel the testimony of plaintiff’s former employee, Sakamoto, who was a named inventor on the patent in suit residing in Japan.  Earlier in the litigation, defendants argued for a longer discovery period because of the time it would take to secure Sakamoto’s deposition.  But through a series of miscommunications, delays and unfortunate circumstances, defendants had not been able to secure  Sakamoto’s agreement to be deposed, in Japan or elsewhere, until near the close of discovery.  As a result, defendants filed the instant motion to compel plaintiff to produce Sakamoto for deposition in the United States either as a managing agent pursuant to Fed. R. Civ. P. 30(b)(1) or based upon language in the patent assignement document which obligated Sakamoto to aid plaintiff in patent-related matters.  As an initial matter, the Court denied plaintiff’s request to dismiss the motion for failure to meet and confer pursuant to Local Rule 37.2.  The Court explained that based upon the parties’ history on the issue, compliance would have been futile and, therefore, it excused defendants’ alleged non-compliance.

Turning to the substance of the motion, the Court held that Sakamoto was not a managing agent pursuant to Rule 30.  Sakamoto was a retired inventor who had never had any degree of control over plaintiff’s affairs.  But the agreement Sakamoto signed, along with his co-inventors, assigning his patent rights to plaintiff did obligate plaintiff to produce Sakamoto.  The agreement required that Sakamoto perform "all acts necessary" to enforce or defend the patent in "any proceeding in any country."  Based upon that language, Sakamoto was obligated to be deposed at plaintiff’s request.  And the Court required that plaintiff request that Sakamoto submit to a deposition.  But the Court held that nothing in the assignment agreement required Sakamoto to leave Japan for the deposition, and the Court did not extend the discovery deadline.  So, defendants were granted the right to depose Sakamoto, but likely were not able to take the deposition.