Shearman & Sterling LLP | IP Blog | Massachusetts District Court Declines To Compel Inventor Testimony<br >  
IP Litigation
This links to the home page
FILTERS
  • Massachusetts District Court Declines To Compel Inventor Testimony
     
    01/10/2018
    On January 2, 2018, the United States District Court for the District of Massachusetts entered an order denying an accused infringer’s motion to compel the testimony of the named inventor of a patent in suit, even though the inventor was an employee of the plaintiff patent owner when the suit was filed, and was obligated by contract to testify if requested by the patent owner.  Koninklijke Philips N.V. v. Wangs Alliance Corp., case no. 14-CV-12298-DJC.

    Conventional wisdom among practitioners is that “inventor testimony is plainly relevant to patent litigation,” as Wangs Alliance Corp. (WAC) argued to the Court.  WAC also argued that the inventor in question “is expected to possess critical testimony regarding Philip’s patent practices at the time the ’690 patent was filed, the prior art, the problem that the ’690 patent allegedly solves, the underlying development of the technology claimed in the ’690 patent, the alleged contribution of each inventor to the ’690 patent, and the facts and circumstances surrounding the alleged invention.”
     
    The Court rejected all of these arguments, however, noting that WAC’s invalidity contentions concerned only prior art (thus implying that WAC did not contend, for example, that the inventor derived the invention from someone else), and that inventors “typically do not testify to compare the prior art to the patent at issue.”  The Court also noted that WAC had not pleaded an inequitable-conduct defense that would put the inventor’s state of mind at issue, and that “it would be improper to use discovery in search of a factual predicate for inequitable conduct that had not yet been pled.”
     
    The decision is a reminder that “the story of the invention” is not necessarily relevant to a patent-infringement suit.  Issues of infringement turn on a comparison of the patent claims to the accused product, and issues of invalidity most commonly turn on a comparison of the patent claims to the state of the prior art; neither issue requires inventor testimony.  Inventors are central to the patent system, but plaintiffs who seek to present inventor testimony still need to link that testimony to issues in the case, and defendants should be aware of the possibility to argue that inventor testimony is irrelevant and should be excluded at trial.

LINKS & DOWNLOADS