Parties suing in the United States with foreign-based witnesses take heed, as you may find your foreign-based witnesses traveling to the United States for depositions.  On February 12, 2015, Magistrate Judge Paul Grewal issued an Order in Corning Optical Communications Wireless, Ltd. v. SOLiD, Inc., Case No. 5:14-cv-03750-PSG, in which he instructed the plaintiff, Corning Optical Communications Wireless, Ltd. ("Corning"), to produce its witnesses residing outside of the U.S. for depositions in the Northern District of California.  After weighing several factors, Judge Grewal concluded that having foreign-based witnesses deposed in the Northern District was the "most equitable solution."

Corning originally sued SOLiD, Inc. ("SOLiD") and Reaching Holdings, LLC ("Reach") in the Eastern District of Virginia for infringing U.S. Patent Nos. 7,483,504 and 5,969,837 in May 2014.  SOLiD and Reach successfully transferred the lawsuit to the Northern District of California.  In December 2014, SOLiD and Reach sought to depose the named inventor on the '504 Patent, who also happened to be Corning's Director of Systems Engineering.  The inventor witness was located in Israel.  SOLiD and Reach initially proposed to depose the witness in Washington, D.C., close to the Eastern District of Virginia where Corning originally had filed its lawsuit.  Corning refused to bring the inventor witness to the United States unless SOLiD and Reach agreed to produce their own foreign-based witnesses—all located in Korea—in the United States as well.  SOLiD and Reach rejected Corning's proposal and moved for an order compelling the inventor's deposition.

Magistrate Judge Grewal split the proverbial baby, requiring all parties to produce their foreign-based witnesses in the Northern District of California.  In so ruling, Judge Grewal considered several factors, including:

  1. convenience and hardship for the parties to attend the depositions;
  2. cost of transportation and lost work to the defendant;
  3. the expense and inconvenience to move voluminous documents;
  4. whether the parties' counsel are located in the forum district;
  5. whether the defendant is a large corporation whose employees often travel;
  6. the judicial economies that may result from having the deposition in the forum district; and
  7. whether the parties' claims and relationship are such that the appropriate equities favor a deposition site in the forum district

Recognizing that "this case would require counsel to fly all over the world to take the depositions and both parties have presences in the forum district," Magistrate Judge Grewal concluded the "most equitable solution" was to have the depositions in the Northern District.  Magistrate Judge Grewal, however, did allow the parties to reach an agreement "setting different parameters for deposing foreign-based party witnesses."

Requiring both parties to bring their foreign-based witnesses in the United States is no small matter.  As we reported in Money Doesn't Grow on Trees (Even to pay for Deposition Costs), parties can incur significant costs to fly attorneys around the world to depose foreign-based witnesses.  Arguably, SOLiD and Reach were "trying to have their cake and eat it too," demanding the inventor's deposition in the United States while being unwilling to produce their own foreign-based party witnesses in the United States.  Magistrate Judge Grewal's decision demonstrates that courts, in these circumstances, will try to reach a fair solution for both parties.  There is an upside here as Corning, SOLiD, and Reach still have an opportunity to stipulate to other arrangements for depositing foreign-based party witnesses.

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