Inventor Deposition Outline
(by Counsel for Accused Infringer)

Summary

This template is an inventor deposition outline for a deposition of an inventor by counsel for an accused infringer in a patent infringement lawsuit. It contains practical guidance and drafting notes. The named inventor(s) of a patent-in-suit is almost always an important witness and generally deposed during discovery. The inventor can provide critical testimony pertaining to the invention story, technology involved, and objective indicia of non-obviousness. In some cases, such as when an inventor or her employer has initiated the lawsuit, the inventor will be a party witness. In other cases, such as where the patent has been sold to a different entity or the inventor no longer works at the company that holds the patent, the inventor will be a third-party witness. While the majority of questions will be similar in either case, additional lines of inquiry become relevant when the inventor is a third-party witness. It is common for third-party inventors to be represented by counsel for the patent owner free of charge, as it is in the patent owner's interest to provide such representation. If the inventor is a third party, they will need to be subpoenaed in accordance with Fed. R. Civ. Proc. 45. For information on drafting and serving a subpoena, see Subpoena for Documents and/or Testimony (Discovery) (Federal). If the inventor is a party witness, a notice of deposition in accordance with Fed. R. Civ. Proc. 30(b)(1) will suffice. In some cases, an inventor may be designated as a corporate representative witness in response to a Rule 30(b)(6) deposition notice. This outline assumes the inventor is being deposed in her capacity as an individual. You will need to not only tailor this outline to the specific circumstances of your deposition, but adjust your line of questioning during the deposition based on the witness's answers. To that end, in this outline, lines of questioning contained in sub-levels of a bulleted list should only be pursued if the response to the parent question renders them relevant or appropriate. Additionally, due to the dynamic nature of depositions, you will not be able to draft every question in advance. For topics which you cannot do so, it is often helpful to include a brief description of information you would like to elicit from the witness. You can then ask questions directed to that information during the deposition. Those descriptions appear in italics in this outline. For general information regarding depositions, see Deposition Resource Kit (Federal).