PAULINE NEWMAN, Circuit Judge.
This suit for patent infringement was brought by Cochran Consulting, Inc., against Uwatee USA, Inc., its Swiss parent company Uwatec AG, and Ocean’s Window, Inc., a distributor resident in the judicial district. The District Court for the Eastern District of Texas ordered the defendants Uwatec AG and Uwatec USA to produce a printed copy of the computer programming (ROM) code that is used in the accused device, Uwatec’s scuba dive parameter indicator, and imposed sanctions for their failure to do so.1
The Uwatec companies did not own or possess or control the ROM code, and were unable to obtain it or cause its production in the Texas litigation although Uwatee AG brought suit for this purpose in Switzerland against Dynatron, Inc., the owner of the code. Further, the ROM code is unnecessary to prove infringement of the patented invention. On these facts the district court’s orders and sanctions were contrary to United States jurisprudence and the Federal Rules of Evidence, as well as in violation of principles of international comity.
DISCUSSION
The discovery demand was for a printed copy of the ROM code. The ROM code is the programmer’s translation of the electronic operation of a device into computer language. During his deposition Markus Mock of Dynatron testified that the code had never been printed, and that the printed form would probably fill more than a thousand pages.
The patent in suit, United States Patent No. 4,999,606 (the ’606 patent), does not require, or its specification disclose, any particular ROM code. The ’606 patent states only that read only memory (ROM) is one source of memory in the dive indicator; it contains none of the ROM programming such as is here sought by discovery. The entire content of the patent concerning the ROM code is the following sentence:
The memory may comprise a read only memory (ROM) and a random access memory (RAM) to not only enable storage of information relating to dive tables but to also enable ancillary calculations to be carried out or to store information such as surface interval duration between dives, bottom time water temperature and depth attained in a dive for example.
’606 patent, eol. 8, lines 24^30.
The ’606 invention is not an invention of software programming: it is an invention of a scuba indicator device for divers, having specified mechanical and electronic components and performing specified functions, as set forth in Claim 1:
1. An underwater transmitter/reeeiver assembly for use with a self-contained underwater breathing apparatus including a breathing gas tank and a diver’s face mask, the assembly comprising:
transmitting circuit means attachable to said tank and including sensor means for providing output signals indicative of variable actual dive parameters, a modulator modulating said output signals, and a transmitting circuit propagating a modu[1226]*1226lated carrier wave representative of a respective one of said output signals;
means providing information on variable dive parameters to an individual diver wearing said face mask, said information providing means being attachable to the diver and including a receiver circuit which is physically disconnected from said transmitting circuit means and receives therefrom said modulated carrier wave, and a demodulator for demodulating said carrier wave; and
a display device providing to the diver a visual display indicative of a respective variable dive parameter.
The presence of the claim elements and the performance of the claim functions does not depend on the use of any particular ROM code, and infringement is not proved by reference to the ROM code. The demanded discovery is unnecessary to the cause of the plaintiff Cochran in the Texas court. The context and need must be considered when resolving conflict that arises when foreign laws impinge upon discovery demands under the Federal Rules of Evidence.
THE CONFLICT OF LAWS
It is well known that the laws of some foreign countries present conflicts with or obstacles to United States discovery demands. The Supreme Court considered the law of Switzerland in Société Internationale Pour Participations Industrielles et Commerciales, S.A. v. Rogers, 357 U.S. 197, 78 S.Ct. 1087, 2 L.Ed.2d 1255 (1958), wherein the Swiss plaintiff was unable to produce certain records requested by the defendant (Rogers was the United States Attorney General, successor to the Alien Property Custodian) because the Swiss government had directly interdicted their disclosure. The district court had dismissed the action, as sanction for the Swiss plaintiff’s non-production of the documents located in Switzerland. The Supreme Court held that dismissal was inappropriate since Société Internationale had attempted in good faith to produce the documents, and indeed had produced many but not all of those requested. The Court observed that the Swiss company was not seeking special privileges, and that it had made full efforts to comply with the discovery requests:
Petitioner has sought no privileges because of its foreign citizenship which are not accorded domestic litigants in United States courts. It does not claim that Swiss laws protecting banking records should here be enforced. It explicitly recognizes that it is subject to procedural rules of United States courts in this litigation and has made full efforts to follow these rules. It asserts no immunity from them. It asserts only its inability to comply because of foreign law.
Société Internationale, 357 U.S. at 211-12, 78 S.Ct. at 1095-96 (emphasis in original) (citing Guaranty Trust Co. of New York v. United States, 304 U.S. 126, 133-35, 58 S.Ct. 785, 789-90, 82 L.Ed. 1224 (1938)). The Court stated that:
[F]ear of criminal prosecution constitutes a weighty excuse for non-production, and this excuse is not weakened because the laws preventing compliance are those of a foreign sovereign.
Société Internationale, 357 U.S. at 211, 78 S.Ct. at 1095. The Court held that all considerations must be weighed, in determining whether the non-production would be' excused.
Applying these principles to the case at bar, Uwatec sought no special privileges because of its foreign citizenship. It made appropriate efforts to comply with the discovery demand, made demand of the Swiss owner of the ROM code, and brought suit in Switzerland for the purpose of obtaining and producing the ROM code. Uwatec asserted only its “inability to comply because of foreign law,” Société Internationale, 357 U.S. at 212, 78 S.Ct. at 1096, not that it was immune from compliance with the Federal Rules. It is thus necessary to consider whether Uwatec’s failure to comply was indeed “due to inability, and not to willfulness, bad faith, or any fault of petitioner.” Id.
In Société Internationale the Supreme Court established several much-discussed general principles.2 First, to avoid sanctions [1227]*1227the party that is unable to comply with a valid discovery request must have acted in good faith. The Court stated that any evidence of collusion with a foreign government in “eourt[ing] legal impediments ... would have vital bearing on justification for dismissal of the action.” 357 U.S. at 209, 78 S.Ct. at 1094. The non-producing party must have made a good faith effort to obtain sovereign consent to produce the requested records.
The second principle is that a fair balance should be struck when the non-producing party could reasonably incur foreign criminal liability by complying with the discovery order. The Court made clear that failure of production because of potential criminal liability was a weighty excuse. The Court recognized that absence of records might impact upon the burdens and defenses at trial, and left it to the trial court to devise fair procedures and remedies, on the facts and evidence, when compliance is burdened with foreign criminal liability.
The third principle is that when compliance with a discovery request is illegal in the foreign country, before non-production is punished in the United States, due consideration must be given to alternative sources of the information or other modes of establishing the necessary facts. In sum, Société Internationale requires that when there are foreign legal barriers to the production of documents, the courts in the United States must balance the interests and needs of the parties in light of the nature of the foreign law and the party’s efforts to comply in good faith with the demanded production.
These principles are elaborated in the Restatement (Second), Foreign Relations Law of the United States (1965). Section 40 of the Restatement provides that when two nations have jurisdiction to prescribe and enforce national rules of law that are inconsistent, each nation is required by international law to consider, in good faith, moderating the exercise of its enforcement jurisdiction in light of the law of the other nation.- Factors to be considered include whether the particular issue represents a vital national interest; the nature of the parties’ interests and the nature of the discovery that is sought; the territory in which the demanded conduct would occur; the nationality of the person ordered to act, in relation to the sovereign that is prohibiting the demanded conduct; and the extent to which a nation is in a position to enforce compliance or penalize non-compliance with its law. The need for the information is relevant, as is the effect of non-production on both sides of the dispute is also relevant. In considering whether to sanction non-production the court must seek a fair balance of the interests and litigation needs of the parties, without doing violence to constitutional due process.
In In re Grand Jury Proceedings (United States v. Field), 532 F.2d 404 (5th Cir.), cert. denied, 429 U.S. 940, 97 S.Ct. 354, 50 L.Ed.2d 309 (1976) the Fifth Circuit3 applied the Restatement's balancing test in deciding whether an alien, resident of the Cayman Islands, should be subpoenaed to testify before a grand jury investigating his possible violation of United States tax laws, despite his possible criminal prosecution in the Cayman Islands for violation of that country’s bank secrecy laws. In its balance of all factors, the court gave controlling weight to the fact that the disclosure that was sought by the grand jury was not illegal [1228]*1228when made within the Cayman Islands but only when made in other countries, and held that the United States’ need to enforce its tax laws was dominant in these circumstances. In Field the information sought was legally obtainable within the Cayman Islands and was essential to the grand jury’s investigation of criminal acts in the United States—whereas for the Uwatec companies the ROM code was not obtainable in Switzerland and appears to be unnecessary to proof of Cochran’s infringement case in the United States.
Cases of alleged tax evasion have produced the major body of precedent. These cases do not negate the need to balance the interests of the parties on the facts of the particular ease. Even criminal tax evasion cases generally hold only that the criminal law of foreign countries is not an automatic defense to a discovery order. See, e.g., United States v. Davis, 767 F.2d 1025, 1034-35 (2d Cir. 1985) (“because such an order may also trench upon the interests of another state, a court is required to strike a careful balance between the competing national interests and the extent to which these interests would be impinged upon by the order”); United States v. First National Bank of Chicago, 699 F.2d 341, 345 (7th Cir.1983) (when determining whether to compel a party to produce documents that would result in criminal sanctions “what is required is a sensitive balancing of the competing interests at stake”); In re Grand Jury Proceedings (United States v. Bank of Nova Scotia), 691 F.2d 1384, 1389 n. 7 (11th Cir.1982) (applying the Restatement ’s balancing test), cert. denied, 462 U.S. 1119, 103 S.Ct. 3086, 77 L.Ed.2d 1348 (1983); United States v. Veteo, 691 F.2d 1281, 1288 (9th Cir.) (“Courts must balance competing interests in determining whether foreign illegality ought to preclude enforcement of an IRS summons.”), cert. denied, 454 U.S. 1098, 102 S.Ct. 671, 70 L.Ed.2d 639 (1981); Trade Development Bank v. Continental Insurance Co., 469 F.2d 35, 40-41 (2d Cir.1972) (applying Société Internationale and § 40 of the Restatement to hold that a party need not produce irrelevant information whose production would violate Swiss law); United States v. First National City Bank, 396 F.2d 897, 901 (2d Cir.1968) (“what is required is a careful balance of the interests involved and a precise understanding of the facts and circumstances of the particular ease”).
In applying this “careful balance” in eases that relate to commercial secrets and civil actions in the United States, the courts have given great weight to whether compliance with the discovery order would violate foreign criminal laws. See, e.g., Trade Development Bank, 469 F.2d at 39—41 (sustaining refusal to order disclosure of identity of Swiss Bank customers because disclosure would violate Swiss criminal law); Reinsurance Company of America, Inc. v. Administrate Asigurarilor de Stat, 902 F.2d 1275, 1279-80 (7th Cir.1990) (subjection to Romanian criminal sanctions tips the balance in favor of non-production); In re Société Nationale Industrielle Aerospatiale, 782 F.2d 120, 126-27 (8th Cir.1986) (considering French Blocking Statute in determining whether to compel discovery). It was inappropriate for the district court to ignore the weight of the Swiss criminal law in balancing the interests attendant upon the Uwatec companies.
There was no evidence that the Uwatee companies were attempting to use the Swiss law to escape the obligations of United States law. Guided by the Supreme Court and the criteria of courts that have considered similar issues, we start our analysis with.the sound general rule that the person charged must have made a good faith effort to comply with the discovery order:
1. Uwatec’s Good Faith Efforts
Under threat of sanctions unless it produced a printed copy of the ROM code, Uwa-tec AG filed suit against Dynatron in the District Court of Zurich, Switzerland. In the Swiss court Uwatec asserted a contractual right to ownership of the ROM code, based on its having paid the cost of development and its exclusive license to use the code. It does appear that this was Uwatec’s best legal argument, and indeed Cochran has not suggested a better one. However, it did not succeed. The Swiss court, construing the contracts between Uwatec AG and Dynatron AG, contracts made in Switzerland between Swiss companies and subject to Swiss law, [1229]*1229held that Uwatec AG did not own the ROM code and that Uwatec had no legal right to obtain the ROM code from Dynatron. The Swiss court held:
The “contractual provisions” (act. 2/1-2) merely grant the plaintiff the right to use the defendant’s developments for commercial purposes (ref. Guhl vs Marz vs Killer, Swiss Law of Obligation, 8 Ed, Zurich 1991, page 376) and speaks very much against the transfer of all-inclusive originator rights.
Uwatec AG v. Dynatron AG, Case No. EU950488.U1/GEU02 (Dist.Ct. Zurich Dec. 20, 1995) (emphasis in original) translation page 6.
It is unclear whether the Texas district court knew of the decision of the Swiss court, which bears a date seven days earlier than the Order of the Texas court imposing sanctions for non-production. However, the Texas court was aware of Uwatee’s Swiss litigation, for the court “deem[ed] the facts contained within the Swiss complaint to be true.” Cochran Consulting, November 30, 1995 slip op. at 5. Deeming a complaint to be an admission of the ultimate fact therein placed in contest is unwarranted, particularly after the Swiss court held contrary to Uwa-tec’s position. This was the only evidence referred to by the district court for concluding that the Uwatec companies control the code. The Swiss court ruled, unequivocally, that Dynatron, not Uwatec, owned the ROM code.4
The Swiss judgment that Dynatron was owner of the ROM code was regularly and openly reached and announced. Under long-established principles of international comity, a foreign judgment is recognized when
there has been opportunity for a full and fair trial abroad before a court of competent jurisdiction, conducting the trial upon regular proceedings, after due citation or voluntary appearance of the defendant, and under a system of jurisprudence likely to secure an impartial administration of justice between the citizens of its own country and those of other countries, and there is nothing to show either prejudice in the court, or in the system of laws under which it is sitting, or fraud in procuring the judgment.
Hilton v. Guyot, 159 U.S. 113, 202, 16 S.Ct. 139, 158, 40 L.Ed. 95 (1895); see, e.g., Phillips USA, Inc. v. Allflex USA Inc., 77 F.3d 354, 359 (10th Cir.1996). The Swiss court referred to the obligations of international law as follows:
It may be added that it behooves the American court, based on international practice, to be aware of the status of the Swiss courts and seat of court-of-record and to proceed in accordance with American law as in para. 28 Bst. b number 3, Federal Civil Procedure, see Lionel Frei, Swiss Company in the USA, Serving Two Parties: American Rules of Procedure and Swiss Laws of Secrecy, in SJZ 82 (1986) page 73 ff., esp. pages 76-78.
Uwatec v. Dynatron, translation p. 7.
There is no reason offered by Cochran as to why or how this judgment of a court of Switzerland, which decided Uwatec’s rights in the ROM code in accordance with the law applicable to the parties and the subject matter, should be denied recognition in the United States in accordance with the rules concerning foreign judgments. In accordance with these rules, the relationship between Dynatron and Uwatec, with respect to the ROM code, was resolved.
Even if there were no issue of recognition of foreign judgments, the discovery rules of the United States courts require that a party have ownership, custody, or control of a demanded document before a sanction may properly be imposed for failure to produce the document. “In the absence of control by a litigating corporation over documents in the physical possession of another corporation, the litigating corporation has no duty to produce.” Gerling Int’l Ins. Co. v. Commissioner, 839 F.2d 131, 140 (3rd Cir. 1988). “Control” with respect to the production of documents is defined “not only as [1230]*1230possession, but as the legal right to obtain the documents requested upon demand.” Searock v. Stripling, 736 F.2d 650, 653 (11th Cir.1984).5
In imposing upon Uwatee AG and Uwatec USA the duty to produce the ROM code, although they did not possess it and had no right to obtain it, the district court applied incorrect legal standards. The dissent’s statement that the Uwatee companies are “placing] their assets in the repose of persons or corporations whose sovereigns assure security in order to thwart discovery in American courts” is a misapplication of So-ciété Internationale and indeed is contrary to the Supreme Court’s conclusion, for the Court concluded that Société Internationale had acted in good faith and not' for the purpose of thwarting discovery. There was absolutely no evidence or reason to suspect that Uwatec AG and Uwatec USA are “falsely hiding behind” the Swiss laws.
2. Potential for Criminal Liability
The Supreme Court gave great weight to the factor of criminal liability, undoubtedly recognizing that it is inappropriate for the United States, a nation founded on the rule of law, to require that a person violate the criminal laws of a sovereign nation. The Swiss court held:
[F]inding that the defendant retains ownership and is the owner of the originator rights of the ROM-code, presentation by the plaintiff of the ROM-code during the American trial without permission of the defendant would violate defendant’s rights and be covered by Criminal Law Art. 273 StGB. This decision does not only protect the interests of private enterprise and originator secrets but also the commercial aspects of Swiss sovereignty.
Uwatec v. Dynatron, translation page 7 (citation omitted). Article 273 of the Swiss criminal law provides:
Whoever explores a manufacturing or business secret in order to make it accessible to a foreign authority or a foreign organization or a foreign private business enterprise or their agents,
Whoever makes a manufacturing or business secret accessible to a foreign authority or a foreign organization or a foreign private business enterprise or their agents,
Shall be punished with imprisonment, in serious cases with penitentiary confinement. This deprivation of liberty can be combined with a fine.
Swiss Penal Code Art. 273 StGB (1989 ed.) (translation).
The Swiss court made clear that if Uwatec produced Dynatron’s ROM code without permission, in violation of Swiss law, Uwatec would be subject to criminal liability. This powerful statement of the sovereign and judicial authority of Switzerland was directed to a Swiss company, resident in Switzerland, personally before the Swiss court. The nationality of a party may affect the degree of hardship when a party is faced with conflicting national orders and potential criminal violations. Restatement, § 40. Due and fair weight must be given to this fact.
Uwatec and Dynatron provided extensive discovery information. Dynatron’s president voluntarily came from Switzerland to Dallas to testify as an expert witness on behalf of the Uwatec companies. He was deposed at length by Cochran on how the Uwatec scuba indicator worked. He provided complete details as to the components and operation of the Uwatec device. Dynatron’s president confirmed that Uwatec had asked him to produce the written ROM code, which had been demanded by Cochran five days before the deposition date. He declined, saying “It is my property. It is the entire existence of the company Dynatron.”
[1231]*1231This opportunity was seized upon by Cochran, who had not made a demand for the ROM code in any of its prior discovery requests. Nonetheless, when the district court ordered the Uwatec companies to produce the ROM code to Cochran, Uwatec AG attempted to obtain the code, legally, by process in a court having jurisdiction of Dyna-tron. Undoubtedly Uwatec AG knew that Swiss law was not favorable to this cause, and Uwatec had so advised the Texas district court. However, had its argument succeeded in the Swiss court, this issue of non-production would not have arisen. As it was, the Swiss court rejected the argument and prohibited Uwatec, on pain of criminal violation, from obtaining the code and producing it. The threat of Swiss sanctions was explicit, and must, according to Société Internationale, be given weight. “[F]ear of criminal prosecution constitutes a weighty excuse.” Société Internationale, 357 U.S. at 211, 78 S.Ct. at 1095.
3. The BOM Code Is Not Part of the ’606 Invention
Cochran’s counsel was asked, at the argument of this appeal, why he needed the ROM code. His answer was: “Because I am entitled to it as a' matter of discovery.” Upon further inquiry by the court, Cochran’s counsel elaborated: “When you’re looking at what signals are being sent from the transmitter to the receiver the commented ROM code which is what we have asked for and what has been discussed provides the answer as to what signals are being sensed and how they are being transmitted.”
However, the ROM code that programs the sending of the signals is not the invention claimed in the ’606 patent. Indeed, if a ROM code were necessary to describe the ’606 invention or state any mode or the best mode of its performance, its absence from the ’606 patent would be a fatal flaw under 35 U.S.C. § 112. Infringement resides not in the way the claim limitations and functions are translated into computer language, but whether these limitations and functions are performed by the Uwatec device. The Cochran inventors did not include a ROM code in the ’606 patent, the ’606 patent is not limited to any particular style of instructing the computer, and Cochran has not suggested that any necessary information is not available from diagnostic tests of the accused device.
The record shows that the schematics of the instrument were provided during discovery and explained during deposition. Cochran has not shown prejudice in proving infringement. As in Société Internationale, the stage has not been reached of determining whether adverse inferences may be appropriate under the actual circumstances and burdens of proof. See 357 U.S. at 212-13, 78 S.Ct. at 1096 (remanding to the district court for trial on the merits).
It is material whether the demanded discovery is necessary to Cochran’s ease and, if so, whether there are alternative sources of the necessary information. It is incorrect, and thus an abuse of discretion, to impose a serious sanction upon a Swiss company for being unable to provide, on pain of violation of its sovereign law, a- document that is not necessary to the case; The grant of a protective order by the district court is inadequately responsive to Uwatec’s absence of possession or control and to the foreign liability attendant upon production of the document. Discretion in discovery orders, although quite broad, is not unlimited. Chilcutt v. United States, 4 F.3d 1313, 1320 (5th Cir.1993), cert. denied, — U.S. -, 115 S.Ct. 460, 130 L.Ed.2d 367 (1994). Applying the balancing test of precedent, the discovery order was inappropriately issued.
4. The Sanctions
The Uwatec companies were enjoined from manufacture, marketing, importation, distribution, servicing, and sale of any product utilizing the ROM code or a substantially similar code. However, the ROM code is not patented (or otherwise presented) by Cochran, and the ROM code used by Uwatec is not charged with infringement of any property right. The accused device is a mechanical and electronic indicator most of which is not computer operated. Uwatec states, without contradiction, that less than. 1% of the demanded ROM code relates to the disputed aspect of infringement, viz. the transmission of dive parameters to the diver. The Su[1232]*1232preme Court has instructed that sanctions under Federal Rule 37(b)(2) must meet at least two requirements: (1) the sanctions must be “just,” and (2) the sanctions must be related to the particular claim at issue. Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456 U.S. 694, 707, 102 S.Ct. 2099, 2107, 72 L.Ed.2d 492 (1982). The sanctions imposed do not meet these requirements.
The sanction should meet the judicial goal of punishing the errant party in order to deter others who would otherwise be inclined to pursue similar behavior. Chilcutt, 4 F.3d at 1321. However, as stated in Bon Air Hotel, Inc. v. Time, Inc., 376 F.2d 118, 121 (5th Cir.1967), cert. denied, 393 U.S. 859, 89 S.Ct. 131, 21 L.Ed.2d 127 (1968), “the provisions of Rule 37 must be read in light of the provisions of the Fifth Amendment that no person shall be deprived of property without due process of law.” The dissent creates the specter of persons hiding their technology in Switzerland in order to avoid federal process; we have not noticed such inroads upon the relationships that were recognized in Société Internationale.
Federal Rule 37 is not a legal requirement to do the impossible, and the courts have declined to assess a penalty “for a failure to do that which it may not have been in its power to do.” Hammond Packing Co. v. Arkansas, 212 U.S. 322, 347, 29 S.Ct. 370, 378, 53 L.Ed. 530 (1909). The inability of Uwatec AG and Uwatec USA to produce Dynatron’s ROM code was “due to inability fostered neither by [their] own conduct nor by circumstances within [their] control.” Read v. Ulmer, 308 F.2d 915, 918 (5th Cir.1962). We conclude that the discovery orders and the sanctions were improperly imposed. The orders and sanctions are vacated.
JURISDICTION
Uwatec AG contends that the district court incorrectly asserted personal jurisdiction over it pursuant to the provisions of Federal Rule of Civil Procedure 4(k)(2). We discern no error in the district court’s ruling. See, e.g., Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 30 USPQ2d 1001 (Fed.Cir.), cert. denied, — U.S. -, 115 S.Ct. 18, 129 L.Ed.2d 917 (1994).
COSTS
Costs to the Uwatec companies.
ORDERS VACATED.