United States: No Discovery Permitted In Inter Partes Reexamination Proceedings

Abbott Labs. v. Cordis Corp.

Addressing for the first time whether 35 U.S.C. §24 empowered a district court to issue a subpoena in an inter partes reexamination proceeding, the U.S. Court of Appeals for the Federal Circuit found that § 24 only empowered a district court to issue a subpoena in proceedings in which regulations specifically authorize the parties to take depositions and went on to conclude that subpoenas were not permitted in inter partes reexamination proceedings.  Abbott Labs. v. Cordis Corp., Case No. 12-1244 (Fed. Cir., Mar. 20, 2013) (Dyk, J.).

Cordis sued Abbott and another company alleging infringement of two patents held by Cordis for drug-eluting stents.  The two defendants requested inter partes reexaminations of both patents.  The U.S. Patent and Trademark Office (PTO) agreed to reexamine both patents and rejected all challenged claims as obvious.  In response, Cordis submitted an expert affidavit asserting secondary considerations of non-obviousness, including evidence that Abbott had copied the patents.  The defendants submitted competing expert affidavits concluding that the claims would have been obvious.  The examiner issued a non-final office action affirming the rejection of the claims of one of the patents, finding that Cordis had failed to present evidence of copying.

Later, Cordis sought from a federal district court subpoenas pursuant to § 24, which mandates that upon application by any party, a district court must issue a subpoena to any witness for testimony in connection with "any contested case in the Patent and Trademark Office."  At the same time, Cordis filed petitions with the director of the PTO asking him to confirm that PTO rules do not require that a party obtain PTO authorization prior to seeking enforcement subpoenas under § 24.  In the alternative, Cordis asked the PTO to authorize such subpoenas if authorization was required.

The PTO denied Cordis's petitions, determining that § 24 subpoenas are not permitted by the inter partes reexamination statute, or by any regulation governing inter partes reexamination proceedings.  The PTO reasoned that because initial examination in inter partes proceedings do not provide for discovery practice, inter partes reexaminations are not "contested cases" within the meaning of § 24.  Subsequently, the district court granted Abbott's motion to quash the subpoenas, concluding that the PTO's decision, while not binding, was persuasive and that inter partes reexamination is not a "contested case" within the meaning of § 24.  Cordis appealed.

The Federal Circuit recognized that the appeal turned on the question of whether an inter partes reexamination is a "contested case."  In finding that it was not, the Court analyzed the phrase "contested case" in the context of its relationship with adjacent provisions of title 35, the legislative history of § 24, and the interpretation of that provision by other courts.

The Federal Circuit found that the plain meaning of "contested case" means a proceeding for which testimony may be taken for use before the PTO.  The Court then analyzed the relationship between § 24 and the immediately proceeding § 23, which entrusts the PTO with the power to decide by regulation which proceedings require testimony to be taken for use before the PTO.  The Federal Circuit noted that as originally drafted in 1861, the language of §§ 23 and 24 were part of a single provision, but starting in 1870 and subsequent years, Congress divided the language of that single provision into separate provisions.  However, nothing in the subsequent history reveals an intent on the part of Congress to sever the relationship between §§ 23 and 24.  The Federal Circuit found that the "contested cases" of § 24 are those for which the director of the PTO has established rules for taking depositions under § 23.

The Federal Circuit also analyzed the legislative history of § 24.  The Federal Circuit found that the history demonstrated that § 24 was intended to help the PTO secure deposition testimony that it needed by compulsory process and not to allow parties to secure evidence that the PTO did not consider necessary.

The Federal Circuit also reviewed decisions from other regional courts of appeal prior to the creation of the Federal Circuit.  In particular, the Court reviewed decisions from the U.S. Court of Appeals for the First and Third Circuits which both concluded that § 24 is simply a provision giving teeth, through the court's subpoena power, to authority conferred upon the Commission of Patents to regulate PTO proceedings. 

Turning to the case at hand, the Federal Circuit found that district court properly quashed the subpoenas because PTO regulations do not permit parties to take depositions in inter partes reexamination proceedings, and thus, § 24 subpoenas are not available for such proceedings.  The Court noted that the only PTO regulations providing for depositions in patent proceedings apply exclusively to interferences, derivation proceedings, and new Board proceedings created by the new America Invents Act (AIA).  The Court further noted that each of these is accompanied by a regulation explicitly allowing parties to seek § 24 subpoenas in the covered proceedings.  Because inter partes reexamination fall outside of these covered proceedings, the Court found that §24 subpoenas are not available. 

Practice Note:  Under the AIA, inter partes reexamination have been replaced by inter partes reviews and post grant reviews.  Since the new statute provides for discovery in these proceedings, they will likely be treated as "contested cases" for the purposes of § 24.  However, the PTO has instituted regulations that would bar the filing of a subpoena without authorization of the Patent Trial and Appeal Board, as set forth in 37 C.F.R. § 42.52.  Moreover, recently in Garmin v. Cuozzo, the Patent Trial and Appeal Board promulgated the following five-factor test that it will use to determine whether to allow additional discovery:

1. More than a Possibility and Mere Allegation—The mere possibility of finding something useful and mere allegation that something useful will be found are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.

2. Litigation Positions and Underlying Basis—Asking for the other party's litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board's trial procedures under the pretext of discovery.

3. Ability to Generate Equivalent Information by Other Means—Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery.

4. Easily Understandable Instructions—The questions should be easily understandable. For example, 10 pages of complex instructions for answering questions is prima facie unclear. Such instructions are counter-productive and tend to undermine the responder's ability to answer efficiently, accurately and confidently.

5. Requests Not Overly Burdensome to Answer—The requests must not be overly burdensome to answer, given the expedited nature of inter partes review. The burden includes financial burden, burden on human resources and burden on meeting the time schedule of inter partes review. Requests should be sensible and responsibly tailored according to a genuine need.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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