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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions