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 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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.