In re NATTA et al., Movant in the United States Patent Office Before the Examiner of Interferences, Interference No. 89634. HOGAN et al. v. ZLETZ v. BAXTER et al. v. NATTA et al. E. I. duPont de Nemours & Co., Appellant.
No. 16608.
United States Court of Appeals Third Circuit.
Argued November 2, 1967. Decided January 4, 1968.
388 F.2d 215
Before McLAUGHLIN, GANEY and SEITZ, Circuit Judges.
Morris, James, Hitchens & Williams, Wilmington, Del. (Edmund D. Lyons, Wilmington, Del., Mary Helen Sears, Irons, Birch, Swindler & McKie, Washington, D. C., on the brief), for appellee. Edward S. Irons, Irons, Birch, Swindler & McKie, Washington, D. C., Harvey W. Mortimer, Darby & Darby, New York City, Cox, Langford & Brown, Washington, D. C., of counsel.
OPINION OF THE COURT
McLAUGHLIN, Circuit Judge.
Appellant, E. I. duPont de Nemours & Co., appeals under
A patent interference is a statutory administrative proceeding, authorized by
Interference 89,634, the one involved in this appeal, was originally declared in 1958 and сoncerned five patent applications assigned to Montecatini, duPont, Phillips Petroleum Company, Standard Oil of Indiana and Hercules, Inc. Montecatini was made senior party on the basis of the filing date of its Italian patent application on June 8, 1954. DuPont, originally assigned a filing date of December 30, 1955, relied on
During the motion period, Montecatini moved to dissolve the interference as far
After all the junior parties presented their cases, Montecatini was assigned the period March 29, 1966-July 29, 1966 in which to complete its testimony. By virtue of
Seeking reversal of the order below, duPont claims that the District Court erred in applying the scope of discovery standards contained in the Federal Rules of Civil Procedure rather than the admissibility standards governing interference proceedings found in the Patent Office rules. Conceding the ancillary jurisdiction of the District Court, duPont nevertheless contends that that jurisdiction was improperly invoked.
Montecatini‘s Rule 34 motion is based upon
“The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and tо the production of documents and things shall apply to contested cases in the Patent Office.”
This statute manifests a clear congressional intent to make available to parties to patent interferences the broad discovery provisions of the Federal Rules of Civil Procedure. The Reviser‘s Note to the 1952 amendments states, in part: “Reference to a repealed statute is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.” The repealed statutе referred to was R.S. 869 (28 U.S.C. § 647) which, like present Rule 45(b) of the Federal Rules, dealt with subpoenas duces tecum. If Congress had desired to limit discovery to the type available under
Our conclusions are supported by the decisions of other courts that have considered the issue. In Gladrow v. Weisz, 354 F.2d 464 (5 Cir. 1965), the junior party to an interference moved in the district court for an order requiring the production of certain notes in the files of the senior party. Affirming the district court‘s order requiring production, the Fifth Circuit stated:
“We agree with Korman v. Shull, W.D. Mich., 1960, 184 F.Supp. 928, 934, that
Rule 34, Fed.R.Civ.Proc. is among the rules referred to in35 U.S.C. § 24 , when the production of documents is required for the examination or crossexaminationof a witness.” Gladrow v. Weisz, supra, 354 F.2d at page 468.
Korman v. Shull, 184 F.Supp. 928 (W. D.Mich.1960), appeal dismissed 310 F.2d 373 (6 Cir. 1962), cited with approval by the Court in Gladrow clearly recognizes the application of the Federal Rules of Civil Procedure.
“Under § 24, which I have just quoted, the applicable rules of civil procedure must be considered in determining the questions before the court relative to the attendance of witnesses and the production of documents. Rules 26, 30, 34 and 45, Fed.Rules Civ.Proc. 28 U.S.C.A. relating to the attendance of witnesses and the production of documents are applicable in the present proceeding.” Korman v. Shull, supra, 184 F.Supp. at page 931.
Although the Court did quash the subpoenas thereby denying discovery, the opinion sharply indicates that the decision was predicated on a failure to show good cause as called for by thе federal discovery rules. Implicit in this is the recognition that discovery would have been allowed if the proper good cause showing had been made.
Appellant urges that Korman v. Nobile, 133 U.S.P.Q. 178 (W.D.Mich.1962), decided by the same judge who wrote the opinion in Shull, qualifies Shull by expressly holding that discovery is not available. Appellant relies on the following language which refers to
“It should be noted that under the above-quoted statute only the provisions of the Federal Rules of Civil Procedure `relating to the attendance of witnesses and to the production of documents and things\’ shall apply in contested cases in the Patent Office. Thus it is clear that the broad provisions of the rules of civil procedure relating generally to discovery are not made applicable to contested cases in the Patent Office.” Korman v. Nobile, supra, 133 U.S.P.Q. at page 179.
In light of the express language in Shull that
In several cases the Patent Office itself has recognized that discovery questions must be left to the district courts. In Campbell v. Gilby, 146 U.S.P.Q. 723 (P.O. Bd.Intfs.1965), a case involving duPont, a motion was made before the Board of Patent Interferences to extend the timе to take testimony. Prior to this a subpoena duces tecum had been issued by the district court to take the testimony of certain witnesses. DuPont, as assignee of the Gilby patent application, argued that the motion to extend time should be denied since the testimony sought was not proper rebuttal testimony under the Patent Office Regulations, that the testimony was not relevant and it constituted discovery which was not permitted. Rejecting these arguments the Board refused to prevent Campbell from taking the depositions stating:
“In so far as Gilby et al.‘s opposition is grounded оn the question of whether or not discovery is permitted, no consideration can be given thereto, the Patent Office having no power or authority to supervise the actual taking of testimony. The determination of the question of whether or not discovery is permitted under the provisions of 35 U.S.C. 24 is within the sole jurisdiction of United States District Court.” Campbell v. Gilby, supra, 146 U.S.P.Q. at page 725.
See also: Ribitschek v. Tapas, Unpublished Decision of the Patent Interference Examiner in Interference, 89,996, Sept. 13, 1961; Kreml v. Danis, 172 Manuscript Decisions 838 (Com.Pats.1952).
The two companion ancillary motions filed by Montecatini against Phillips Petroleum and Standard Oil of Indiana have reached results similar to the views set forth here. In Hogan v. Zletz, 151 U.S. P.Q. 103 (D.C.N.D.Okl.1966), the Court stated:
“The order in the case will first be to the effect, that this proceeding in this court, brought under 35 U.S.Code, Section 24, covers and includes proceedings under Rule 34 of the Federal
Rules of Civil Procedure. This is to say that this section of the statute is interpreted to include, not only deposition type proceedings, but Rule 34 motions and proceedings. In this connection the court is following the Gladrow case at 354 F.2d 464.” Hogan v. Zletz, supra, 151 U.S.P.Q. at page 103.
In Natta v. Zletz, 379 F.2d 615 (7 Cir. 1967), involving Standard Oil, the district court indicated that it would not entertain the motion until the Patent Office fixed a specific future time for the taking of testimony rather than mеrely indicating that it would set a specific time. Reversing and remanding, the Court of Appeals stated:
“Clearly, Rule 34 in connection with 35 U.S.C.A. § 24 vests authority in the district court to require the production of documents. Gladrow v. Weisz, 5 Cir., 354 F.2d 464, 468. The Patent Office in its rulings in the proceeding before it has consistently preserved to appellants the right to take the testimony which might be consequent from the District Court ancillary proceeding for documentary production.” Natta v. Zletz, supra, 379 F.2d at page 618.
DuPont‘s argument that the rules governing the admissibility of evidence in Patent Office interference proceedings control and, therefore, the discovery standards of the Federal Rules of Civil Procedure should not have been applied below cannot be accepted. The fact that evidence obtained by Montecatini as a result of the District Court‘s order may not be admissible in the proceedings pending before the Patent Office does not vitiate Montecatini‘s right to obtain it. Both the federal discovery rules and the Regulations governing Patent Office interference proceedings recognize the distinction. Title
“Subject to the provisions of § 1.285, objection may be made to receiving in evidence any deposition or part thereof, or any other evidence, for any reason which would require the exclusion of the evidence according to the established rules of evidence, which will be applied strictly by the Office.”
See also:
DuPont argues alternatively that even if this Court does hold that the federal discovery rules apply here, Montecatini is nevertheless prohibited from making the discovery it seeks. It resists the production of any documents dated between August 19, 1954 and December 30, 1955 on the grounds that Montecatini has not exhibited the requisite good cause since the validity of the August application must be determined solely from the four corners of the document. It further contends that the only issue is priority of invention, and nothing after August 19, 1954 is rеlevant to this inquiry. The District Court amply discussed these issues and justifiably found that Montecatini had shown both good cause and relevancy.
We agree with the proposition that good cause is shown by the fact that evidence necessary to rebut duPont‘s case may exist in duPont‘s files and will remain inaccessible without the aid of a court order.
“Plaintiff meets F.R. 34‘s requirement of `good cause\’ for production when it shows both the relevance of the documents — all pertain to patents in suit — and the information contained in them is, by their nature, within the exclusive knowledge of the defеndants. Their contents were withheld on the depositions of the writers and will remain unknown to plaintiff unless produced.” Zenith Radio Corp. v. Radio Corp of America, 121 F.Supp. 792, 795 (D.C.Del.1954).
The relevancy of the documents in question is evidenced by the fact that in rebutting duPont‘s attempt to advance
“Moreover, it is well established that subsequent conduct with respect to the invention is properly to be considered where there is doubt that the activities relied on constitute a reduction tо practice. Conner v. Joris, 241 F.2d 944, 44 C.C.P.A. 772,” Walkup v. Greig, supra, 332 F.2d at page 806.
“It is clear that the witnesses generally took a more optimistic view of the test results in their testimony in 1962 than their statements and action reported contemporaneously with the tests would appear to warrant. Under those circumstances, we are inclined to place greater weight on the contemporaneous reports and action. On that basis, we must agree with the board‘s view that the record leaves a clear impression that the experimenters were not satisfied in 1954 that the process had been performed suсcessfully.” Hess v. Bland, supra, 347 F.2d at page 841.
Obviously the post-application statements and actions of the alleged inventors are relevant to the issue of priority. This information is also relevant to Montecatini‘s charge of unpatentability over prior art based on duPont‘s alleged use of certain Montecatini publications. We are convinced that the District Court‘s findings of good cause and relevancy have substantial support in the circumstances of this case.
We have examined duPont‘s claims involving trade secrets, cost of compliance and privilege. In our judgment thе Court below adequately considered these issues. Its order properly protects any claim duPont may have in this regard.
DuPont also challenges the manner in which the proceedings were instituted in the District Court, contending that the service of the motion papers upon its attorney of record was insufficient to acquire jurisdiction. As already noted Dr. Hines, duPont‘s attorney, had agreed in advance to accept service. Furthermore, the method employed was not questioned by duPont in its brief or at oral argument before the District Court. It was first raised in duPont‘s application for reargument below. Under these circumstances, duPont‘s failure to make a timely objection should be and is considered a waiver.
Even on its merits the contention cannot be supported for duPont has been unable to name any authority requiring more than notice to the attorney of record. No prejudice has resulted and there is no claim that duPont did not in fact receive ample notice of the motion. This same argument was made by duPont in the companion ancillary proceeding involving Phillips Petroleum before the District Court in Oklahomа. We agree with that court‘s resolution.
“Now, with reference to the process question, the court will adopt the service and process had in this case on Phillips Petroleum Company on the basis that this is satisfactory to the one who seeks this relief. The more I look to this process matter, and understand the order of the court, it seems to me that all you need is some type, fair and reasonable notice under Rule 34. If Rule 34 applies to Phillips on the basis that Phillips is really and truly a party, then they‘re a party up there, they are a party to this case, there is an arm of that case, an ancillary proceeding, and I don‘t think the case requires the dignity of full-blown process, but reasonable and fair notice would be sufficient.” Hogan v. Zletz, supra, 151 U.S.P.Q. at page 103.
See also: Rumsey v. George E. Failing Co., 333 F.2d 960 (10 Cir. 1964); Moore‘s Federal Practice, 2nd Ed., Supp. to Vol. 2, Sec. 5.06, p. 42.
We have considered the other points raised by appellant and have found them to be without merit.
The Judgment of the District Court will be affirmed.
In re NATTA et al., Movant in the United States Patent Office Before the Examiner of Interferences, Interference No. 89634. HOGAN et al. v. ZLETZ v. BAXTER et al. v. NATTA et al. E. I. duPont de Nemours & Co., Appellant.
No. 16608.
United States Court of Appeals Third Circuit.
Decided January 4, 1968.
388 F.2d 215
SEITZ, Circuit Judge (dissenting).
I dissent because I believe the district court committеd error in construing
I view
I do not understand that the majority challenge the foregoing propositions. Rather, the majority conclude that by making the changes reflected in the present statute (
The subpoena duces tecum statute, which was incorporated by reference into the 1922 statute, was repealed by the adoption of the Federal Rules which took place prior to the 1952 recodification of the patent laws. It was quite natural, in recodifying, to replace the reference to the statute governing the issue of subpoena duces tecum with the following language:
“* * * The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office.”
When the 1952 amendment is considered in conjunction with its statutory antecedent and its particular Congressional history, I think it reveals an intent to provide only the same power formerly given the district court under the old subpoena duces tecum statute.
What does the Congressional history reveal? The Senate and House Committee reports upon the proposed recodification both recite:3
“Although the principal purpose of the bill is the codification of Title 35,
United States Code, and involves simplification and clarification of language and arrangement, and elimination of obsolete and redundant provisions there are a number of changes in substantive statutory law. These will be explained in some detail in the revision notes keyed to each section which appear in the appendix of this report”
With respect to § 24, the appendices of both House and Senate repоrts stated as follows:
“Based on Title 35, U.S.C., 1946 ed., §§ 54, 55 and 56 (R.S. 4906, amended Feb. 18, 1922, ch. 58, § 7, 42 Stat. 389, 391-2; R.S. 4908).”
“Three sections of the existing statute are combined with some changes in language and placed in part 1 since they apply to trade-mark cases in the Patent Office as well as to patent cases. Reference to a repealed statute in the first paragraph is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.”
Was the inclusion of full discovery rights, which the majority necessarily find was incorporated into the 1952 version of the statute, a change in the “substantive statutory law“? I cannot see how that can be seriously doubted in view of the prior law. Consider also that the drafters of the Federal Rules felt it necessary to explicitly incorporate that power into the Rules in order to change the generally applicable pre-existing law. Moreover, anyone familiar with “discovery” practices will attest to the practical significance of the change. I would therefore expect the Congressional history or the Reviser‘s notes to thе section to reflect a recognition of the change. They do not.
The majority opinion states that, “* * * If Congress had desired to limit discovery to the type available under
I conclude that
Although the district court was confronted with a motion for production under Rule 34, in order to express my views fully as to the scoрe of
I would therefore reverse the judgment of the district court but, in doing so, make it clear that the appellee could renew its application. However, appellee‘s rights under the renewed application would be tested solely by admissibility standards. I would permit thе renewed application because the Interference proceedings had reached the period which had been assigned to appellee to complete
I think, contrary to the majority, that even the language quoted by the majority from Gladrow v. Weisz, 354 F.2d 464 (5th Cir. 1965) shows that the court was talking about the use of the Fedеral Rules solely in connection with production for use in making the record for the Interference proceedings. The court said that
Finally, contrary to the implication in the majority opinion, I cannot find that we are concerned with any issue of procedural or substantive due process. The breadth of even-handed rules governing the production of evidence does not raise a constitutional issue in this context. Nor do I think any personal preference as to the desirability of full discovery is here involved. The matter is one for Congress to treat, if it desires, after full consideration of the problem.
I express no opinion on the particular disсovery rulings made by the district court because I think this court lacks jurisdiction under the interlocutory appeal statute (