Meredith D. Shattuck and Ulo Vahtra (Ibm), Movants-Appellees v. Helmut Hoegl and Giacomo Barchietto (Xerox)
523 F.2d 509
2d Cir.
1975
Check Treatment

*1 being de- charged with Barreira 241(a)(2),as to Section portable pursuant viola- United States “in the an alien alien who e. an chapter”, i. of this tion beyond the United States remained in vio- stay his authorized period Although the 214(a). of Section lation of Section clause here relies INS issue in from that at different

241(a)(2) ap- equally reasoning is Reid, the Court’s 241(f) is Section

plicable here. apply not narrowly and does

construed under Sec- deportation

where 241(a)(2). 241(f) does that Section

holdWe charge against Barreira apply to 241(a)(2).

under Section denied.

Petition

Meredith D. SHATTUCK and Ulo (IBM), Movants-Appellees,

Vahtra

Helmut HOEGL and Giacomo Barchiet (Xerox), Respondents-Appellants.

No. Docket

United States Court of Appeals,

Second Circuit.

Argued Nov. July 16,

Decided 241(a)(1) 212(a)(19), however, Section applies the combination of Sections 212(a)(19), entry. 241(f) holding aliens excludable at therefore Section Our above adjustment applies. that an entry of status is not an argument. forecloses *2 Hone, J. Francis New City York Graves,

(Brumbaugh, Ray- Donohue & mond, City, York brief), New on the for respondents-appellants. Walsh, Jose,

Joseph (Clyde G. San Cal. Metzger, Kadel, J. C. Robert Sidney R. Bresnick, Edmonds, and Pennie & New brief), on the City, York for movants-ap- pellees. CLARK, Justice,*

Before Associate TIMBERS, and and MOORE Circuit Judges.

TIMBERS, Judge: On this from an order entered 7,May in the Western District of York, Burke, New Harold P. District Judge, pursuant (1970),1 witness, directing deposition a Weigl, produce Dr. John W. certain testify and to respect documents in connection with a Patent Of- thereto proceeding, interference de- fice find the threshold whether the cisive a is final decision meaning 28 U.S.C. within (1970).2 We hold that the order is not appeala- ble and therefore we dismiss the appeal appellate jurisdiction. lack for * Clark, Associate Justice Tom C. and documents and Court, Retired, Supreme sitting designation. things apply to contested cases in the shall Patent Office. (1970) 1. 35 part U.S.C. pro- relevant vides: judge of A a court whose clerk issued any subpoena “The clerk United States enforce obedience court for process punish district wherein or disobedience in other taken any cases, witness, proof for use in contested case in like served Office, shall, upon subpoena, neglected any with such or refused thereto, subpoena testify appear issue or to . . . .” wit- residing being district, ness within such (1970) part commanding pro- appear relevant testify him to and be- vides: fore an officer such district authorized affidavits, depositions take at the appeals time jurisdic- “The courts of shall have place subpoena. stated appeals tion of from all final decisions of the visions Federal Rules of Civil Proce- district courts of the United States . .” . . relating dure to attendance witnesses be the claimed to first inventors. I. by the institution Patent Office on After discovery proceedings in The instant patent 1972 of August interference ancillary court are pat- the district 98,047 No. between Shattuck (Interference ent Hoegl application, CIP Hoegl 98,047),3 presently pending No. *3 in and Barchietto November swore Patent Office be- the United in preliminary their statement in in this in- D. Meredith Shattuck and Ulo tween proceeding they terference were the Helmut (Shattuck) Hoegl and Vahtra first inventors. (Hoegl). Barchietto Giacomo and initially discovery IBM various on issues relating Patent Office parties are The real in interest Inter- interference, the the including possi- to Corporation Business Machines national the bility of fraud Patent Office in assignee U. of Shattuck S. Patent (IBM), Xerox’s application with connection CIP 3,484,237, Corporation and Xerox No. (Xerox), preliminary gra- statement. The and assignee Hoegl application of charge vamen of IBM’s was that Xerox 108,548, 29, January No. filed Serial attorneys were aware of prior relevant The latter is continuation-in- (Mammino by members art work and Sa- Hoegl 519,- application of Serial No. part lasny) group of a technical directed by 6, 081, January filed 1966. In opin- this Weigl, an employee Dr. John W. of Xe- ion, parties to the real we shall refer in rox, Xerox attorneys when the caused (Shattuck) IBM interest: Xerox (1) Hoegl and Barchietto make the (Hoegl). of in inventorship the CIP declaration they in which application declared that patent interference involves IBM’s The themselves they “orig- believed to be the copier of machines which be- inal, joint January 1966, first and inventors” of the In April gan thereof, (2) subject pre- the matter parent patent Hoegl filed liminary in the interference in part photoconductive to a statement relating in they they swore were the copying proc- involved the composition subject the matter of the inventors of disputed December ess. Xerox’s relating attorneys If had patent also interference. Shattuck withheld from improperly IBM. In Of- January issued to composition work, the Weigl group’s of learning of the fice evidence after issuance of patent, pro- this could constitute fraud and could Xerox filed a con- the Shattuck tinuation-in-part grounds striking prelim- for Xerox’s (CIP) vide application which invention inary Priority statement. accompanied by a declaration of in- was would be awarded to IBM. in that event ventorship Hoegl in which and Barchiet- clarify time file motions has or reform the 3. An interference been describ- prior to trial. The ed as follows: motions are originally heard the Patent Examiner who statutory is a “A interference proceeding, ad- preliminary declared interference. The authorized ministrative exchanged, are then statements and the mat- 135, to determine which of two or ter returned to the Board of Patent Interfer- and, applicants is the first more therefore, inventor ences for trial. Board then establishes a patent. entitled to a The Board of parties time within schedule which the must assumes Interference aft- present their cases. All evidence must con- is declared er the interference the Patent form to the Patent Office rules. Under those applicant The earliest Examiner. awarded rules, presented by deposition party granted and is the status senior examination, by stipula- oral affidavit or prima date of invention as facie the date assigned tion. Presentation times are parties application. jun- All other are of his parties upon based various the inverse order proving have the burden of a date ior and Natta, filing dates.” In re invention earlier than that of actual the sen- overruled on other prelimi- party. files After each ior grounds, Kimberlin, Frilette v. nary in which he sets forth the statement (en banc), 1974) denied, invention he date of intends earliest (1975). U.S. 980 claim, parties period are Weigl ments Dr. is that the work of position (among others) Xerox’s relating to work August 1, abandoned and done before Weigl group was which involved the prior subject art un- 1964 did not constitute matter therefore being of the interference 102(g) there take his 35 U.S.C. testi- der mony respect to the Patent Office thereto. duty Weigl to disclose Dr. no appeared deposition. prior is not art. his work which On the abandoned ad- attorneys, however, vice Xerox he Pat- motion for IBM’s any questions to answer refused of sub- 287(e)4 essentially Rule ent Office propounded by stance IBM produce or to by the on December denied subpoenaed documents. In so of Patent Interferences. Board IBM then stated: moved ruling, Board district court compel for an order to Dr. Weigl to “Turning to the possible duce documents and to testify about al., by Hoegl et fraud do not con- *4 opposed Xerox them. the motion on the showing by that sider the Shattuck et ground that the district court was with- support their al. in of motion establish- authority out to order the sought relief justice requires the of es that interest of the in view Patent Office’s denial of the ordering the of additional dis- discovery and on the further ground that Where, covery requested. here, sought the documents were not relevant allegation of fraud broad has been lev- to the interference because work parties one of the no eled order for by the Weigl group done was unrelated discovery will be broad merely issued priority to issue of the as between Shat- investigate possibility the to of the ex- Hoegl. and tuck istence of fraud . . . .” 26, 1974, March argu- On after oral The Board possibility considered the of of ment randa, submission written memo- in the CIP fraud to be irrele- the district court IBM’s question the of priority vant to of inven- that It held the subpoenaed motion. at issue in the tion interference. It did documents and bearing had a direct IBM, discovery however, grant to on the allegations on the of fraudulent of fraud the question preliminary part filing misconduct Xerox’s the only but to the statement extent that statement. The preliminary court held oppose did not answering Xerox three discovery sought the that was relevant interrogatories. The Board then added interference because alleged fraud cryptically: somewhat ancillary priority to was invention “It should be further noted in con- established, and, would provide if a basis with the nection Shattuck et al. re- striking for the preliminary statement. for the quest witnesses Viewing its order as complementing this authority Board has no that to office “patent in search for person or force a to testify on an truth”, the court stated: proceeding. interference Shattuck et however, can, call the persons al. in- “The movants are entitled to unre- as their own volved witnesses which stricted to access sources of informa- they is what apparently intend to do.” bearing on the of fraud. February 11, by a subpoena On Weigl is not a party to the interfer- pursuant tecum issued duces 35 U.S.C. ence proceeding. He has no standing IBM to obtain certain docu- questions to refuse to answer asked at 287(c), discovery 4. Patent Office Rule 37 C.F.R. as to matters under the control of 1.287(c) (1974), provides: scope within of the Procedure, rules of the Federal Rules “Upon of Civil a motion brought by [Rule 243] specifying the terms and conditions of party during period such preparation for discovery. additional An order testimony, the Board or thereafter as authorized under granting denying a motion 245], upon showing [Rule that paragraph subject pri- shall be justice review requires, interest so the Board of awarding priority.” or to a decision may Interferences order additional first must ground they on the determine the deposition ques- threshold tion whether we appellate jurisdic- have irrelevant are tion to review it. ceeding.” Xerox has taken the appeal instant appeal Xerox did not from this order. asserting that the district resumed Weigl deposition court’s order is a final decision within On the advice Xe- April (the meaning of 1291.5 We however, disagree. attorneys, Weigl continued rox three documents within the withhold It is axiomatic that subpoena, consideration claiming scope finality -of the of disclosure orders of a attorney-client privileged com- they were involves a balancing protN work-product or the of at- munications hand, ess. On one there is the deep-J torneys. ly rooted federal policy against piece moved in the district court to IBM meal review and the obstruction of an compliance the court’s order compel ongoing judicial proceeding through such 7,May 26. On after further March person review. If the against whom argument submission of addi- oral such an order is directed insists upon memoranda, written the court tional review, interlocutory he required claim attorney- Xerox’s overruled to risk contempt citation and subse privilege, Weigl and directed client quent review of comtempt the three documents and to an- produce rather than permitted questions about them. all After swer *5 the disclosure order itself. See United previous order, from quoting Fried, 691, States v. 1967). 386 (2 F.2d 695 Cir. stated: court hand, On the other interlocutory Shattuck, al., is essential that “It et review of a disclosure order may be access to the documents have to be proper where denial of such review the facts to the present able effectively preclude would any review at regarding issue of fraud.” all of an individual’s claim. See United the instant appeal Xerox took Nixon, 683, States 418 U.S. 690 — 92 7,May entered 1974. (1974). Courts also have considered important the order is too to be whether II. denied review. Cf. United v. Nix on, ordering pursuant supra; disclosure In International Business Ma 37, Fed.R.Civ.P., Corp. States, 30 and chines dis- v. United Rules 471 F.2d jurisdiction 507, (2 1972), exercised its 513 banc, court un- Cir. trict overruled en gives (2 24 which ancillary 1973), denied, U.S.C. 480 F.2d 293 § der 35 Cir. to the district 416 (1974). courts com- U.S 980 of witnesses produc- attendance pel Orders which have compelled testimo- patent of documents ny production or of documents generally Babcock & Wilcox v.Co. proceedings. have been held be non-final and Engineering, Inc., 314 Combustion therefore appealable. Alexander v. 235, (D.Conn.), 237 aff’d on F.Supp. dist States, 201 (1906); U.S. 117 Bak- opinion, (2 court's rict er 1074, Corp., v. United States Steel (2 1974).6 1077-78 Cir. The rule of however, may non-appealability, Before we reach the merits has been re- order, however, laxed where the only district court’s pending judicial of the application has suggested been made 5. No might district It has been that review proper or to our Court for certification under 28 where there has been a manifest abuse 1292(b) (1970); petition nor City has a § U.S.C. discretion. Atlantic Elec. Co. v. A. B. pursuant been of mandamus filed 1963) a writ Chance 313 F.2d 434 (1970). curiam), denied, (per stay We do not intimate 83 S.Ct. propriety procedure (Harlan, Justice, as to the of either 1963); L.Ed.2d 122 views similar cases. Corp., supra, n this or Baker v. United States Steel J., (Lumbard, dissenting). F.2d at 1081 ilar district court is the for disclo- disclosure order proceeding with considering Baker v. United out of appeala sure. States Steel See 1077; bility. at Babcock & Wilcox supra, Wright Co. v. Corp., Com Inc., Miller, Engineering, supra.8 bustion Federal Practice & Procedure & (1970) (hereinafter at 29 Wright We are mindful that recent decisions Miller); 4 Moore’s Federal Practice & permitted of other circuits have appeals (2d 1974) (hereinafter ed. ¶ 26.83[4] pursuant from orders entered to 35 case, Moore). the instant the motion 24. A brief analysis U.S.C. § of their 24 in the district decidendi be appropriate since, ratio only proceeding in that court is case, facts of the on the instant we ad- the interference is although pending still to our decision here in Tucker v. Peiler. Office. As Professor Moore has pointed out, Wright Professors and Miller state the rationale cases allowing ap- flatly: disclosure peals from orders in proceed- ings ancillary patent order of a district interferences is court allowing “[A]n to discern. ¶ difficult 4 Moore denying discovery n. 26.83[4] [a] example, Zletz, For in Natta v. ancillary to a interference case F.2d 615 Cir. appealable Patent Office is Seventh Cir- as a cuit held judgment.” 8 Wright final court’s re- & Miller document (Supp.1974) production fusal to order (footnote

omitted). party to interference proceeding on that the ground Patent Office could Moore, however, Professor indicates that document not order much less “far the rule is from clear”. 4 Moore review the district court’s order and therefore the district court’s order was 26.83[4], at ¶ 26-591 n. 7. We agree Professor Moore’s observation. Appeals The Court of final. likened the Although early cases held such where testimony case to one and docu- non-appealable, orders more recent production by ment a non-party in one *6 expressly have cases held them to ap be jurisdiction for use in jurisdic- another or have pealable reviewed the orders was denied. There was precedent in discussing without appealability. 9 allowing that circuit for review in such ¶ 110.13[2], Moore at 158 & nn. 27-28. cases. Carter Products Co. v. Eversharp, our example, For Court ap dismissed an Inc., (7 1966).9 360 F.2d 868 Cir. an order peal pursuant to the stat utory predecessor to 35 24,7 U.S.C. In allowing § review Natta, holding the order to be non-final. Tuck think that the Seventh Circuit failed to Peiler, er v. 297 (2 F. 570 Cir.), distinguish between the situation of a denied, 265 (1924). U.S. 587 Accord, party, as distinguished from that of a Thomas French & Sons v. International non-party. Such distinction strikes us as Braid 146 (1 F.2d 735 1945). Cir. crucial. In the Carter Products situa recently, More our Court tion, affirmed a sim- the court to which the appeal in the 4906, 7. Revised Statutes passed § derived Hagans from Act sub of raised but siientio. v. La 8, 1870, 230, July 45, 204, vine, 528, ch. 5, § 16 Stat. (1974); 415 U.S. 533 n. 534-35 by 18, February 1922, amended 58, More, Act of (3 Cranch) 159, ch. United States v. 7 U.S. 7, § 42 Stat. (1805) (Marshall, J.); 172 Ch. United States v. Society Composers, of American Publishers, Authors and decision, 8. Our Babcock & Wilcox being (2 Cir.), 317 F.2d 93 rev’d on decision, may an en banc not be viewed as grounds Valley other sub nom. Shenandoah overruled our having earlier decision in Tuck- Broadcasting, Society Inc. v. American Mount, er. Cf. United States v. Publishers, Composers, Authors and 375 U.S. 1970) (on (9 petition rehearing). 1074 Cir. curiam). (1963) (per 39 Moreover, precedential per value of a cu- jurisdiction noting riam exercise an affirm- Accord, Republic Borg-Warner Gear Co. v. open ance in court is at best doubtful where Corp., (2 1967). F.2d 381 551 Cir. apparently the issue was not

515 or by a district court in be taken would have action would an ancil- main lary under 35 production by a non- U.S.C. to direct power no prejudiced rights had jurisdiction; substantial hence no outside party party. other a disclosure order of such would review in the ancillary juris- unless possible be The Tenth Circuit’s decision in Natta Products Co. v. Ever Carter diction. Hogan, v. 871-72; Inc., 360 supra, F.2d sharp, us as perhaps strikes the best rationale Corp., su v. United Steel Baker appeal. in favor of an immediate There, at 1078. On the other pra, district court had limited from a hand, where disclosure discovery. appealed. Both sides The which reviews the main the court party, raised the issue of court appealability ju- always requisite will have the action sponte. Relying on sua Cobbledick v. Republic to order disclosure. risdiction States, 309 323 U.S. (1940), the Borg-Warner Corp., supra, v. Co. Gear held the Circuit Tenth ap- Similarly, a at 554. court F.2d pealable. reviews a Office determi- which Cobbledick, the Supreme Court held nation appeals court of had jurisdic- no if it thinks such review the tion to denial a motion to is warranted. duction subpoenas duces quash tecum directing view, however, reject- latter This to appear petitioners before a grand Ochsner v. Sixth ed distinguished The Court jury. prior Mills, 382 F.2d That which cases had held orders re- appeal from district court’s was an court compelled of the district to order under 35 U.S.C. fusal persons testimony from who had refused Circuit referred Sixth testify in ICC investigation. See of review of a Patent Office possibility ICC, v. 237 U.S. 434 (1915); Ellis Harri “legal fiction” be- determination ICC, 407 (1908); man U.S. ICC v. by the Court in a review of Cus- cause Brimson, (1894). 154 U.S. 447 The Court Appeals, pursuant and Patent toms that in those reasoned cases the proceed- no additional ‘evi- U.S.C. against ings the witnesses in the district Moreover, can be taken. accord- dence Thus, had been concluded. there Circuit, civil action ing to Sixth no considerations avoiding were piece- delay review which would judi- meal (1970), the advantage process: cial taking additional would be not, as in the case aof “[T]here presumption counterbalanced trial, jury or grand judi- further *7 correctness. F.2d at administrative inquiry which would cial be halted offending the permitted were witness persuaded by We are not ra appeal.,.The proceeding to before the that great weight Granted ordi tionale. court is not ancillary any district to findings to accorded the Pat narily proceeding. judicial So far as the Office, Speed Products see Co. v. ent concerned, it is complete in Products, Inc., Tinnerman 309 U.S. at 330. itself.” (2 hardly 3 that would n. Cir. 780 Hogan, Natta v. the Tenth In required where the Patent Office had be that the rationale of reasoned Cobbledick or an issue evidence an issue ignored since applicable appeal the was would case, fraud) which instant would (in the judicial with pending interfere not finding as priority. to It is vitiate proceedings All in dis- proceedings. the that district court re inconceivable court had terminated. trict viewing a Patent determination Office. not further disclosure on the presented would order “In circumstances par- original it found that the ty required an issue if should not be such to risk the disclosure, by punishment either the Patent hazard of denial to ob- 516 outside the parties rights.” of its a determination tain we stated: proceeding, main (footnote omitted). 689 F.2d at

392 disclosure is “[Wjhere ordered and the pur- held circuits have orders Other with, complied is not appellate to 24 suant subsequent contempt pro- review no discussion. little or See Sheehan ceedings, risky however available (1 1975) (or- Doyle, 513 F.2d 895 Cir. v. —is to ordered disclose who to one refuses documents); production of requiring der Cobbledick so. See v. to do F.2d 187, Natta, (3 410 n. 2 In re States, 309 at 327 . . . U.S. .” Cir.), denied, (1969) U.S. F.2d at 554. documents); (order production of denying Weisz, v. Gladrow applies If this rationale to an ordinary 1965) (order requiring of doc- witness, apply it should with even more uments). such as Weigh a witness Al- force to nominally non-party pat- to though None of these cases us convinces that interference, he is an employee ent should decline to follow our we decision real Xerox, parties one of the in interest. Peiler, where, especially in Tucker v. testify or produce refusal to doc- His here, production of documents and testi- sought was uments instruc- mony of witnesses has been ordered. attorneys. the Xerox thus, tions from distinguish the We instant case from one where district court has de- We do consider this to be production of nied documents taking or case for appropriate. invoking In testimony. situation, the dis- order” doctrine of “collateral Cohen v. may very court order trict well be final Industrial Corp., Beneficial Loan since, pointed as the Sixth Circuit out in (1949), 545-47 U.S. render Oschner, no other court ever be in a court order final appealable. district production. position to order See Baker order is The disclosure neither “too inde Corp., supra, v. Steel United States require of the cause itself pendent at 1078. F.2d appellate consideration be deferred case, however, adjudicated”, In instant whole case is disclosure until the nor ordered. When such documents and important “too be denied review”.10 testimony ultimately are presented to Id. at 546. Review will be available and Interferences, the Board of Patent Xe- either the final judgment can await ample will have opportunity rox contempt adjudi Office Rule C.F.R. 1.286 upon Weighs cation continued refusal to object grounds evidentiary Fried, supra, disclose. United States v. admissibility proceed- their those 95; American Express 694 — Moreover, ings. on review by the Court Warehousing, Ltd. Transamerica In Appeals of Customs and Patent or by a F.2d surance 280-82 followed courts, appellate federal Xerox will be contempt procedure While sanc- to obtain review of any able such deci- Supreme tioned Court in Cobble- sion of the Board. Borg-Warner dick our Court in Republic Gear Co. v. Borg-Warner characterized has been “old-fashioned Corp., supra, recognized semi-barbaric”, distinc- International Busi *8 tion, for appealability purposes, between Corp. v. States, ness Machines United orders which disclosure and F.2d at supra, we have adhered There, which those denied it. after not- piecemeal an effort it in limit re- necessity ing the for allowing review of through interlocutory appeals. view Cf. orders which denied disclosure non- Fried, supra, States v. Insurance america attorney 280-82 work- The assertion of claims Republic 1967); Borg- Gear Co. v. cf. attorney-client privilege product does not Corp., supra. Warner judgment require final rule. relaxation Warehousing Express Ltd. v. Trans American Moreover, it here Xerox contended should has be con- at 695. choosing cealed. between through these alter- route alternative — probably natives it is better the Patent deter to lean to- review of wards disclosure. If the Compare Cobbledick v. Unit documents dis- mination. revealed; close fraud the truth States, should be supra, 309 U.S. ed disclosed, re if no fraud is a third route of Xerox to add should not We decline If the be harmed. nature of the docu- view. is so ments confidential that Xerox feels appellate for lack Appeal dismissed they disclosed, should not be jurisdiction. question, merits this not presently be- us, fore can be tested in future proceed- (concurring): MOORE, Judge effect, ings. any, What if the Board will Judge disturb not Although I would give to whatever be in the docu- dif- appeal, my reasons on order Burke’s ments is for their determination. If expressed from those fer somewhat fraud be irrelevant ato decision as to majority.1 invention, priority of this issue is for the professors, Two learned in Therefore, the field Office—not for us. procedure, balance, despite federal have written my that “An dislike for the of a district court allowing “old-fashioned and or de- semi-barbaric” con- nying tempt procedure, proceeding I ancil- view that procedure [a] lary patent to a present case as the best means of disclosing Patent Office the truth protecting par- a final each of the judgment.” 8 Wright Miller, Evolutionary ties. process & Federal in certain Practice & Procedure procedural phases of the (Supp. at 3 law is slow. Possibly our lawmakers or even the courts will find a better solution eventu- is a This interference case in ally. Office and this The documents in question, the United States District Court for the apparently having not produced been Western District New York is ancil- even for in inspection camera lary thereto. The conditions mentioned trial judge, were not been made the subject have met. authors declare of any ruling it makes no difference confidential whether the content thereof. They are grants or denies discovery. At before us appeal. Therefore might it first blush there be some remains basis for for some other court on upon analysis a distinction but some the blush other occasion to pass upon quickly fades. Denial this issue. par- forecloses the It is enough at juncture ty seeking production and on specific be- these placing facts to decide whether fore the Patent Office or court such the order of the district should evidence fraud as the documents affirmed and I would so disclose; hold. granting might will reveal that following Specifically, 51-year this Circuit for not majori- I cannot subscribe to old decision, Peiler, (2d ty’s Cir., prophecy Tucker v. 297 F. 570 of what the Board will do with applicable. respect “priority if of invention” issue. accept any requirement Nor I en do banc