Wednesday, March 20, 2013

Cordis loses subpoena case at CAFC

From the beginning of Abbott v. Cordis

Cordis Corporation appeals from the decision of the
United States District Court for the Eastern District of
Virginia granting Abbott Laboratories’ motion to quash
two subpoenas duces tecum issued pursuant to 35 U.S.C.
§ 24. We conclude that section 24 only empowers a district
court to issue a subpoena for use in a “contested case,”
and that contested cases are limited to those in which the
regulations of the United States Patent and Trademark
Office (“PTO”) authorize the parties to take depositions.
Since the PTO does not provide for depositions in inter
partes reexamination proceedings, such proceedings are
not “contested cases” within the meaning of section 24,
and subpoenas under section 24 are not available. We

Of history in this stent case:

In October 2011, Cordis sought subpoenas from the
district court in Virginia under section 24. The court,
pursuant to Cordis’s request, issued two subpoenas duces
tecum ordering Abbott to produce documents that Cordis
believed would help establish the existence of copying and
other secondary considerations with respect to the contested
claims of the ’844 and ’773 patents.3 The subpoenas
were issued specifically for use in the pending PTO reexaminations
of the two patents.

What is a "contested case":

The question of whether 35 U.S.C. § 24 empowers a
district court to issue a subpoena for use in an inter
partes reexamination turns on whether an inter partes
reexamination is a “contested case” within the meaning of
section 24. The proper interpretation of section 24 is a
question of first impression in this court. We construe the
term “contested case,” as used in section 24, as referring
to a proceeding in which the PTO has provided for the
taking of depositions for use in that proceeding.

Of statutory construction:

“A provision that may seem ambiguous in isolation
is often clarified by the remainder of the statutory
scheme.” United Sav. Ass’n of Tex. v. Timbers of Inwood
Forest Assocs., 484 U.S. 365, 371 (1988); see also Sale v.
Haitian Ctrs. Council, 509 U.S. 155, 171-74 (1993) (construing
a statutory provision in light of its relationship
with other parts of the same statute).

Of Civil War vintage:

The Patent Act of 1861 was enacted in the waning
days of the Thirty-Sixth Congress. The chair of the Senate
Committee on Patents assured his colleagues that the law
would save parties from the need “to virtually bribe
witnesses” in order to secure their attendance, preventing
witnesses from “embarrass[ing] the operations” of the
PTO and imposing “unnecessary expense” on parties.
Cong. Globe, 36th Cong., 1st Sess. 1731 (1860) (statement
of Sen. Bigler). The chair stated that the provision was
universally supported by “inventors,” their “agents,” and
the PTO, and that he had “never heard any diversity of
opinion” regarding its wisdom. Id. And indeed, through
ten months of subsequent debate over the bill as a whole,
section 1 of the bill never engendered any controversy or
amendments. This history demonstrates that section 24
was intended to help the PTO secure deposition testimony
it needed by compulsory process, and not to allow parties
to secure evidence that the PTO did not consider necessary.

As a reminder:

While patent law decisions of the regional
circuits do not bind us, see Superior Fireplace Co. v.
Majestic Prods. Co., 270 F.3d 1358, 1372 (Fed. Cir. 2001),
we may consider them as persuasive authority, see Cerveceria
Centroamericana, S.A. v. Cerveceria India, Inc.,
892 F.2d 1021, 1023 (Fed. Cir. 1989).

The AIA is mentioned:

In the course of implementing these mandates, the PTO
has recognized that the AIA authorizes parties to seek
section 24 subpoenas in the new proceedings. See 37
C.F.R. §§ 42.52-.53 (2013); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14,
2012). Congress’s actions in creating these inter partes
review proceedings thus demonstrate that depositions and
section 24 subpoenas go hand in hand.

As to due process:

The indispensable ingredients of due process are notice
and an opportunity to be heard by a disinterested
decision-maker. See Caperton v. A.T. Massey Coal Co., 556 U.S. 868,
876-81 (2009); Lachance v. Erickson, 522 U.S.
262, 266 (1998); Memphis Light, Gas & Water Div. v.
Craft, 436 U.S. 1, 13 (1978); Mathews v. Eldridge, 424
U.S. 319, 333 (1976). There is no dispute that inter partes
reexamination provides the patent owner with notice and
an opportunity to be heard by a disinterested decisionmaker.
See 35 U.S.C. §§ 311(c), 312(b), 314(a),(b); see also
Patlex II, 771 F.2d at 485-86 (noting that ex parte reexaminations
are conducted by “disinterested experts,” and
concluding that “the patentee’s opportunity to participate
after the [decision to initiate a reexamination], and to
appeal . . . , affords the patentee due process”).

Bottom line

We hold that 35 U.S.C. § 24 only empowers a district
court to issue subpoenas for use in a proceeding before the
PTO if the PTO’s regulations authorize parties to take
depositions for use in that proceeding. We therefore hold
that section 24 subpoenas are not available in inter partes
reexamination proceedings.


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