by Dennis Crouch
Abbott Labs v. Cordis Corp. (Fed. Cir. 2013)
In 2009 Cordis sued Abbot for infringing two of its drug-eluting stent patents. US Patent Nos 6,746,773 and 7,591,844. Abbott then petitioned the USPTO for inter partes reexamination of the two patents (pre AIA). As part of the reexamination both parties submitted expert affidavits. Then, in October 2011, Cordis petitioned the Virginia federal court – requesting two subpoenas duces tecum asking that court to compel discovery to further the reexamination process. The district court refused and, using one of my favorite words, quashed the subpoena. The Federal Circuit has now affirmed.
35 U.S.C.§ 24 requires federal courts to support the discovery process for "any contested case in the Patent and Trademark Office." Under the statute:
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 and Trademark 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 to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.
The issue on appeal is whether an inter partes reexamination counts as a "contested case." In any ordinary sense of the phrase, the inter partes reexamination is contested. However, both the district court and the Federal Circuit hold that the statutory meaning of the phrase does not include these reexaminations. The court writes that a "contested case" under the statute only includes those cases "in which the PTO has provided for the taking of depositions for use in that proceeding." With a substantial dose of circular reasoning, court deduces the following: (1) since the PTO has not provided for depositions in inter partes reexaminations; it follows that (2) inter partes reexaminations cannot be "contested cases"; and thus (3) no depositions can be taken in an inter partes reexamination.
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.
The court's basic logic is that 35 U.S.C. §23 gives the PTO power to decide when discovery should be allowed and that the congressional deference should carry-over into Section 24. The USPTO argued that reexamination is "examinational" as evidenced by legislative history associated with the AIA. Of course, that retrospective consideration should does not supplant the actual meaning of a statute.
Looking Forward for Inter Partes Review and Post Grant Review: Of course, inter partes reexaminations are a thing-of-the-past and have been replaced with inter partes reviews and post grant reviews. Because the new statute does provide for discovery and testimony in these review proceedings then they should be treated as contested cases. The new rules for these procedures provide avenues for discovery from the parties. Section 24 could be invoked to pursue discovery of a non-party. However, the PTO has instituted regulations that would bar the filing of a subpoena with a federal court without authorization of the PTAB. 37 C.F.R. § 42.52.
The statute generally states that additional discovery should be allowed when "otherwise necessary in the interest of justice." In a recent decision, the PTAB outlined a five factor analysis that it will use to determine whether to allow additional discovery. Garman v. Cuozzo, IPR2012-00001 (26) (PTAB 2013).
- 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.
- 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.
- 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.
- Easily Understandable Instructions — The questions should be easily understandable. For example, ten 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.
- 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.
Jurisiction of the Court of Appeals: This is another case where the Federal Circuit has refused to consider its appellate jurisdiction in the wake of Gunn v. Minton other than writing that "[w]e have jurisdiction under 28 U.S.C. § 1295(a)(1)." However, the appeal here is a discovery dispute pending before the Virginia district court and, although it involves interpretation of the patent statute, the appellate court's jurisdiction is not entirely clear.