In re Natta

• Decision Date: 01 March 1967
• Docket Number: Misc. No. 35.
• Citation: 264 F. Supp. 734
• Parties: In re NATTA et al., Movant. In the U. S. Patent Office Before the Examiner of Interferences, Interference No. 89,634. HOGAN et al. v. ZLETZ v. BAXTER et al. v. NATTA et al.
• Court: U.S. District Court — District of Delaware

264 F. Supp. 734

In re NATTA et al., Movant.

In the U. S. Patent Office Before the Examiner of Interferences, Interference No. 89,634.

HOGAN et al. v. ZLETZ v. BAXTER et al. v. NATTA et al.

Misc. No. 35.

United States District Court D. Delaware.

March 1, 1967.

Edmund D. Lyons, of Morris, James, Hitchens & Williams, Wilmington, Del., and Mary Helen Sears, of Irons, Birch, Swindler & McKie, Washington, D. C., for Natta et al.

David A. Drexler, of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., Louis F. Reed, of Fish, Richardson & Neave, New York City, and Roger A. Hines, Legal Department, DuPont Company, Wilmington, Del., for Baxter et al.

OPINION

LAYTON, District Judge.

This opinion supplements those of September 26, 1966, and October 19, 1966, reported at 259 F.Supp. 922, in which it was decided that a United States District Court had the power, pursuant to 35 U.S.C. § 24, to order production of documents under Rule 34 of the Rules of Civil Procedure in litigation pending before the Patent Office. The purpose of this opinion is to define the scope of discovery.¹

Some repetition of what was said in 259 F.Supp. 922 is necessary. This is a motion for production under Rule 34 F.R.Civ.P. ancillary to a four-party patent interference proceeding which is to determine who was the first inventor of polypropylene, a chemically produced plastic. Natta et al. is the senior party, having been awarded a priority date of June 8, 1954. DuPont (Baxter et al.) is the next senior party, having been awarded a priority date of August 19, 1954. The two most junior parties are not before this Court, but are participating in related proceedings before United States District Courts in Illinois Oklahoma.

THE ISSUES

Generally speaking, DuPont and Natta seem to be in agreement that the filing dates awarded to each party are presumptively correct and serve to establish the burden of proof in the interference proceeding. 37 C.F.R. 1.257(a).² Moreover, it is not disputed that the three junior parties are free to attempt to contest the presumption of the correctness of their dates by proof that the date should have been earlier. However, Natta, because he relies on a foreign (Italian) patent application, may not prove that his own invention date is earlier than June 8, 1954. 35 U.S.C. §§ 104, 119.

In other words, each of the three junior parties may prove that its invention date was earlier than its awarded filing date. Natta cannot. Natta, however, can contest any attempt by the junior parties to advance their invention dates ahead of his own June 8, 1954 date. In an effort to contest the attempts of DuPont to advance its date, Natta has filed this Rule 34 motion for production of documents.

DuPont, apparently agreeing in general to the basic principles just stated, claims it has made available to Natta all its file material bearing on the issue as late as August 19, 1954, its awarded priority date. However, the nub of this controversy, and what DuPont strenuously resists, is Natta's effort under this Rule 34 motion to obtain discovery of DuPont's files between August 19, 1954, its awarded date, and December 30, 1955, the date of its latest relevant application. This point requires some analysis. It has already been shown that there is no doubt about the priority date fixed by Natta's application. This has been determined by statute. The same is not true, however, as to DuPont's filing date, which is subject to challenge for several reasons. At the time this interference was declared, DuPont had filed three applications for patents on polypropylene with the Patent Office. The dates of the three applications were December 30, 1955, June 22, 1955³ and August 19, 1954. It appears that DuPont was originally made a party to the interference on the basis of its December 30, 1955 application. Thereafter, DuPont made a timely motion under Patent Rule 234 to shift its priority date to August 19, 1954, arguing that the application filed on that date disclosed the invention in issue. This motion was granted by the hearing Examiner over the opposition of the other parties, including Natta.

However, if the Examiner's ruling in this respect is hereafter reversed, as it can be, Bierly v. Happoldt, 201 F.2d 955, 40 CCPA 774 (1953), DuPont's priority date would be advanced to December 30, 1955.⁴

The correctness of the Examiner's ruling is not a concern of this Court. Nor should it attempt to pass upon the admissibility of evidence in the interference proceeding. Its function is to determine as best it can the issues presented by this proceeding and decide whether Natta has shown good cause for the production of documents which are either relevant to these issues or may lead to the discovery of other documents relevant thereto. And in this connection, it is to be borne in mind that DuPont in presenting its case to the Examiner had the advantage of being able to place in evidence documents tending to support its position and of suppressing any material which might tend to weaken its case.

Nevertheless, DuPont strenuously resists production of any documents dated between August 19, 1954 and December 30, 1955. It advances two reasons. First, it argues that in deciding the validity of the August 19, 1954 filing date, the parties are limited to the four corners of the application itself. This may be true in general but the circumstances here, where Natta is attacking not only the validity of the disclosure of the August 19, 1954 and December 30, 1955 applications, but also the decision of the Examiner granting DuPont the priority date of August 19, 1954, make this argument unpersuasive.

Second, DuPont contends that the sole issue in this interference is priority of invention and Natta has no right to examine material in its files dating subsequent to August 19, 1954. This is demonstrably incorrect. While the general rule is that the main issue in an interference proceeding is priority, 35 U.S.C. § 135; Normann v. Schmidt, 125 F.2d 162, 165, 29 CCPA 822 (1942); many ancillary issues can also be raised and Natta has raised several: (1) failure of both the July 1954 and December 1955 applications to disclose an invention;⁵ (2) conception;⁶ (3) reduction to practice;⁷ and (4) unpatentability over prior art.⁸ It is not for this Court to decide the merits of these issues, merely to point them out.

GOOD CAUSE

In order to be successful on its Rule 34 motion, Natta must, of course, demonstrate good cause for production. The fact that documents relevant to one or more of the issues before the Examiner may exist in the files of DuPont of which Natta has no knowledge and, of course, to which it has no other means of access, should, broadly speaking, furnish sufficient good cause under the Rule.⁹ And this is particularly true, as elsewhere observed, where DuPont, in its case in chief, had the advantage of selecting those of its documents which supported its contentions and of suppressing those which may have tended to weaken its case. Moreover, even if not relevant and admissible, documents may be ordered produced if they tend to lead to a discovery of other relevant material.

That the documents to be produced were to be used to attack the invention date of the opponent, in itself, has been regarded as good cause for production. Gladrow v. Weisz, 354 F.2d 464, 468 (5th Cir. 1965). Furthermore, unlike the circumstances presented in Korman v. Shull, 184 F.Supp. 928 (W.D.Mich. 1960), Natta cannot, through his own experts and processes, reproduce the processes and data in DuPont's files. Also, two key DuPont employees, active in the events relied on by DuPont are now dead. Since they are not available for cross-examination, Natta should have access to DuPont file material in order to obtain relevant facts regarding their participation in this inventive process.

More particularly, the attack by Natta on the Examiner's grant to DuPont of the August 19, 1954 filing date demonstrates another reason why Natta should have access to DuPont's file material. As before stated, it is not the function of this Court, only peripherally concerned with the proceeding, to decide the correctness of the Examiner's ruling in this respect. The Examiner's decision will be reviewed by the full Board of Patent Interferences. Therefore, in appraising the correctness of the Examiner's ruling, reason and justice require that this tribunal have before it all relevant facts and documents. If discovery is denied now, and permitted only when and if the Board of Patent Interferences reverses the Examiner, Natta would be severely prejudiced. This is because it is the practice of the Board of Patent Interferences to pass upon all the issues, including the key issue of priority, at one time. Thus, unless production is granted now, the Board would not have all the relevant facts before it in deciding the issues. In addition, the results of the interference are sure to be appealed, either to the Court of Customs and Patent Appeals, 35 U.S.C. § 141, or to a District Court, 35 U.S.C. § 146. If appealed to the former tribunal, no additional evidence may be put on record, and if to the latter, the advantage of the additional evidence so taken would, to a certain extent, be counterbalanced by the presumption of administrative correctness. This also demonstrates good cause for Natta's motion.

There are other reasons which, in the judgment of the Court, show good cause. Natta has attacked both of DuPont's applications on the ground that they fail to disclose a valid invention. The ancillary issues of conception and reduction to practice are thus presented. With reference to this latter issue, the Court of Patent Appeals in Walkup v. Greig, 332 F.2d 800, 806, supra, said this:

"* * * 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 upon constitute a reduction to practice. * * "¹⁰

...