Babcock & Wilcox Co. v. Combustion Engineering, Inc.

• Decision Date: 28 October 1968
• Docket Number: Civ. No. 12788.
• Citation: 314 F. Supp. 235
• Court: U.S. District Court — District of Connecticut
• Parties: The BABCOCK & WILCOX COMPANY, Assignee of the Interference Parties Rothemund and Koch v. COMBUSTION ENGINEERING, INC., Assignee of the Interference Parties Powell, Schroedter, Clayton and Knust.

314 F. Supp. 235

The BABCOCK & WILCOX COMPANY, Assignee of the Interference Parties Rothemund and Koch v. COMBUSTION ENGINEERING, INC., Assignee of the Interference Parties Powell, Schroedter, Clayton and Knust.

Civ. No. 12788.

United States District Court, D. Connecticut.

October 28, 1968.

Roland T. Bryan, Robertson, Bryan, Parmelee & Johnson, Stamford, Conn., for plaintiff.

Hugh Meade Alcorn, Jr., Ralph G. Elliot, Alcorn, Bakewell & Smith, Hartford, Conn., Eldon H. Luther, Edward L. Kochey, Jr., Windsor, Conn., Arthur S. Tenser, Brumbaugh, Graves, Donahue & Raymond, New York City, for defendant.

MEMORANDUM OF DECISION

ZAMPANO, District Judge.

In this ancillary proceeding to a patent interference contest presently being conducted before the United States Patent Office, the movant, Combustion Engineering, Inc. (hereinafter C.E.), moves to vacate six subpoenas served upon its employees and opposes a motion to produce certain documents under Rule 34 of the Federal Rules of Civil Procedure.

An interference proceeding has been succinctly described in In re Natta, 388 F.2d 215 (3 Cir. 1968), as follows:

A patent interference is a statutory administrative proceeding, authorized by 35 U.S.C. § 135, to determine which of two or more applicants is the first inventor and, therefore, entitled to a patent. The Board of Patent Interferences assumes jurisdiction after the interference is declared by the Patent Examiner. The earliest applicant is awarded the status of senior party and is granted prima facie date of invention as of the date of his application. All other parties are junior and have the burden of proving a date of actual invention earlier than that of the senior party. After each party files a preliminary statement in which he sets forth the earliest date of invention he intends to claim, the parties are granted a period of time to file motions to clarify or reform the interference prior to trial. The motions are heard by the Patent Examiner who originally declared the interference. The preliminary statements are then exchanged, and the matter returned to the Board of Patent Interferences for trial. The Board then establishes a time schedule within which the parties must present their cases. All evidence must conform to the Patent Office rules. Under those rules, testimony is presented by deposition on oral examination, by affidavit or stipulation. Presentation times are assigned to the various parties based upon the inverse order of filing dates. 388 F.2d at 216.

In the instant case the parties have commenced the "taking of testimony" stage of the interference proceedings which constitutes the administrative trial on the issue of priority. The Babcock & Wilcox Company, the junior party in the interference, now attempts to obtain broad discovery by means of the subpoena duces tecum and a motion for the production of documents under Rule 34.

Title 35 U.S.C.A. § 24 provides in pertinent part:

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 Procecure relating to the attendance

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