379 F.2d 615 (7th Cir. 1967), 16002, Natta v. Zletz

• Docket Nº: 16002, 16003.
• Citation: 379 F.2d 615, 153 U.S.P.Q. 768
• Party Name: Giulio NATTA et al., Appellants (Appellees in No. 16003), v. Alex ZLETZ and Standard Oil Company of Indiana, Appellees (Appellants in No. 16003).
• Case Date: May 23, 1967
• Court: United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 615

379 F.2d 615 (7th Cir. 1967)

153 U.S.P.Q. 768

Giulio NATTA et al., Appellants (Appellees in No. 16003),

v.

Alex ZLETZ and Standard Oil Company of Indiana, Appellees (Appellants in No. 16003).

Nos. 16002, 16003.

United States Court of Appeals, Seventh Circuit.

May 23, 1967

Page 616

Max Wildman, Arthur G. Gilkes, Chicago, Ill., John T. Kelton, New York City, Elsie C. Spears, of Kirkland, Ellis, Hodson, Chaffetz & Masters, Chicago, Ill., for appellees Alex Zletz and Standard Oil Co. (Indiana); Watson, Leavenworth, Kelton & Taggart, William H. Vogt III. Thomas V. Heyman, New York City, of counsel, for Zletz and Standard Oil Co.

Mary Helen Sears, Washington, D.C., Kenneth J. Burns, Jr., Chicago, Ill., Raymond, Mayer, Jenner & Block, Chicago, Ill., Irons, Birch, Swindler & McKie, Washington, D.C., for appellants Natta and others; Edward S. Irons, Washington, D.C., Harvey W. Mortimer, Darby & Darby, New York City, Cox, Langford & Brown, Washington, D.C., of counsel.

Before SCHNACKENBERG, CASTLE and CUMMINGS, Circuit Judges.

CASTLE, Circuit Judge.

Giulio Natta, Piero Pino and Giorgio Mazzanti, senior party in a patent interference proceeding (Interference 89,634) pending before the United States Patent Office moved in the District Court pursuant to 35 U.S.C.A. § 23 and § 24 for an order under Rule 34 of the Federal Rules of Civil Procedure (i, U.S.C.A.) to obtain the production of documents from the files of Standard Oil Company of Indiana, assignee of junior party, Alex Zletz. The documents are sought for use in the interference proceeding in the examination, on rebuttal testimony, of present and former employees of Standard Oil including Zletz, the named inventor in the Standard Oil application for patent involved in the interference proceeding. Appellants' motion was filed in the District Court on June 30, 1966. At that time the trial testimony period allocated to appellants by the Patent Office under its interference proceeding rules was scheduled to expire on July 29, 1966. The proceedings in the District Court on the motion culminated in an order entered November 16, 1966, denying the motion, and the appellants prosecuted an appeal (No. 16002) to this Court.

The main contested issues precipitated by the respective contentions advanced on appellants' appeal are (1) whether the order denying appellants' motion for document production is a final appealable order such as is requisite to this Court's exercise of appellate jurisdiction, and (2) whether a condition and limitation imposed by the Patent Office on the right of appellants to adduce additional testimony either deprived the District Court of jurisdiction or justified abstention by the District Court from the exercise of its jurisdiction in the premises.

The record discloses that prior to the July 29, 1966, expiration date the appellants moved in the Patent Office for an extension of their testimony time to a period to terminate thirty days after the completion of the District Court proceeding and two companion ancillary proceedings in other jurisdictions, and of all document production resulting...