382 F.2d 618 (6th Cir. 1967), 17526, Ochsner v. Millis

Docket Nº:17526.
Citation:382 F.2d 618, 155 U.S.P.Q. 195
Party Name:Frederick C. OCHSNER and Edwin A. Miller, Appellants, v. Walter R. MILLIS, Appellee.
Case Date:September 15, 1967
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

Page 618

382 F.2d 618 (6th Cir. 1967)

155 U.S.P.Q. 195

Frederick C. OCHSNER and Edwin A. Miller, Appellants,

v.

Walter R. MILLIS, Appellee.

No. 17526.

United States Court of Appeals, Sixth Circuit.

Sept. 15, 1967

Page 619

Ellsworth H. Mosher, Washington, D.C., Stevens, Davis, Miller & Mosher, Washington, D.C., Wilson & Wilson, Owensboro, Ky., on brief; S. M. Mims, Jr., Dallas, Tex., George S. Wilson, III, Owensboro, Ky., of counsel, for appellants.

Nathan J. Cornfeld, Henry T. Olsen, Owensboro, Ky., for appellee.

Before EDWARDS and McCREE, Circuit Judges, and WEINMAN, [*] District Judge.

WEINMAN, District Judge.

Frederick C. Ochsner and Edwin A. Miller are the junior parties in an interference proceeding now pending in the patent office; Walter R. Millis is the senior party. In that proceeding, where the ultimate question to be determined by the board of patent interferences is 'priority of invention' (35 U.S.C.A. § 135(a)), it is the contention of the junior parties that the senior party first learned of the specific subject matter of the interference from the junior parties and later encompassed the development in an application for patent although it was not specifically claimed in the application until over five years after the original filing. For use in that interference proceeding, the junior parties have taken the deposition of the senior party. During the taking of that deposition the senior party, upon advice of counsel, refused to answer certain questions propounded to him whereupon the junior parties filed a motion in the District Court to compel the testimony. The District Court denied the motion. This appeal is from the order of the District Court denying that motion. 1

Page 620

The first issue which this Court must determine pertains to the appealability of the order of the District Court; if the order is found to be appealable, we must then consider the propriety of the District Court's order.

As to the appealability of the order of the District Court. In support of his argument that the order of the District Court is not appealable, the senior party relies basically on the case of Korman v. Shull, 310 F.2d 373 (6 Cir. 1962), wherein this Court held that an order denying a motion seeking to compel testimony of certain witnesses and production of certain documents in connection with a patent office interference proceeding was interlocutory and not appealable. This Court described the motion as being 'strictly ancillary to the interference proceedings' and 'not final, but interlocutory and not appealable'. Because a number of appellate courts apparently do not follow the rule which we announced in Korman v. Shull, supra, we believe we must reconsider the law as stated therein.

We commence with the proposition that appellate courts have jurisdiction of appeals from all final decisions of the district courts. 28 U.S.C. § 1291.

With respect to the requirement of finality of a district court's decision before it is appealable, the United States Supreme Court has stated, in Cobbledick v. United States, 309 U.S. 323, at pages 324-326, 60 S.Ct. 540, at page 541, 84 L.Ed. 783 (1940):

'Finality as a condition of review is an historic characteristic of federal appellate procedure. It was written into the first Judiciary Act and has been departed from only when observance of it would practically defeat the right to any review at all. Since the right to a judgment from more than one court is a matter of grace and not a necessary ingredient of justice, Congress from the very beginning has, by forbidding piecemeal disposition on appeal of what for practical purposes is a single controversy, set itself against enfeebling judicial administration. Thereby is avoided the obstruction to just claims that would come from permitting the harassment and cost of a succession of separate appeals from the various rulings to which a litigation may give rise, from its initiation to entry of judgment. To be effective, judicial administration must not be leaden-footed. Its momentum would be arrested by permitting separate reviews of the component elements in a unified cause. * * *

'In thus denying to the appellate courts the power to review rulings at nisi prius, generally, until after the entire controversy has been concluded, Congress has sought to achieve the effective conduct of litigation. For purposes of appellate procedure, finality-- the idea underlying 'final judgments and decrees' in the Judiciary Act of 1789 and now expressed by 'final decisions' in § 128 (now § 1291) of the Judicial Code-- is not a technical concept of temporal or physical termination. It is the means for achieving a healthy legal system. * * *'

However, the Supreme Court continued and warned at page 329, 60 S.Ct. at page 543:

'* * * Due regard for efficiency in litigation must not be carried so far as to deny all opportunity for the appeal contemplated by the statutes.'

Following the Supreme Court's teaching in Cobbledick, the Court of Appeals for the Seventh Circuit, in Carter Products, Inc. v. Eversharp, Inc., 360 F.2d 868 (7 Cir. 1966), held that an order of the District Court denying a motion to compel a Chicago resident, who was not a party to a patent infringement suit pending in a California Federal District Court, to answer questions on deposition and to produce documents sought by subpoena duces tecum for use in defense of the infringement suit was a 'final decision' for all practical purposes and allowed the appeal. The Court noted that the appeal before it represented the only opportunity of obtaining discovery from

Page 621

the Chicago resident. The Court stated at pages 871-872:

'Our holding that the order involved is a 'final decision' is based on the fact that it is 'final' for all practical purposes. To hold otherwise would be to disregard the Supreme Court's warning in Cobbledick * * *: 'Due regard for efficiency in litigation must not be carried so far as to deny all opportunity for the appeal contemplated by the statutes.' We think that the order before us does 'settle' something as to appellants * * * and that the effect of our holding does not infringe upon the general principle against fragmentary appeals that would impede the progress of the main litigation.

'We agree with the First Circuit in Horizons Titanium Corp. v. Norton Co., 290 F.2d 421 (1st Cir. 1961), that 'what is critical is whether the party unsuccessfully seeking the subpoena has any other means of obtaining review.' We conclude that we should extricate appellants from the cul-de-sac in which the district court's order leaves them. Insofar as the holding herein is inconsistent with Palmer, (Referring to Palmer v. Fisher, 228 F.2d 603 (7 Cir. 1955))...

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