388 F.2d 215 (3rd Cir. 1968), 16608, In re Natta

Docket Nº:16608.
Citation:388 F.2d 215, 156 U.S.P.Q. 289
Party Name:In re NATTA et al., Movant in the United States Patent Office Before the Examiner of Interferences, Interference No. 89634. HOGAN et al. v. ZLETZ v. BAXTER et al. v. NATTA et al. E. I. duPont de Nemours & Co., Appellant.
Case Date:January 04, 1968
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

Page 215

388 F.2d 215 (3rd Cir. 1968)

156 U.S.P.Q. 289

In re NATTA et al., Movant in the United States Patent Office Before the Examiner of Interferences, Interference No. 89634. HOGAN et al.


ZLETZ v. BAXTER et al. v. NATTA et al. E. I. duPont de Nemours & Co., Appellant.

No. 16608.

United States Court of Appeals, Third Circuit.

January 4, 1968

Argued Nov. 2, 1967.

Page 216

James M. Tunnell, Jr., Morris, Nichols, Arsht & Tunnell, Wilmington, Del. (David A. Drexler, Wilmington, Del., on the brief), Louis F. Reed, Fish Richardson & Neave, New York City, of counsel, for appellant.

Morris, James, Hitchens & Williams, Wilmington, Del. (Edmund D. Lyons, Wilmington, Del., Mary Helen Sears, Irons, Birch, Swindler & McKie, Washington, D.C., on the brief), for appellee. Edward S. Irons, Irons, Birch, Swindler & McKie, Washington, D.C., Harvey W. Mortimer, Darby & Darby, New York City, Cox, Langford & Brown, Washington, D.C., of counsel.

Before McLAUGHLIN, GANEY and SEITZ, Circuit Judges.

McLAUGHLIN, Circuit Judge.

Appellant, E.I. duPontde Nemours & Co., appeals under 28 U.S.C. § 1292(b) from an order of the District court directing it to produce certain documents to appellee, Natta (hereinafter called Montecatini) movant below. The order granted Montecatini discovery of the books and records of duPont pursuant to 35 U.S.C. 24 in aid of Montecatini's case in an interference proceeding pending before the Board of Patent Interferences of the United States Patent Office. In re Natta, 259 F.Supp. 922 (D.C.Del.1966); In re Natta, 264 F.Supp. 734 (D.C.Del.1967).

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 a 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.

Interference 89,634, the one involved in this appeal, was originally declared in 1958 and concerned five patent applications assigned to Montecatini, duPont, Phillips Petroleum Company, Standard Oil of Indiana and Hercules, Inc. Montecatini was made senior party on the basis of the filing date of its Italian patent application on June 8, 1954. DuPont, originally assigned a filing date of December 30, 1955, relied on 35 U.S.C. § 120 and 37 C.F.R.§ 1.235, and moved to shift the burden of proof relying upon its earlier application of August 19, 1954. The Examiner agreed and awarded duPont the benefit of the earlier date thereby placing it second in seniority to Montecatini. Hercules was dropped from the proceeding, and Standard Oil of Indiana and Phillips Petroleum Company were given dates of October 15, 1954 and January 11, 1956, respectively.

During the motion period, Montecatini moved to dissolve the interference as far

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as duPont was concerned on the ground, inter alia, of unpatentability over prior art consisting of cited Natta papers thereby raising the question of whether the duPont disclosure in the December 30, 1955 application, which was substantially more amplified than the August 19, 1954 application, was derived from interim Natta publications.

After all the junior parties presented their cases, Montecatini was assigned the period March 29, 1966-July 29, 1966 in which to complete its testimony. By virtue of 35 U.S.C. §§ 104 and 119, Montecatini's proofs must be limited to rebutting attempts by the junior parties to establish an earlier date. Montecatini may not establish for itself a date earlier than June 8, 1954, the date of its Italian patent application. Monaco v. Hoffman, 189 F.Supp. 474 (D.C.D.C.1960), affirmed 110 U.S.App.D.C. 406, 293 F.2d 883 (1961). In an effort to obtain the necessary proofs, Montecatini initiated a Rule 34, Fed.R.Civ.Proc., motion below on June 30, 1966 as one of three companion ancillary proceedings it brought against each of the junior parties to the interference. The motion was based on 35 U.S.C. 24 and was served on duPont's counsel of record in the interference, Dr. Roger A. Hines, who had agreed in advance to accept service.

Seeking reversal of the order below, duPont claims that the District Court erred in applying the scope of discovery standards contained in the Federal Rules of Civil Procedure rather than the admissibility standards governing interference proceedings found in the Patent Office rules. Conceding the ancillary jurisdiction of the District Court, duPont nevertheless contends that that jurisdiction was improperly invoked.

Montecatini's Rule 34 motion is based upon 35 U.S.C. 24 which provides:

'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 Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office.'

This statute manifests a clear congressional intent to make available to parties to patent interferences the broad discovery provisions of the Federal Rules of Civil Procedure. The Reviser's Note to the 1952 amendments states, in part: 'Reference to a repealed statute is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.' The repealed statute referred to was R.S. 869 (28 U.S.C. 647) which, like present Rule 45(b) of the Federal Rules, dealt with subpoenas duces tecum. If Congress had desired to limit discovery to the type available under Rule 45(b), it simply would have pointed to that specific rule instead of referring generally to the Federal Rules of Civil Procedure. Absent a clear indication of contrary congressional intent, we are compelled to the conclusion that broad discovery is available. This approach insures that the fundamental elements of procedural and substantive due process will be accorded to parties to patent interferences.

Our conclusions are supported by the decisions of other courts that have considered the issue. In Gladrow v. Weisz, 354 F.2d 464 (5 Cir. 1955), the junior party to an interference...

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