392 F.2d 686 (10th Cir. 1968), 9694, Natta v. Hogan

Docket Nº:9694, 9695.
Citation:392 F.2d 686, 157 U.S.P.Q. 183
Party Name:Giulio NATTA, Piero Pino, Giorgia Mazzanti and Montecatini Societa Generale Per L'Industria Mineraria e Chimica (Now Montecatini Edison, S.p.a.), Appellants, v. John Paul HOGAN, Robert L. Banks and Phillips Petroleum Company, Appellees. John Paul HOGAN, Robert L. Banks and Phillips Petroleum Company, Appellants, v. Giulio NATTA, Piero Pino, Giorgia
Case Date:March 21, 1968
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit

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392 F.2d 686 (10th Cir. 1968)

157 U.S.P.Q. 183

Giulio NATTA, Piero Pino, Giorgia Mazzanti and Montecatini Societa Generale Per L'Industria Mineraria e Chimica (Now Montecatini Edison, S.p.a.), Appellants,


John Paul HOGAN, Robert L. Banks and Phillips Petroleum Company, Appellees.

John Paul HOGAN, Robert L. Banks and Phillips Petroleum Company, Appellants,


Giulio NATTA, Piero Pino, Giorgia Mazzanti and Montecatini Societa Generale Per L'Industria Mineraria e Chimica (Now Montecatini Edison, S.p.a.), Appellees.

Nos. 9694, 9695.

United States Court of Appeals, Tenth Circuit.

March 21, 1968

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Richard B. McDermott, Tulsa, Okl., and L. Malcolm Oberlin, Bartlesville, Okl. (Boesche, McDermott & Eskridge, Tulsa, Okl., were with them on the brief), for appellants in 9695 and appellees in 9694.

Edward S. Irons, Washington, D.C. (Garrett Logan, of Martin, Logan, Moyers, Martin & Conway, Tulsa, Okl., and Mary Helen Sears, Washington, D.C., were with him on the brief), for appellants in 9694 and appellees in 9695.

Before BREITENSTEIN, SETH and HICKEY, Circuit Judges.

BREITENSTEIN, Circuit Judge.

The issues here presented relate to discovery and production of documents under Rule 34, F.R.Civ.P., in connection with interference proceedings in the Patent Office. The district court granted limited discovery and the contesting groups have each appealed.

On one side are Natta, Pino, and Mazzanti, and their assignee Montecatini. This group will be referred to as Montecatini. On the other, are Hogan, Banks, and their assignee Phillips Petroleum Company. This group will be referred to as Phillips.

The interference proceedings present the question of which party has the earliest patent date. After receiving an Italian patent, Montecatini applied for a patent in the United States. By virtue of 35 U.S.C. §§ 104 and 119, it may not establish a date earlier than June 8, 1954, the date of its Italian patent application. Three groups contest the priority of the Montecatini claim. In the order of their assigned seniority they are E. I. duPont de Nemours & Co., Standard Oil Company of Indiana, and Phillips, all of whom hold under assignments and, under Patent Office practice, are referred to as junior parties. The junior parties have the burden of establishing by a preponderance of the evidence a date before that of

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Montecatini. Each junior party in turn submits its evidence and then the senior party, Montecatini, presents its rebuttal. The evidence of the juniors has been completed. In preparation for rebuttal Montecatini sought Rule 34 discovery under the permission of 35 U.S.C. 24. An appropriate proceeding was brought in the United States District Court for the District of Delaware against duPont, in the Northern District of Illinois against Standard, and in the Northern District of Oklahoma against Phillips. In the duPont proceedings discovery was allowed and the Court of Appeals for the Third Circuit affirmed. See In re Natta, 3 Cir., 388 F.2d 215. In the Standard proceedings, the district court denied discovery and the Court of Appeals for the Seventh Circuit reversed. See Natta v. Zletz, 7 Cir., 379 F.2d 615. We are concerned with the Phillips proceedings where the district court granted limited discovery. In the appeals before us, several questions are raised which were not mentioned in the decisions affecting duPont and Standard.

The first question is the appealability of the district court order. Because that order pleases none of the contestants, the parties are in agreement that it is appealable. The rule that jurisdiction is not conferred by consent makes it necessary that we make our own determination. The question is whether the order of the district court, styled 'Final Order to Produce, ' is a final judgment from which an appeal will lie under 28 U.S.C. § 1291.

An order for the production of documents is not ordinarily appealable. 1 In Covey Oil Co. v. Continental Oil Co., 10 Cir., 340 F.2d 993, we recognized an exception where the order is collateral, fairly separable from the main litigation, and relates to a non-party who shows irreparable injury. In Alexander v. United States, 201 U.S. 117, 26 S.Ct. 356, 50 L.Ed. 686, the Court held that an order to testify and produce documents in connection with an antitrust proceeding was not final and appealable and that the determination of the validity of the order must await a contempt judgment for violation. 2 Cobbledick v. United States, 309, U.S. 323, 60 S.Ct. 540, 84 L.Ed. 783, discusses the Alexander decision and says that it does not apply to a situation where a district court compels the testimony of a person who has refused to make disclosures before the Interstate Commerce Commission. The Court pointed out that the district court proceedings and order were complete and that the order was final and appealable. This places discovery proceedings in aid of action by an administrative agency in a different category from such proceedings in aid of a matter pending before a court. Here the proceedings before the district court have come to an end. The party affected should not be 'powerless to avert the mischief of the order.' 3 In the circumstances presented a party should not be required to risk the hazard of punishment in order to obtain a determination of its rights. 4 In our opinion the order in question is final and appealable.

Phillips attacks the jurisdiction of the district court to require the production of documents. The claimed statutory basis for jurisdiction is 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

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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.'

The argument that Rule 34 proceedings are not within the sweep of the statute does not impress us. We believe that the intent of Congress was to make available to parties to contested cases in the Patent Office the provisions of Rule 34. The statute refers to both the attendance of witnesses and the production of documents. It does not limit discovery to that permissible under Rule 45. The courts of appeals which have considered the question are in agreement that Rule 34 proceedings are within the compass of § 24. 5 We reach the same conclusion.

Phillips says that § 24 contemplates initiation of discovery proceedings only by the issuance of a subpoena. None was issued here. Montecatini served notice of its Rule 34 motion on the clerk of an attorney for Phillips. Later the court clerk issued a summons which was served on an official of Phillips. The Third and Seventh Circuit Natta decisions upheld the initiation of proceedings by a Rule 34 motion but did not reach the jurisdictional question which Phillips raises.

The first sentence of § 24 authorizes the initiation of the ancillary court proceedings by the issuance of a subpoena. The second sentence extends the application of the civil rules pertaining to the production of documents to Patent Office proceedings. The generality of the second sentence is not restricted by the particularity of the first. The contention that jurisdiction is not obtained until a subpoena is issued and that only then may a Rule 34 motion be presented glorifies form over substance. Such formalistic procedure performs no useful purpose. 6 We see no reason for the issuance of a subpoena to an unneeded witness when the desired documents may be obtainable through the use of Rule 34. Section 24 gives to parties in Patent Office proceedings the right to secure documents in accordance with the provisions of the federal civil rules. The power of the federal courts to enforce that right is not dependent on any particular formalism of procedure.

Rule 34 provides that upon motion 'the court in which an action is pending' may order 'any party' to produce documents. Phillips says that there no action is pending in the district court and, hence, Rule 34 may not be invoked. Reliance is placed on Okun v. Kastner, D.R.I., 1 F.R.D. 599. In that case an application was made for the production of a document sought in connection with a Patent Office interference proceeding and the court denied relief on the ground that no action was pending. The case was decided before the 1952 amendment to § 24 which provided that the federal civil rules pertaining to production of documents apply to contested cases in the Patent Office. Whatever may have been the law before the amendment, we believe that the Rule 34 requirement of a 'pending' action is satisfied by the pendency of the interference proceedings. The judicial relief sought is ancillary to the administrative proceedings and is a continuation of the controversy pending before the agency. 7 To hold otherwise would thwart the congressional intent. The Patent Office has no authority to compel document production.

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The provisions of § 24 give to the courts 'a jurisdiction designed to cooperatively complement Patent Office jurisdiction as an aid to the quest for truth.' 8 In our opinion the pendence of the interference proceedings suffices to establish an action pending.

Phillips says further that Rule 34 applies only to production by a party to an action and that it is not a party. Phillips is not a party to the interference proceedings but it admits that it is the assignee of Hogan and Banks who are applicants before the...

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