508 F.2d 205 (3rd Cir. 1974), 73-1622, Frilette v. Kimberlin

Docket Nº:73-1622, 73-1635 and 73-1695.
Citation:508 F.2d 205
Party Name:184 U.S.P.Q. 266 Vincent J. FRILETTE, and Paul R. Weisz, Movants-Appellants, v. Charles N. KIMBERLIN, Jr., and Elroy M. Gladrow, Opposers. Richard J. DUFFY, Plaintiff-Appellee, v. Gerald BARNES, Joseph R. Preziosi, William F. McGuinness, James B. Duke,Richard A. Craig, Charles C. Faroni, Richard Baubles and Donald Sager,Defendants-Appellants.
Case Date:December 16, 1974
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

Page 205

508 F.2d 205 (3rd Cir. 1974)

184 U.S.P.Q. 266

Vincent J. FRILETTE, and Paul R. Weisz, Movants-Appellants,


Charles N. KIMBERLIN, Jr., and Elroy M. Gladrow, Opposers.

Richard J. DUFFY, Plaintiff-Appellee,


Gerald BARNES, Joseph R. Preziosi, William F. McGuinness,

James B. Duke,Richard A. Craig, Charles C. Faroni,

Richard Baubles and Donald


Nos. 73-1622, 73-1635 and 73-1695.

United States Court of Appeals, Third Circuit

December 16, 1974

Sept. 13, 1974. Frilette Appeal Argued Feb. 15, 1974, Reargued Sept. 13,

Sept. 13, 1974.

1974, Barnes AppealArgued Jan. 9, 1974, Reargued

As Amended Jan. 27, 1975.

Page 206

Farrell R. Werbow and Davidson C. Miller, Stevens, Davis, Miller & Mosher, Arlington, Va., and Murrary M. Schwartz, and Daniel A. Durkin, Murdoch, Longobardi, Schwartz & Walsh, Wilmington, De., for appellants Frilette and Weisz.

David F. Anderson, Potter, Anderson & Corroon, Wilmington, Del., for appellees Kimberlin and Gladrow; Thomas F. Reddy, Jr., Pennie & Edmonds, New York City, John J. Schlager, Linden, N.J., of counsel.

Appeal from the United States District Court for the District of New Jersey (D.C. No. 822-73).

James P. Hume, Gerald D. Hosier, Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill., for appellee Duffy; Richard B. Megley, Benjamin C. Pollard, USM Corp., Beverly, Mass., of counsel.

Howard P. Danzig, Riker, Danzig, Scherer & Brown, Newark, N.J., for appellants Barnes et al.; Prangley, Dithmar, Vogel, Sandler & Stotland, Chicago, Ill., Richard A. Craig, Amerace Corp., New York City, of counsel.

Appeal from the United States District Court for the District of Delaware (D.C.Misc. No. 83).

Frilette Appeal Argued Feb. 15, 1974.

Before VAN DUSEN and ADAMS, Circuit Judges, and HUYETT, District Judge.

Barnes Appeal Argued Jan. 9, 1974.

Before ADAMS, HUNTER * and WEIS, Circuit Judges.

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Appeals Reargued Sept. 13, 1974.



WEIS, Circuit Judge.

To 'bite the bullet' is an old phrase currently enjoying a revival in popularity. It aptly describes our action in these appeals as we overrule our prior holding in In re Natta, 388 F.2d 215 (3d Cir. 1968), which erroneously gave a broad interpretation to 35 U.S.C. 24 (1952). It is our conclusion that the statute does not grant broad discovery authorization to the district courts in patent interference cases but limits ancillary jurisdiction to the issuance of subpoenas as permitted by prior practice.

These two appeals were argued together, and, while the fact situations differ, a common question of law governs the outcome of both cases. The relevant facts will be set out in abbreviated fashion, however, to give some background to the issues involved.

Both cases arise from interference proceedings filed in the Patent Office. This is an administrative process authorized by 35 U.S.C. 135 (1962) to determine which of two or more applicants is the first inventor and thus entitled to a partent. The applicant first in time is called the senior party, and the other is designated the junior party. After all parties have filed preliminary statements presenting the grounds for their positions, a period of time is set by an examiner for the filing of motions. Thereafter, the Board of Patent Examiners establishes a time schedule designating when the parties must present their trial evidence by means of deposition, affidavit, or stipulation. The junior party is required to produce his evidence first, and the senior party follows.

In the preliminary stages of the Duffy case, the junior party, Barnes, et al., filed a motion 1 supported by affidavits. The motion was denied by the patent examiner, and in due course the junior party sought relief from the Commissioner of Patents. In the interim, the senior party, Duffy, applied to the district court in New Jersey . . . for subpoenas duces tecum to compel discovery by depositions. After argument, the district court wrote an opinion 1a permitting discovery but limiting it to matters dealing with the veracity of the affidavits attached to the junior party's motion.

In the Frilette case, the junior party filed a request for discovery with the Patent Office pursuant to its Rule 287(c). 2 The motion was denied by the

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Board as being premature since the time for filing documents by the senior party under Rule 287(a) had not yet expired. The junior party then applied to the district court in Delaware, which also denied discovery in an opinion holding that good cause had not been shown, and that the request was premature. 3

This anomaly-- permitting discovery in the district court while matters are still pending before an administrative agency-- exists only in patent interferences. Generally, discovery is not available in administrative procedures. Davis, 1 Administrative Law Treatise 8.15 at 588 says:

'The APA contains no provision for pre-trial discovery in the administrative process and, of course, the provisions of the Federal Rules of Civil Procedure for discovery do not apply to administrative proceedings. Therefore, in the absence of special statutory provision, and in the absence of special administrative regulation, no procedure for discovery is normally available in a federal administrative proceeding.'

Though there has been much criticism directed toward the absence of these procedures in administrative matters, little has been done to cure it except in the Patent Office. See Davis, supra.

The parties in these cases assert their right to secure discovery in the district court upon the authority of 35 U.S.C. 24 which reads:

'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

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

This statutory provision was interpreted by this court in In re Natta, supra, to mean that Congress intended to include not only Fed.R.Civ.P. 45, pertaining to the attendance of witnesses and production of documents, but also the other rules of federal practice relating to discovery. The dissent by Chief Judge Seitz concluded that Congress had meant only to maintain the continuity of authority as granted to the courts under an earlier repealed statute pertaining to subpoenas and had not intended to incorporate the broad provisions relating to discovery generally. Essentially, the dissent reasoned that the courts were only to issue and enforce subpoenas in connection with the preparation of evidence for submission to the Board of Patent Interferences-- the practice which had previously prevailed.

Prior to Natta, pretrial discovery, as such, was unknown in cases before the Board of Patent Interferences. The earlier cases of Gladrow v. Weisz, 354 F.2d 464 (5th Cir. 1965); 4 Natta v. Zletz, 379 F.2d 615 (7th Cir. 1967), 5 and Korman v. Shull, 184 F.Supp. 928 (W.D.Mich.1960), 6 all involved instances where testimony was being prepared and subpoenas either had or could have been issued to compel production of documents. None of those cases actually involved pretrial discovery as that term is understood in the usual civil litigation.

The impact of the Natta decision was substantial. While the holding there, as in the earlier cases, applied to a situation where testimony was in progress, the dictum in that opinion was so broad that applications were soon made and granted where pretrial discovery was sought. 7 Because of the unique procedural posture of these cases, almost every order granting or denying discovery, no matter how routine in nature, became appealable. 8

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8] The appellate bench thus was called upon the review, in this isolated field, discovery matters which would have been interlocutory in other fields of litigation where they would probably never receive attention in an appellate brief.

In addition to this substantial burden which was placed upon the traditional process of judicial administration, the liberalization of discovery engendered an interference all its own-- one between the procedures in the Patent Office and those in the courts. The traditional timetable for submitting a case in the Patent Office and its concern for limiting the scope to relevant evidence were effectively neutralized if either party resorted to the federal courts for discovery in any or all stages in the interference proceedings. Instead of a role of 'co-operatively complementing' 9 the Patent Office, the courts became the means through which the parties ranged far and wide, geographically as well as in terms of relevance, in search of evidence which, although not germane to issues in the Patent Office, might lead to other admissible evidence. 10 This, of course, all took time and disrupted the schedules of the Patent Office with stays of proceedings in that agency while discovery proceeded in the courts.

Over the years the Patent Office has developed a procedure for handling these cases which required the junior party to present its evidence first. Discovery by the junior party in the district court prior to or while it presents its own case, however, frustrates the order of precedence which the Patent Office desires to utilize. 11 Whether that scheduling and priority are desirable is really not relevant, because they represent a choice by the agency responsible for processing these...

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