513 F.2d 895 (1st Cir. 1975), 74-1318, Sheehan v. Doyle

Docket Nº:74-1318.
Citation:513 F.2d 895
Party Name:185 U.S.P.Q. 489 John C. SHEEHAN, Plaintiff-Appellee, v. Frank P. DOYLE et al., Defendants-Appellants.
Case Date:March 31, 1975
Court:United States Courts of Appeals, Court of Appeals for the First Circuit

Page 895

513 F.2d 895 (1st Cir. 1975)

185 U.S.P.Q. 489

John C. SHEEHAN, Plaintiff-Appellee,

v.

Frank P. DOYLE et al., Defendants-Appellants.

No. 74-1318.

United States Court of Appeals, First Circuit

March 31, 1975

Argued Dec. 2, 1974.

Page 896

Albert L. Jacobs, Jr., New York City, with whom Jacobs & Jacobs, P. C., New York City, Owen F. Clarke, Jr., and Sullivan & Worcester, Boston, Mass., were on brief for defendants-appellants.

Thomas E. Spath, with whom N. Dale Sayre, McLean, Boustead & Sayre, New York City, Robert J. Horn, Jr., Kenway & Jenney, Boston, Mass., were on brief for plaintiff-appellee.

Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.

LEVIN H. CAMPBELL, Circuit Judge.

This appeal concerns the authority of the District Court for the District of Massachusetts to order discovery in aid of a patent interference proceeding being conducted before the Board of Patent Interferences in Arlington, Virginia.

Doyle (a name used for three nonresident aliens) is engaged in an interference in the United States Patent Office against Sheehan, a Massachusetts resident. See 35 U.S.C. § 135. At issue is whether Doyle or Sheehan is the first inventor of processes for the production of penicillin. Doyle has applied for a United States patent, Sheehan already having been granted one covering the same subject matter.

One might suppose that the scope of discovery for use in an interference 1 would be determined by the Patent Office or at least coordinated with the administrative proceeding within its jurisdiction; and Congress has in fact conferred statutory authority upon the Commissioner of Patents to "establish rules for taking affidavits and depositions required in cases in the Patent Office", 35 U.S.C. § 23, and the Commissioner has adopted certain rules, see note 1 supra. But in section 24, Congress has also conferred certain powers upon district courts. Historically section 24 developed to provide for the issuance of subpoenas to compel testimony and evidence required in Patent Office interferences; but a sentence in section 24 inserted by Congress in 1952 has been construed by a number of courts also to allow parties to an interference to obtain at any time broad-based discovery in district

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courts in separate, self-contained proceedings. 2 See infra. Such discovery goes on outside the ambit of the Patent Office proceeding and beyond the scope permitted without special approval under its rules.

Citing section 24 and bypassing the Patent Office's procedures, Doyle brought an independent action in the District Court for the District of Massachusetts to obtain discovery from Sheehan under the Federal Rules of Civil Procedure. The court issued a subpoena duces tecum against Sheehan and, after hearing Sheehan's objections, refused to quash the subpoena and directed Sheehan to produce the requested records and appear to be deposed. In addition to the discovery of Sheehan, Doyle's counsel was able to obtain from the court subpoenas duces tecum against two organizations, also located in Massachusetts, having an interest in the Sheehan patent. Doyle's goal in these ancillary proceedings has been to discover evidence that an abandoned Sheehan patent application in 1957, while disclosing some processes, did not disclose enough to enable Sheehan to claim first invention to the processes for which Sheehan obtained the disputed patent in 1959 and as to which Doyle has a claim to invention dating from late 1957.

While Doyle's discovery was in progress, Sheehan, also invoking section 24, filed a request under Rule 34, Fed.R.Civ.P., 3 for the production of documents from Doyle and his assignee, Beecham Research...

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