529 F.2d 38 (1st Cir. 1976), 75--1218, Sheehan v. Doyle

Docket Nº:75--1218.
Citation:529 F.2d 38
Party Name:188 U.S.P.Q. 545 John C. SHEEHAN, Plaintiff-Appellee, v. DOYLE et al., Defendants-Appellants.
Case Date:January 30, 1976
Court:United States Courts of Appeals, Court of Appeals for the First Circuit

Page 38

529 F.2d 38 (1st Cir. 1976)

188 U.S.P.Q. 545

John C. SHEEHAN, Plaintiff-Appellee,

v.

DOYLE et al., Defendants-Appellants.

No. 75--1218.

United States Court of Appeals, First Circuit

January 30, 1976

Argued Jan. 5, 1976.

Page 39

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

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

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

PER CURIAM.

In this appeal, Doyle questions the wisdom of our decision in Sheehan v. Doyle, 513 F.2d 895 (1st Cir. 1975). In that case, Sheehan had sought documentary discovery from Doyle, and the latter had defended on grounds that Doyle, a nonresident alien, was beyond the jurisdiction and venue of the district court. We sustained Doyle, but on the ground that 35 U.S.C. § 24 'does not confer jurisdiction upon the district court, acting on its own, to grant Rule 34 discovery directly, whether against a nonresident alien or a resident citizen.' 513 F.2d at 898. In this, we relied heavily on the en banc decision of the third circuit in Frilette v. Kimberlin, 508 F.2d 205 (1975). In the present proceeding, it is Doyle who seeks discovery; and, after being peremptorily turned down by the district court on the basis of our decision in Sheehan v. Doyle, he brings this appeal.

We first dispose of Doyle's argument that as the discovery he seeks is by a subpoena duces tecum, it is not precluded by our earlier decision. The thrust of that decision was that 35 U.S.C. § 24 provided for judicial subpoenas to be used in aid of contested Patent Office cases (including for purposes of broad-based Federal Rules discovery) but only to the extent permitted by the Commissioner of Patents. What we rejected, and this would apply as much in the present case as in the earlier one, was the use of the federal district courts 'as alternative forums of first resort rather than as forums acting strictly in aid of the primary proceeding.' 513 F.2d at 899. Thus the district court correctly interpreted our decision as ruling out...

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