555 F.2d 1118 (2nd Cir. 1977), 169, Shattuck v. Hoegl

Docket Nº:169, Docket 76-7189.
Citation:555 F.2d 1118
Party Name:194 U.S.P.Q. 405 SHATTUCK et al., Plaintiffs. Meredity D. Shattuck, Ulo Vahtra and International Business Machines Corporation, Plaintiffs-Appellants, v. HOEGL et al., Appellees.
Case Date:May 20, 1977
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 1118

555 F.2d 1118 (2nd Cir. 1977)

194 U.S.P.Q. 405

SHATTUCK et al., Plaintiffs.

Meredity D. Shattuck, Ulo Vahtra and International Business

Machines Corporation, Plaintiffs-Appellants,


HOEGL et al., Appellees.

No. 169, Docket 76-7189.

United States Court of Appeals, Second Circuit

May 20, 1977

Argued March 28, 1977.

Joseph G. Walsh, New York City (Frank F. Scheck, Joseph J. C. Ranalli, Pennie & Edmonds, New York City, of counsel), for plaintiffs-appellants.

Francis J. Hone, New York City (Brumbaugh, Graves, Donohue & Raymond, New York City, of counsel), for appellees.

Page 1119

Before GURFEIN and MESKILL, Circuit Judges, and NEWMAN, District judge. [*]

MESKILL, Circuit Judge:

This is an appeal from an order of the United States District Court for the Western District of New York, Harold P. Burke, J., denying discovery in a patent interference proceeding. We dismiss the appeal for lack of jurisdiction.


Appellant Shattuck is an employee of International Business Machines Corporation ("IBM"), one of the real parties in interest. He is the holder of a patent on a photo-conductive compound, known as "equal weight TNF/PVK," which is used in office copiers manufactured by IBM, the assignee of the patent. Hoegl is an employee of Xerox Corporation ("Xerox"), the other real party in interest. Xerox claims that Hoegl discovered "equal weight TNF/PVK" before Shattuck, and therefore that IBM's patent properly belongs to Xerox. In 1973, Xerox asserted this claim in an interference proceeding in the Patent Office against IBM. 1

IBM responded by charging Xerox with fraud on the Patent Office. In support of this contention, IBM offers evidence that the prior inventor was not Hoegl, but Weigl, another Xerox employee. IBM claims that this earlier, non-disclosed discovery by Xerox constituted fraud on the Patent Office and thus defeats the interference claim. See Beckman Instruments, Inc. v. Chemtronics, Inc., 428 F.2d 555, 564-66 (5th Cir.), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 (1970); Kayton, Lynch and Stern, Fraud in Patent Procurement: Genuine and Sham Charges, 43 Geo.Wash.L.Rev. 1 (1974).

IBM has conducted discovery in the Western District of New York under 35 U.S.C. § 24. 2 At an earlier stage of this proceeding, Karembelas and Kondo, both attorneys employed by Xerox, as well as Weigl, appeared at depositions. All three refused to produce certain documents, making claims of work product and privilege. 3 At IBM's request, Judge Burke ordered Weigl to produce the documents he had withheld. Xerox attempted to appeal that order to this Court. We held that the order was non-final, and dismissed the appeal. Shattuck v. Hoegl, 523 F.2d 509 (2d Cir. 1975) ("Shattuck I").

Some time after that, IBM moved to compel Karembelas and Kondo to produce the documents in their control. 4 This time, Judge Burke refused to compel discovery, and IBM appealed. 5


As a general rule, orders granting or denying discovery are not appealable. Xerox Corp. v. SCM Corp., 534 F.2d 1031 (2d

Page 1120

Cir. 1976); 4 Moore's Federal Practice P 26.83(3) (1976). However, when, as here, the only relief sought in the district court is discovery, a number of exceptions to this rule exist. Id. at P 26.83(4). Appellants vigorously urge us to carve out another such exception.

The law governing appealability of orders issued under 35 U.S.C. § 24 is in almost hopeless disarray. 6 4 Moore's Federal Practice P 26.83(4), at 26-590 n. 7; C. Wright, A. Miller, and E. Cooper, Federal Practice and Procedure § 3914, at 584-85 (1976). Over 50 years ago, this Circuit held all such orders non-appealable. Tucker v. Peiler, 297 F. 570 (2d Cir.), cert. denied, 265 U.S. 587, 44 S.Ct. 461, 68 L.Ed. 1193 (1924). In Shattuck I, we followed Tucker, and held that all orders granting discovery under 35 U.S.C. § 24 would be non-appealable:

None of these cases convinces us that we should decline to follow our decision in Tucker v. Peiler, especially where, as here, production of documents and testimony of witnesses has been ordered. We thus distinguish the instant case from one where a district court has denied production of documents or taking of testimony. In that situation, the district court order may very well be final since, as the Sixth Circuit pointed out in Oschner, no other court may ever be in a position to order production.

523 F.2d at 516.

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