710 F.3d 1318 (Fed. Cir. 2013), 2012-1244, Abbott Laboratories v. Cordis Corp.

Docket Nº:2012-1244.
Citation:710 F.3d 1318, 106 U.S.P.Q.2d 1227
Opinion Judge:DYK, Circuit Judge.
Party Name:ABBOTT LABORATORIES, Movant-Appellee, v. CORDIS CORPORATION, Respondent-Appellant.
Attorney:Michael A. Morin, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for movant-appellee. With him on the brief was Andrew J. Vance. Of counsel on the brief were Jeffrey A. Lamken and Robert K. Kry, Molo Lamken LLP, of Washington, DC. Of counsel was Corinne Lee Mill...
Judge Panel:Before RADER, Chief Judge, DYK, and REYNA, Circuit Judges.
Case Date:March 20, 2013
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1318

710 F.3d 1318 (Fed. Cir. 2013)

106 U.S.P.Q.2d 1227

ABBOTT LABORATORIES, Movant-Appellee,

v.

CORDIS CORPORATION, Respondent-Appellant.

No. 2012-1244.

United States Court of Appeals, Federal Circuit.

March 20, 2013

Page 1319

Michael A. Morin, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for movant-appellee. With him on the brief was Andrew J. Vance. Of counsel on the brief were Jeffrey A. Lamken and Robert K. Kry, Molo Lamken LLP, of Washington, DC. Of counsel was Corinne Lee Miller, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC.

Joseph Lucci, Woodcock Washburn LLP, of Philadelphia, PA, argued for the respondent-appellant. With him on the brief was John F. Murphy. Of counsel on the brief was John F. Duffy, Fried, Frank, Harris, Shriver & Jacobson LLP, of Washington, DC. Of counsel was Eugene N. Hansen.

Samantha L. Chaifetz, Attorney, Civil Division, United States Department of Justice, of Washington, DC, for Amicus Curiae. With her on the brief were Stuart F. Delery, Acting Assistant Attorney General, Scott R. McIntosh and Mark R. Freeman, Attorneys. Of counsel on the brief were Bernard J. Knight, Jr., General Counsel, Raymond T. Chen, Solicitor and Deputy General Counsel, Thomas W. Krause and Farheena Y. Rasheed, Associate Solicitors, United States Patent and Trademark Office, of Alexandria, VA.

Before RADER, Chief Judge, DYK, and REYNA, Circuit Judges.

DYK, Circuit Judge.

Cordis Corporation appeals from the decision of the United States District Court for the Eastern District of Virginia granting Abbott Laboratories' motion to quash two subpoenas duces tecum issued pursuant to 35 U.S.C. § 24. We conclude that section 24 only empowers a district court to issue a subpoena for use in a " contested case," and that contested cases are limited

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to those in which the regulations of the United States Patent and Trademark Office (" PTO" ) authorize the parties to take depositions. Since the PTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not " contested cases" within the meaning of section 24, and subpoenas under section 24 are not available. We affirm.

BACKGROUND

Section 24 of title 35 of the U.S.Code provides that " [t]he clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark 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." 35 U.S.C. § 24. This appeal requires us to decide for the first time whether section 24 empowers a district court to issue a subpoena in an inter partes reexamination proceeding, in the absence of PTO regulations allowing parties to take testimony by deposition in such proceedings. In other words, we must decide whether such proceedings are " contested cases" within the meaning of the statute.

The origins of this dispute lie in September 2009, when Cordis sued Abbott and another company in the United States District Court for the District of New Jersey, alleging infringement of two patents held by Cordis for drug-eluting stents (U.S. Patent No. 6,746,773 (" the '773 patent" ) and U.S. Patent No. 7,591,844 (" the '844 patent" )). The following year, the two defendants asked the PTO to initiate inter partes reexaminations of the two patents. The PTO agreed to reexamine the '844 patent in June 2010, and, on the same day, the examiner issued an initial office action rejecting all the claims of the patent as obvious. In August, Cordis submitted an expert affidavit asserting, among other facts, the existence of secondary considerations of nonobviousness, including that Abbott had copied its patent. Abbott's co-defendant responded the following month with an expert affidavit of its own, concluding that the ' 844 patent would have been obvious. In January 2011, the examiner issued a further " Non-Final Office Action," affirming the rejection of all the claims of the '844 patent. Among other findings, the examiner determined that Cordis had failed to present evidence of copying.1

Around the same time that the examiner issued her second office action rejecting the '844 patent, a different examiner issued an initial action rejecting all the challenged claims of the '773 patent as obvious. In February and August 2011, Cordis and Abbott submitted dueling expert declarations on the obviousness of the '773 patent, addressing (among other matters) issues of copying. The reexamination of the '773 patent apparently remains pending before the examiner, while the reexamination of the '844 patent is on appeal before the Patent Trial and Appeal Board (" Board" ). 2

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In October 2011, Cordis sought subpoenas from the district court in Virginia under section 24. The court, pursuant to Cordis's request, issued two subpoenas duces tecum ordering Abbott to produce documents that Cordis believed would help establish the existence of copying and other secondary considerations with respect to the contested claims of the '844 and ' 773 patents.3 The subpoenas were issued specifically for use in the pending PTO reexaminations of the two patents.

At the same time, Cordis filed petitions with the Director of the PTO, asking him to " clarif[y] ... the [PTO's] rules as they relate to the service of a subpoena under 35 U.S.C. § 24 in inter partes reexaminations," and in particular to " confirm that [the PTO's] current rules impose no requirement that parties seeking to enforce subpoenas under § 24 must obtain the [PTO's] authorization." J.A. 538. In the alternative, Cordis asked the PTO to authorize such subpoenas if authorization was required.

The PTO denied Cordis's petitions, determining that section 24 subpoenas are " not permitted by the inter partes reexamination statute, or by any regulation governing inter partes reexamination proceedings." J.A. 1567. The PTO reasoned that because the reexamination statute requires inter partes reexaminations to be " ‘ conducted according to the procedures established for initial examination,’ " and because initial examination does not " provide for a discovery practice," inter partes reexaminations are not contested cases within the meaning of section 24. J.A. 1568 (quoting 35 U.S.C. § 314(a)). The PTO also concluded that allowing subpoenas in reexaminations would frustrate the congressional command to complete these proceedings with " ‘ special dispatch.’ " J.A. 1569 (quoting 35 U.S.C. § 314(c)). Finally, the PTO observed that it would be " anomalous" to allow discovery in inter partes reexaminations on the basis of section 24 " in isolation," when parties to indisputably " contested" proceedings such as interferences and inter partes reviews are constrained by specific statutory and regulatory frameworks for compelled discovery. J.A. 1571. In a separate lawsuit, Cordis has challenged the PTO's denial of its petitions as arbitrary and capricious in violation of the Administrative Procedure Act, 5 U.S.C. § 706(2)(A). The district court has stayed that proceeding pending the outcome of this appeal. See Cordis Corp. v. Kappos, No. 1:12-cv-75 (E.D.Va. Mar. 29, 2012).

Shortly after the PTO denied Cordis's petitions, a magistrate judge of the district court in Virginia granted Abbott's motion to quash the subpoenas, concluding that the PTO's decision, " while not binding, [was] certainly persuasive," and that an inter partes reexamination is not a " contested case" within the meaning of section 24. J.A. 20-21. The district court affirmed the magistrate judge's order without opinion. See Abbott Labs. v. Cordis Corp., No. 11-mc-42 (E.D.Va. Jan. 19, 2012).

Cordis timely appealed the district court's order quashing the subpoenas. We have jurisdiction under 28 U.S.C. § 1295(a)(1). See Micro Motion Inc. v. Exac Corp., 876 F.2d 1574, 1576 (Fed.Cir.1989). " We ... review statutory interpretation ... without deference." AstraZeneca Pharm. LP v. Apotex Corp., 669 F.3d 1370, 1376 (Fed.Cir.2012).

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DISCUSSION

I

The question of whether 35 U.S.C. § 24 empowers a district court to issue a subpoena for use in an inter partes reexamination turns on whether an inter partes reexamination is a " contested case" within the meaning of section 24. The proper interpretation of section 24 is a question of first impression in this court. We construe the term " contested case," as used in section 24, as referring to a proceeding in which the PTO has provided for the taking of depositions for use in that proceeding.

A

The...

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