Frilette v. Kimberlin, Misc. No. 83.

• Decision Date: 15 May 1973
• Docket Number: Misc. No. 83.
• Citation: 358 F. Supp. 493
• Parties: FRILETTE et al., Movant, v. KIMBERLIN et al.
• Court: U.S. District Court — District of Delaware

358 F. Supp. 493

FRILETTE et al., Movant, v. KIMBERLIN et al.

Misc. No. 83.

United States District Court, D. Delaware.

May 15, 1973.

Murray M. Schwartz and Daniel A. Durkin, Murdoch, Longobardi, Schwartz & Walsh, Wilmington, Del., Farrell Roy Werbow and Davidson C. Miller, Stevens, Davis, Miller & Mosher, Arlington, Va., of counsel, for Frilette and others.

David A. Anderson, Potter, Anderson & Corroon, Wilmington, Del., Thomas F. Reddy, Jr., of Pennie, Edmonds, Morton, Taylor & Adams, New York City, Keith E. Mullenger and Clyde C. Metzger, New York City, and John J. Schlager, Linden, N. J., of counsel, for Kimberlin and others.

OPINION and ORDER

CALEB M. WRIGHT, Chief Judge.

This is a motion to compel discovery under Rule 37 F.R.Civ.P. filed pursuant to 35 U.S.C. § 24 authorizing discovery in Patent Office interferences matters by resort to the Federal Courts and the utilization of the Federal Rules of Civil Procedure.

The interference is between the Kimberlin U. S. reissue Patent No. Re. 26,188, filed August 24, 1962 claiming a priority date of the original application filed February 5, 1957, and the Frilette application No. 763,433 filed September 26, 1968. The real parties in interest are, Mobil Oil Corporation (Mobil), the assignee of Frilette, and Esso Research and Engineering Company (Esso), the assignee of Kimberlin.

This is a two party interference in which Frilette has been declared the junior party and Kimberlin has been declared the senior party. Frilette seeks an order compelling Kimberlin to designate certain witnesses under F.R.C.P. 30(b)(6) to answer certain interrogatories under F.R.C.P. 33, to produce documents under F.R.C.P. 34, and to admit certain facts under F.R.C.P. 36. The interference is presently in the preparation for testimony stage prior to the commencement of the junior party's taking of testimony. See Patent Office Rule 251(a).

Prior to the initiation of the proceeding in this Court, Frilette filed a motion for discovery with the Board of Interferences under Patent Rule 287(c) seeking substantially the same discovery requested here. The Board of Interferences denied the motion on the grounds that the request was premature since the time had not elapsed for Kimberlin to make service of the documents and lists upon which it would rely as the factual basis for its case in chief. As additional basis for its refusal the Board noted, that as to matters ancillary to priority, Frilette had failed to file any motions raising these ancillary issues under Patent Rule 231 and that its request for discovery on these issues was too speculative, broad and indefinite to constitute an adequate basis for granting discovery.

Frilette argues that the Board of Interferences' denial of its discovery motion clearly indicates the ineffectiveness of Rule 287(c) as a mechanism to afford the type of broad discovery permitted by 35 U.S.C. § 24 and the Federal Rules of Civil Procedure. In re Natta, 388 F. 2d 215, 217 (3rd Cir. 1968). See also Babcock & Wilcox v. Foster Wheeler Corp., 432 F.2d 385 (3rd Cir. 1970); Babcock & Wilcox Co. v. Combustion Engineering, Inc., 314 F.Supp. 235 (D.Conn. 1968), aff. per curiam 430 F.2d 1177 (2nd Cir. 1968). Moreover, Frilette asserts that under § 24 it is not limited by the Patent Office rules of admissibility, In re Natta, supra, or rules governing the time and order of the presentation of testimony, Babcock & Wilcox v. Combustion Engineering, Inc., supra.

Kimberlin, in opposition takes the position that the introduction of a discovery procedure in the Patent Office eliminated much of the necessity for federal district courts to intervene in discovery, that, by Frilette's own admission, many of the discovery requests are based on mere conjecture, speculation and hope that it might find some evidence to support several potential defenses in the interference, that the ancillary matters sought to be examined into should have been raised by motion under Patent Office Rule 231 and finally, that certain of the matters to be pursued if the motion is granted e. g. the sufficiency of the reissue oath, are matters for ex parte consideration and cannot be raised in the interference.

Frilette has correctly characterized the previous cases ruling on the scope of 35 U.S.C. § 24 as holding that the statute was intended to provide broad discovery procedures through federal district courts. However, the cases relied on by Frilette were decided prior to two occurrences which render them distinguishable. First, the In re Natta, cases, supra, precede the 1970 amendments to the Federal Rules of Civil Procedure which eliminated the good cause requirement as a prerequisite to the grant of discovery under Rule 34 F.R.C.P. In fact, several of the cases granting broad discovery specifically cite the good cause requirement as a factor which will guarantee against permitting meritless discovery. See Babcock & Wilcox Co. v. Foster Wheeler Corp., supra, 432 F.2d at 388; Babcock & Wilcox Co. v. Combustion Engineering Inc., supra, 314 F.Supp. at 237; In re Natta, supra; International Business Machines Corp. v. Sperry Rand Corp., 44 F.R.D. 7 (D.Del.1967); Korman v. Shull, 184 F.Supp. 928 (W. D.Mich.1960). In one of the more frequently cited cases allowing broad discovery under 35 U.S.C. § 24, Judge Zampano states,

"This is not to say, however, that an automatic and indiscriminate inspection of the senior party's file is authorized. The requirements of good cause, relevance, reasonable designation of the documents, and the principles of privilege were designed to prevent the abuses (the senior party) suggests." Babcock & Wilcox Co. v. Combustion Engineering Inc., 314 F. Supp. supra at 237.

It does not appear that the amendments to the F.R.C.P. deleting the good cause requirement in many areas of discovery were undertaken after any specific analysis of their concomitant effect on 35 U.S.C. § 24 and discovery proceedings ancillary to patent interferences. Since the good cause requirement was apparently a factor in the federal courts' willingness to interpret § 24 broadly, this Court is unable to conclude that § 24 would have received a similar construction absent this safeguard. In such circumstances, it would not be unreasonable to continue to impose a good cause requirement under 35 U.S.C. § 24. Second, and more importantly, is the Patent Office's introduction of the discovery provisions of Rule 287. The absence of any discovery mechanism in the Patent Office has frequently been cited as a factor mandating a broad reading of 35 U.S.C. § 24 and necessitating the assumption of jurisdiction over interference discovery by the federal courts. See Babcock & Wilcox v. Foster Wheeler Corp., supra, 432 F.2d at 387; see also Campbell and Johnson v. Gilby, Hoberg and Phibbs, 146 U.S.P.Q. 723, 725 (P.O. Bd.Intfs. 1965). This may also have been the element which persuaded federal courts to refuse in any way to attempt to tailor the § 24 discovery procedures to the Patent Office's interference time schedule.

The recently adopted Patent Office discovery Rule affords each party preliminary access to his adversary's documentary and testimonial evidence, Rule 287(a)(1),¹ and creates a mechanism for further discovery of matters within the control of a party which the Board of Interferences deems to be relevant to the issue of priority, Rule 287 (c).² The standards enunciated in Rule 287(c) and Rule 243 appear to reflect the Patent Office's efforts to construct a discovery process which embodies the good cause requirement cited initially by the courts in the In re Natta cases. Subsequent to the issuance of this rule, at least one federal judge has indicated that some reshaping of the federal court's role under 35 U.S.C. § 24 might be appropriate. See Babcock & Wilcox Co. v. Foster Wheeler Corp., 173 U.S.P.Q. 480 (D.N.J.1972).³ While a federal court cannot abrogate its responsibility to assume jurisdiction under 35 U.S.C. § 24, it must not blind itself to the ancillary, supportive role, it is designed to fulfill in interference matters. Until the Patent Office has had a reasonable opportunity to implement its discovery procedures and has demonstrated the parameters within which they will be administered, the courts are in no position to evaluate the potential efficacy of the procedures and the possibility that the courts will be able to assume a secondary role in discovery. In light of these general considerations, the Court must scrutinize Frilette's particular discovery requests in light of the issues before the Patent Office.

The subject matter of this interference is a commercial process for "cracking" large hydrocarbon macromolecules of petroleum into smaller molecules of gasoline and other useful petroleum products.⁴ The process involves utilization of a crystalline alumino-silicate catalyst, "Zeolite" or "molecular sieve", which contains a network of highly uniform pores into which the petroleum macromolecules enter, are cracked, and through which the reaction products leave the crystalline structure. This particular process employs a catalyst with pores of between 6 and 15 Angstroms (A°) in diameter. The instant interference is one of several interferences between Esso and Mobil, the real parties in interest by reason of their ownership of or licenses for the several patent and patent applications involved, concerning various aspects of the catalytic conversion process for the reduction of petroleum macromolecules with a crystalline molecular seive zeolite type cracking device.⁵

Frilette's discovery requests are directed to several areas: 1. facts relating to the Kimberlin reissue oath and the patentee's compliance with the reissue statute; 2. matters relating to the meaning of the terms of the interference counts; 3. facts relating to the Kimberlin disclaimer of a portion...