Korman v. Shull

Decision Date21 March 1960
Docket NumberCiv. A. No. 3822.
Citation184 F. Supp. 928
PartiesKORMAN et al. v. SHULL et al. v. NOBILE. DJERASSI et al. v. KORMAN et al. v. SHULL et al. v. WILSON v. NOBILE.
CourtU.S. District Court — Western District of Michigan

Joseph K. Andonian, Eugene O. Retter, Willard L. Cheesman, Patent Law Dept., The Upjohn Company, Kalamazoo, Mich., and Charles M. Thomas, Washington, D. C., for Korman et al.

Morgan, Finnegan, Durham & Pine, Hobart N. Durham, and Joseph Hirschmann, New York City, Paulson, Bennett & Palmer and Richard H. Paulson, Kalamazoo, Mich., for Arthur Nobile and Schering Corp.

STARR, Chief Judge.

It appears that on February 9, 1960, in pursuance of 35 U.S.C.A. § 24, Arthur Nobile and his assignee, Schering Corporation, caused subpoenas to be issued by the clerk of this court, commanding John A. Hogg and Jerome Korman of The Upjohn Company, and H. B. Allen secretary of The Upjohn Company, to appear at Parlor A, Hotel Harris, Kalamazoo, Michigan, on February 15, 1960, to testify in behalf of said Arthur Nobile and Schering Corporation, assignee, and to bring with them certain books, papers, and documents listed and enumerated in the subpoenas.

It appears that on February 13th Joseph K. Andonian, attorney for Hogg, Korman, and H. B. Allen, secretary of The Upjohn Company, filed a motion to stay or set aside the date for the taking of their depositions under the subpoenas issued February 9th, pending a hearing on their motion filed February 13th to quash or, in the alternative, to modify the subpoenas. It further appears that on February 13th Joseph K. Andonian, attorney for Hogg, Korman, and Allen, also filed a motion to quash or, in the alternative, to modify the subpoenas issued February 9th for their appearance on February 15th, on the ground, among others, that the subpoenas were improperly obtained; and it further appears that on February 15th an order was entered by Judge W. Wallace Kent granting the motion to stay the taking of the depositions under the subpoenas issued February 9th, pending a hearing on the motion to quash or to modify the subpoenas.

It appears that in order to correct any possible errors in connection with the issuance of the subpoenas on February 9th, Nobile and Schering Corporation caused new subpoenas to be issued on February 23d requiring Hogg and Korman of The Upjohn Company and H. B. Allen, secretary of The Upjohn Company, to appear at Parlor A, Hotel Harris, Kalamazoo, Michigan, on February 25th to testify in behalf of Nobile and his assignee, Schering Corporation, and to bring with them the books, papers, and documents listed and enumerated in the subpoenas. It further appears that on February 25th Joseph K. Andonian, attorney for Hogg, Korman, and Allen, filed a motion that the order entered by Judge Kent on February 15th staying the taking of their depositions on February 15th be extended and continued to include and stay the taking of their depositions on February 25th, pending a hearing on their motion filed February 13th to quash or, in the alternative, to modify the subpoenas, and also that the proceedings relative to the subpoenas issued February 9th be consolidated with the proceedings relative to the subpoenas issued February 23d.

It appears that on March 1st Andonian, attorney for Hogg, Korman, and Allen, filed a motion dated February 29th that the hearing on their motion to quash or, in the alternative, to modify the subpoenas be postponed and delayed until the United States Patent Office rules upon and disposes of a motion filed by Nobile in the interference proceedings in that office to extend the time for the taking of testimony. This motion by Andonian is based on the ground that if the Patent Office refuses to extend the time for Nobile to take testimony in the interference proceedings, all proceedings in this court will then be moot.

On March 7th Nobile and his assignee, Schering Corporation, filed a motion as follows:

1. That the ex parte order entered by Judge W. Wallace Kent on February 15th staying the taking of depositions in this matter be vacated;

2. That the motion dated February 24th and filed February 25th by Andonian, attorney for Hogg, Korman, and Allen, for a further stay of the taking of the depositions on February 25th be denied except as to the request for consolidation of issues;

3. That the motion dated February 24th and filed by Attorney Andonian on February 25th for Hogg, Korman, and Allen, to consolidate the issues relative to the subpoenas issued February 9th and relative to the subpoenas issued February 23d, be granted;

4. That the motion filed by Attorney Andonian for Hogg, Korman, and Allen dated February 29th and filed March 1st for a stay of proceedings pending the ruling by the United States Patent Office on a motion by Nobile to extend the time for the taking of testimony be denied; and

5. That in the event the United States Patent Office grants an extension of time to Nobile and Schering Corporation to take testimony in the interference proceedings, and in the event the above-mentioned motions by Nobile and Schering Corporation are granted, Nobile and Schering Corporation then move that this court enter an order requiring Hogg, Korman, and Allen to appear at the office of The Upjohn Company in Kalamazoo, Michigan, on Tuesday, March 22, 1960, at 9:00 o'clock in the forenoon and produce and submit for examination the books, papers, and documents listed and enumerated in the subpoenas issued February 23d.

As Nobile and Schering Corporation have consented to the granting of the motion by Attorney Andonian dated February 24th and filed February 25th for the consolidation of the issues relative to the subpoenas issued February 9th and February 23d, the motion to consolidate will be granted, and in this opinion the court will consider the issues as to both groups of subpoenas together.

The court has been informed that the United States Patent Office has granted Nobile and Schering Corporation an extension of time within which to take testimony in the pending interference proceedings in the Patent Office, and in view of that fact the court will now turn to the primary questions before it: (1) Are Nobile and Schering Corporation, assignee, legally entitled under the subpoenas issued February 23d to take the testimony of Hogg, Korman, and Allen; and (2) is The Upjohn Company, under the subpoenas duces tecum issued February 23d, legally required to produce the books, papers, and documents listed and enumerated in the subpoenas for examination by Nobile and Schering Corporation?

Title 35 U.S.C.A. § 24, provides in part:

"The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent 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 before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office."

Under § 24, which I have just quoted, the applicable rules of civil procedure must be considered in determining the questions before the court relative to the attendance of witnesses and the production of documents. Rules 26, 30, 34, and 45, Fed.Rules Civ.Proc. 28 U.S.C.A. relating to the attendance of witnesses and the production of documents are applicable in the present proceeding. Rule 34 provides in part:

"Upon motion of any party showing good cause therefor and upon notice to all other parties, and subject to the provisions of Rule 30(b), the court in which an action is pending may (1) order any party to produce and permit the inspection and copying or photographing, by or on behalf of the moving party, of any designated documents, papers, books, accounts, letters, photographs, objects, or tangible things, not privileged, which constitute or contain evidence relating to any of the matters within the scope of the examination permitted by Rule 26 (b) and which are in his possession, custody, or control."

Rule 26(b) provides in part:

"Unless otherwise ordered by the court as provided by Rule 30(b) or (d), the deponent may be examined regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action. * * * It is not ground for objection that the testimony will be inadmissible at the trial if the testimony sought appears reasonably calculated to lead to the discovery of admissible evidence."

Rule 45(b) provides:

"A subpoena may also command the person to whom it is directed to produce the books, papers, documents, or tangible things designated therein; but the court, upon motion made promptly and in any event at or before the time specified in the subpoena for compliance therewith, may (1) quash or modify the subpoena if it is unreasonable and oppressive or (2) condition denial of the motion upon the advancement by the person in whose behalf the subpoena is issued of the reasonable cost of producing the books, papers, documents, or tangible things."

Rule 45(d) provides in part:

"The subpoena may command the person to whom it is directed to produce designated books, papers, documents, or tangible things which constitute or contain evidence relating to any of the matters within the scope of the examination permitted by Rule 26(b), but in that event the subpoena will be subject to the provisions of subdivision (b) of Rule 30 and subdivision (b) of this Rule 45."

Rule 30(b) provides in part:

"After notice is served for taking a deposition by oral examination, upon motion seasonably made by any party or by the person to be examined and upon notice and for good cause shown, the court in which the action is pending may make an order that the deposition
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11 cases
  • Frilette v. Kimberlin
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • 27 Enero 1975
    ...earlier cases of Gladrow v. Weisz, 354 F.2d 464 (5th Cir. 1965); 4 Natta v. Zletz, 379 F.2d 615 (7th Cir. 1967), 5 and Korman v. Shull, 184 F.Supp. 928 (W.D.Mich.1960), 6 all involved instances where testimony was being prepared and subpoenas either had or could have been issued to compel p......
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    ...their claims. F.E.L. Publications v. Catholic Bishop of Chicago, 1989 WL 100006 *3 (N.D.Ill. Aug.22, 1989); Korman v. Shull, 184 F.Supp. 928, 936 (W.D.Mich.1960). 15. The plaintiffs have not filed a brief in response to the 16. Kumho Tire Co. Ltd., while making the Daubert analysis applicab......
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