MONTECATINI EDISON S. p. A. v. EI du Pont de Nemours & Co., 18276.

• Decision Date: 10 November 1970
• Docket Number: No. 18276.,18276.
• Citation: 434 F.2d 70
• Parties: MONTECATINI EDISON S. p. A., Appellant, v. E. I. du PONT de NEMOURS & CO.
• Court: U.S. Court of Appeals — Third Circuit

434 F.2d 70 (1970)

MONTECATINI EDISON S. p. A., Appellant, v. E. I. du PONT de NEMOURS & CO.

No. 18276.

United States Court of Appeals, Third Circuit.

Argued February 17, 1970.

Decided November 10, 1970.

Mary Helen Sears, Irons, Stockman, Sears & Santorelli, Washington, D. C., Edward S. Irons, Washington, D. C., on the brief, for appellant.

David A. Drexler, Morris, Nichols, Arsht & Tunnell, Wilmington, Del., James M. Tunnell, Jr., Wilmington, Del., Louis F. Reed, Fish & Neave, New York City, Roger A. Hines, Legal Department, E. I. duPont de Nemours & Co., Wilmington, Del., on the brief, for appellee.

Before KALODNER and VAN DUSEN,^* Circuit Judges, and FULLAM, District Judge.

OPINION OF THE COURT

FULLAM, District Judge.

Pursuant to 35 U.S.C. § 24, the appellee, E. I. du Pont de Nemours, Inc. (hereinafter "du Pont"), invoking Fed. R.Civ.P. 34, obtained an order of the court below directing the appellant, Montecatini Edison S.p.A. (hereinafter "Montecatini"), to produce certain documents for use in connection with a patent interference proceeding. The motion covered some 59 categories of documents, but only eight categories are involved in this appeal from the production order.

The appellant, Montecatini, had itself previously obtained similar discovery in various other ancillary proceedings. See Natta v. Zletz, 379 F.2d 615 (7th Cir. 1967); Hogan v. Zletz (Baxter v. Natta), 43 F.R.D. 308 (N.D.Okl.1967) aff'd 392 F.2d 686 (10th Cir. 1968); In re Natta, 264 F.Supp. 734 (D.Del.1967) aff'd 388 F.2d 215 (3rd Cir. 1968).

The interference in question was declared by the Patent Office in 1958 between applications filed by Montecatini, du Pont, and several other parties, covering "normally solid polypropylene." In interference proceedings, the party whose patent application bears the earliest filing date is designated as the senior party. Testimony is presented within time periods set by the Patent Office, the junior parties proceeding first, followed by the senior party and the junior parties' rebuttal, if any. See Patent Office Rule 251, 37 CFR 1.251. The present litigation is ancillary to interference No. 89,634, in which Montecatini is the senior party. du Pont rested its case in chief on March 11, 1966. When the discovery motion here involved was filed, approximately two years later, Montecatini had completed most of its testimony in chief. However, the Patent Office had ruled that if the discovery Montecatini was pursuing in the courts referred to above, proved to be successful, Montecatini would be afforded additional time in which to introduce evidence derived from that discovery.

In essence, appellant contends that the District Court should not have granted du Pont's motion for production of documents because such documents were not relevant to any issue still open in the interference proceedings, since du Pont's testimony period had expired, and the documents were irrelevant to any issue which might be the subject of rebuttal testimony.

The court below entered an order on April 16, 1969, granting the motion for production, on the basis of findings that good cause for production had been shown,¹ and that the documents were relevant to issues pending before the Patent Office, specifically, the presumptive patent date accorded to Montecatini. A further objection by Montecatini, that the documents were privileged, was referred to a master. Montecatini sought to have the issues of good cause and relevance severed from the privilege issue, so that an immediate appeal could be taken. The District Court denied the requested severance, but did grant a stay of the production order until the privilege issues were resolved, on October 17, 1969. Thereafter, both the District Court and this Court denied Montecatini's motions for further stay of the order pending appeal.

Appellant's arguments on the issues of good cause and relevance are closely related, and are based on the proposition that du Pont no longer has available in the Patent Office proceeding any opportunity to utilize such information as the documents might provide. The argument runs as follows: du Pont's only assertion that the documents are relevant is that they bear upon the issue of "inventorship discrepancy" which might result in vacating Montecatini's senior party status; however, evidence on this issue can be presented only in the junior parties' case in chief, and du Pont did not raise this issue during its presentation in chief; therefore, Montecatini does not intend to introduce any evidence on this issue in its case in chief; therefore, documents relating to this issue would not be useful either for cross-examination or rebuttal purposes; and finally, therefore, du Pont has failed to establish either the relevancy of the documents or good cause for their production.

Appellant's argument is a forceful one, and it may well be that a decision in its favor in the court below could have been permitted to stand on appeal. But appellant's assertions rest upon a somewhat narrow view of the issue of...