Natta v. Zletz

• Decision Date: 23 May 1967
• Docket Number: No. 16002,16003.,16002
• Citation: 379 F.2d 615
• Parties: Giulio NATTA et al., Appellants (Appellees in No. 16003), v. Alex ZLETZ and Standard Oil Company of Indiana, Appellees (Appellants in No. 16003).
• Court: U.S. Court of Appeals — Seventh Circuit

379 F.2d 615 (1967)

Giulio NATTA et al., Appellants (Appellees in No. 16003), v. Alex ZLETZ and Standard Oil Company of Indiana, Appellees (Appellants in No. 16003).

Nos. 16002, 16003.

United States Court of Appeals Seventh Circuit.

May 23, 1967.

Max Wildman, Arthur G. Gilkes, Chicago, Ill., John T. Kelton, New York City, Elsie C. Spears, of Kirkland, Ellis, Hodson, Chaffetz & Masters, Chicago, Ill., for appellees Alex Zletz and Standard Oil Co. (Indiana); Watson, Leavenworth, Kelton & Taggart, William H. Vogt III, Thomas V. Heyman, New York City, of counsel, for Zletz and Standard Oil Co.

Mary Helen Sears, Washington, D. C., Kenneth J. Burns, Jr., Chicago, Ill., Raymond, Mayer, Jenner & Block, Chicago, Ill., Irons, Birch, Swindler & McKie, Washington, D. C., for appellants Natta and others; Edward S. Irons, Washington, D. C., Harvey W. Mortimer, Darby & Darby, New York City, Cox, Langford & Brown, Washington, D. C., of counsel.

Before SCHNACKENBERG, CASTLE and CUMMINGS, Circuit Judges.

CASTLE, Circuit Judge.

Giulio Natta, Piero Pino and Giorgio Mazzanti, senior party in a patent interference proceeding (Interference 89,634) pending before the United States Patent Office moved in the District Court pursuant to 35 U.S.C.A. § 23 and § 24 for an order under Rule 34 of the Federal Rules of Civil Procedure (28 U.S.C.A.) to obtain the production of documents from the files of Standard Oil Company of Indiana, assignee of junior party, Alex Zletz. The documents are sought for use in the interference proceeding in the examination, on rebuttal testimony, of present and former employees of Standard Oil including Zletz, the named inventor in the Standard Oil application for patent involved in the interference proceeding. Appellants' motion was filed in the District Court on June 30, 1966. At that time the trial testimony period allocated to appellants by the Patent Office under its interference proceeding rules was scheduled to expire on July 29, 1966. The proceedings in the District Court on the motion culminated in an order entered November 16, 1966, denying the motion, and the appellants prosecuted an appeal (No. 16002) to this Court.

The main contested issues precipitated by the respective contentions advanced on appellants' appeal are (1) whether the order denying appellants' motion for document production is a final appealable order such as is requisite to this Court's exercise of appellate jurisdiction, and (2) whether a condition and limitation imposed by the Patent Office on the right of appellants to adduce additional testimony either deprived the District Court of jurisdiction or justified abstention by the District Court from the exercise of its jurisdiction in the premises.

The record discloses that prior to the July 29, 1966, expiration date the appellants moved in the Patent Office for an extension of their testimony time to a period to terminate thirty days after the completion of the District Court proceeding and two companion ancillary proceedings in other jurisdictions, and of all document production resulting therefrom. The Patent Office denied this motion without prejudice, however, to the right of the appellants to apply for and be afforded "special testimony time" on a showing of both successful and diligent prosecution of all or any of the ancillary proceedings for document production.

In the initial stage of the District Court proceeding the court entertained doubt as to the propriety of Rule 34 relief where the document production sought was not for use in connection with a witness then on the witness stand.¹ It is clear from the record, however, that the court's ultimate ruling on the motion involved neither this consideration nor any question going to the merits of appellants' request, but was predicated solely on jurisdictional considerations.

In this connection the record reflects that on October 4, 1966, the court recognized that it was its failure to rule promptly on the motion within appellants' allocated testimony period, which expired July 29, 1966, which was then causing it concern, and the court ruled that it would delay a ruling in the matter pending a "determination by the Patent Office that there has been in fact an extension of time in which to further discover". The court requested appellants to bring its remarks to the attention of the Patent Office and obtain a clarification of the Patent Office's July 22, 1966, ruling denying appellants a specific and unconditional further testimony period. In response, the Patent Office on October 13, 1966, acting through its Patent Interference Examiner, entered in its records a declaration that its order of July 22, 1966:

"* * * was issued in response to a motion by Natta et al. seeking an extension of time previously set for the taking of testimony on behalf of Natta et al., which time as of July 22, 1966, had not as yet expired. The motion was denied in view of the past history of the interference and the indefiniteness of the period requested. However, since, as noted, the Natta et al. testimony period had not yet on July 22, 1966, expired, and since court proceedings in furtherance of the taking of testimony on their behalf had allegedly been initiated prior to July 22, 1966, it was intended not to foreclose the taking of only such testimony which may result from court actions initiated prior to the expiration (July 29, 1966) of the Natta et al. testimony period, if pursued with diligence.

Upon a determination by the Court that the proceedings presently before it was actually initiated prior to July 29, 1966, the date of expiration of the Natta et al. testimony period, and * * * the Court finds that the production of documents and/or witnesses is justified, the Patent Interference Examiner upon notification of such finding will set a special testimony period in accordance with the conditions stated in the order of July 22, 1966."

Despite this clarification and reaffirmation by the Patent Office that it intended to allow and fix a specific testimony period limited to the sole purpose of permitting appellants to take the testimony "only of those witnesses who are ordered to testify as a result of the specific Court proceedings" then pending, provided the appellants diligently pursued their request for document production etc., and those requests bore fruit, the District Court denied appellants' motion. In so doing the court stated:

"In the instant case there is considerable

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