Sheehan v. Doyle, No. 74-1318

CourtUnited States Courts of Appeals. United States Court of Appeals (1st Circuit)
Writing for the CourtBefore COFFIN, Chief Judge, McENTEE and CAMPBELL; LEVIN H. CAMPBELL
Citation513 F.2d 895
Docket NumberNo. 74-1318
Decision Date31 March 1975
PartiesJohn C. SHEEHAN, Plaintiff-Appellee, v. Frank P. DOYLE et al., Defendants-Appellants.

Page 895

513 F.2d 895
185 U.S.P.Q. 489
John C. SHEEHAN, Plaintiff-Appellee,
v.
Frank P. DOYLE et al., Defendants-Appellants.
No. 74-1318.
United States Court of Appeals,
First Circuit.
Argued Dec. 2, 1974.
Decided March 31, 1975.

Page 896

Albert L. Jacobs, Jr., New York City, with whom Jacobs & Jacobs, P. C., New York City, Owen F. Clarke, Jr., and Sullivan & Worcester, Boston, Mass., were on brief for defendants-appellants.

Thomas E. Spath, with whom N. Dale Sayre, McLean, Boustead & Sayre, New York City, Robert J. Horn, Jr., Kenway & Jenney, Boston, Mass., were on brief for plaintiff-appellee.

Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.

LEVIN H. CAMPBELL, Circuit Judge.

This appeal concerns the authority of the District Court for the District of Massachusetts to order discovery in aid of a patent interference proceeding being conducted before the Board of Patent Interferences in Arlington, Virginia.

Doyle (a name used for three nonresident aliens) is engaged in an interference in the United States Patent Office against Sheehan, a Massachusetts resident. See 35 U.S.C. § 135. At issue is whether Doyle or Sheehan is the first inventor of processes for the production of penicillin. Doyle has applied for a United States patent, Sheehan already having been granted one covering the same subject matter.

One might suppose that the scope of discovery for use in an interference 1 would be determined by the Patent Office or at least coordinated with the administrative proceeding within its jurisdiction; and Congress has in fact conferred statutory authority upon the Commissioner of Patents to "establish rules for taking affidavits and depositions required in cases in the Patent Office", 35 U.S.C. § 23, and the Commissioner has adopted certain rules, see note 1 supra. But in section 24, Congress has also conferred certain powers upon district courts. Historically section 24 developed to provide for the issuance of subpoenas to compel testimony and evidence required in Patent Office interferences; but a sentence in section 24 inserted by Congress in 1952 has been construed by a number of courts also to allow parties to an interference to obtain at any time broad-based discovery in district

Page 897

courts in separate, self-contained proceedings. 2 See infra. Such discovery goes on outside the ambit of the Patent Office proceeding and beyond the scope permitted without special approval under its rules.

Citing section 24 and bypassing the Patent Office's procedures, Doyle brought an independent action in the District Court for the District of Massachusetts to obtain discovery from Sheehan under the Federal Rules of Civil Procedure. The court issued a subpoena duces tecum against Sheehan and, after hearing Sheehan's objections, refused to quash the subpoena and directed Sheehan to produce the requested records and appear to be deposed. In addition to the discovery of Sheehan, Doyle's counsel was able to obtain from the court subpoenas duces tecum against two organizations, also located in Massachusetts, having an interest in the Sheehan patent. Doyle's goal in these ancillary proceedings has been to discover evidence that an abandoned Sheehan patent application in 1957, while disclosing some processes, did not disclose enough to enable Sheehan to claim first invention to the processes for which Sheehan obtained the disputed patent in 1959 and as to which Doyle has a claim to invention dating from late 1957.

While Doyle's discovery was in progress, Sheehan, also invoking section 24, filed a request under Rule 34, Fed.R.Civ.P., 3 for the production of documents from Doyle and his assignee, Beecham Research Laboratories, Inc. (BRL), a British corporation and the real party in interest. Sheehan sought documents of tests and evaluations, made by BRL and to be introduced in interference testimony, concerning the sufficiency of the Sheehan disclosure in its abandoned 1957 application. After considering arguments for and against compelling discovery from the nonresident aliens, the district court ordered Doyle and BRL to produce those documents sought that were not privileged. From this order Doyle now appeals. Doyle objects to the order on grounds of lack of personal jurisdiction and proper venue, as he is a nonresident alien with no ties to Massachusetts. We do not reach these arguments

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because we hold that section 24 does not confer jurisdiction upon the district court, acting on its own, to grant Rule 34 discovery directly, whether against a nonresident alien or a resident citizen.

A threshold question is the appealability of the district court's discovery order. A discovery order is not usually "final" and hence not immediately appealable as the litigation in conjunction with which the discovery is sought is still pending in the district court. 28 U.S.C. § 1291. Discovery here, however, is ancillary to the interference in Arlington, Virginia, at the Patent Office, and nothing else was pending at the time in the Massachusetts court. The instant order, therefore, concluded at least for the moment the business...

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22 practice notes
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...officer would not be admitted or considered in the disciplinary proceeding. The proposed rule would adopt the policy of Sheehan v. Doyle, 513 F.2d 895, 898, 185 USPQ 489, 492 (1st Cir.), cert. denied, 423 U.S. 874 (1975), and Sheehan v. Doyle, 529 F.2d 38, 40, 188 USPQ 545, 546 (1st Cir.), ......
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...officer would not be admitted or considered in the disciplinary proceeding. The proposed rule would adopt the policy of Sheehan v. Doyle, 513 F.2d 895, 898, 185 USPQ 489, 492 (1st Cir.), cert. denied, 423 U.S. 874 (1975), and Sheehan v. Doyle, 529 F.2d 38, 40, 188 USPQ 545, 546 (1st Cir.), ......
  • Rosenruist-Gestao E Servicos v. Virgin Enterprises, No. 06-1588.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • December 27, 2007
    ...See Brown v. Braddick, 595 F.2d 961, 966 (5th Cir.1979); Sheehan v. Doyle, 529 F.2d 38, 39 (1st Cir.1976) ("Doyle II"); Sheehan v. Doyle, 513 F.2d 895 (1st Cir.1975) ("Doyle I"); Frilette v. Kimberlin, 508 F.2d 205 (3d Cir.1974) (en banc). But see Natta v. Hogan, 392 F.2d 686, 690 (10th Cir......
  • Abbott Labs. v. Cordis Corp., No. 2012–1244.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 20, 2013
    ...[PTO-]authorized discovery, [or] to obtain testimony and evidence for use in [an interference] proceeding in progress.” Sheehan v. Doyle, 513 F.2d 895, 896, 899 (1st Cir.1975). 9 The court concluded that “ section 24 is simply a provision giving teeth, through the courts' subpoena powers, t......
  • Request a trial to view additional results
20 cases
  • Rosenruist-Gestao E Servicos v. Virgin Enterprises, No. 06-1588.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • December 27, 2007
    ...See Brown v. Braddick, 595 F.2d 961, 966 (5th Cir.1979); Sheehan v. Doyle, 529 F.2d 38, 39 (1st Cir.1976) ("Doyle II"); Sheehan v. Doyle, 513 F.2d 895 (1st Cir.1975) ("Doyle I"); Frilette v. Kimberlin, 508 F.2d 205 (3d Cir.1974) (en banc). But see Natta v. Hogan, 392 F.2d 686, 690 (10th Cir......
  • Abbott Labs. v. Cordis Corp., No. 2012–1244.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 20, 2013
    ...[PTO-]authorized discovery, [or] to obtain testimony and evidence for use in [an interference] proceeding in progress.” Sheehan v. Doyle, 513 F.2d 895, 896, 899 (1st Cir.1975). 9 The court concluded that “ section 24 is simply a provision giving teeth, through the courts' subpoena powers, t......
  • U.S. v. Sciarra, Nos. 88-5119
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • July 25, 1988
    ...9 J. Moore, Moore's Federal Practice, p 110.13 at 155-157 (2d ed. 1987). We find additional support for our position in Sheehan v. Doyle, 513 F.2d 895 (1st Cir.), cert. denied, 423 U.S. 874, 96 S.Ct. Page 629 144, 46 L.Ed.2d 106 (1975), a case construing the authority of a district court to......
  • Worksite Inspection of Quality Products, Inc., In re, No. 78-1232
    • United States
    • U.S. Court of Appeals — First Circuit
    • February 16, 1979
    ...appeals. For much the same technical reasons that Chief Judge Magruder set out in Centracchio, 198 F.2d at 385; See also Sheehan v. Doyle, 513 F.2d 895, 898 (1st Cir.), Cert. denied,423 U.S. 874, 96 S.Ct. 144, 46 L.Ed.2d 106 (1975), we believe that the ruling of the court below was, in thes......
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