Sheehan v. Doyle, 75--1218

Decision Date30 January 1976
Docket NumberNo. 75--1218,75--1218
CourtU.S. Court of Appeals — First Circuit
PartiesJohn C. SHEEHAN, Plaintiff-Appellee, v. DOYLE et al., Defendants-Appellants.

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

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

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

PER CURIAM.

In this appeal, Doyle questions the wisdom of our decision in Sheehan v. Doyle, 513 F.2d 895 (1st Cir. 1975). In that case, Sheehan had sought documentary discovery from Doyle, and the latter had defended on grounds that Doyle, a nonresident alien, was beyond the jurisdiction and venue of the district court. We sustained Doyle, but on the ground that 35 U.S.C. § 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.' 513 F.2d at 898. In this, we relied heavily on the en banc decision of the third circuit in Frilette v. Kimberlin, 508 F.2d 205 (1975). In the present proceeding, it is Doyle who seeks discovery; and, after being peremptorily turned down by the district court on the basis of our decision in Sheehan v. Doyle, he brings this appeal.

We first dispose of Doyle's argument that as the discovery he seeks is by a subpoena duces tecum, it is not precluded by our earlier decision. The thrust of that decision was that 35 U.S.C. § 24 provided for judicial subpoenas to be used in aid of contested Patent Office cases (including for purposes of broad-based Federal Rules discovery) but only to the extent permitted by the Commissioner of Patents. What we rejected, and this would apply as much in the present case as in the earlier one, was the use of the federal district courts 'as alternative forums of first resort rather than as forums acting strictly in aid of the primary proceeding.' 513 F.2d at 899. Thus the district court correctly interpreted our decision as ruling out administratively unauthorized * discovery of this nature.

Here, if discovery proceeds, it will be more of the free-wheeling discovery which the third circuit and this circuit have determined Congress did not mean to authorize. Indeed, the very nature of the discovery here sought points up our earlier objections. Doyle seeks to probe whether Sheehan was the actual inventor, and Sheehan argues that that issue is entirely irrelevant to a patent office interference. Since the discovery proceeding is totally separate from the interference, and since no one from the Patent Office is a party or has purported to outline the scope of discovery, the district judge would have to rule on this and similar contentions with little to guide him but the parties' conflicting ideas of what might or might not be deemed relevant by the Board of Patent Interferences. Plainly the issue of what is relevant to its own proceeding can best be determined, at least initially, by the administrative agency in question. For over 400 district judges scattered throughout the nation to attempt...

To continue reading

Request your trial
5 cases
  • Rosenruist-Gestao E Servicos v. Virgin Enterprises
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • 27 Diciembre 2007
    ...the parties to obtain the materials in question. 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). Bu......
  • Brown v. Braddick
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • 7 Mayo 1979
    ...); Sheehan v. Doyle, 513 F.2d 895 (CA1); Cert. denied, 423 U.S. 874, 96 S.Ct. 144, 46 L.Ed.2d 106 (1975), After further proceedings, 529 F.2d 38 (CA1), Cert. denied, 429 U.S. 870, 97 S.Ct. 182, 50 L.Ed.2d 150 (1976). There is no controlling Fifth Circuit precedent. 9 We find the Frilette re......
  • Worksite Inspection of Quality Products, Inc., In re
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • 16 Febrero 1979
    ...encourages delay and wastes judicial and governmental resources. Centracchio v. Garrity, 198 F.2d at 387-89; Cf. Sheehan v. Doyle, 529 F.2d 38 (1st Cir.), Cert. denied, 429 U.S. 870, 97 S.Ct. 182, 50 L.Ed.2d 150 (1976); Sheehan v. Doyle, 513 F.2d 895 (1st Cir.), Cert. denied, 423 U.S. 874, ......
  • Peer Bearing Co. v. Roller Bearing Co. of Am.
    • United States
    • U.S. District Court — Eastern District of Pennsylvania
    • 19 Diciembre 2012
    ...LDA v. Virgin Enters. Ltd., 511 F.3d 437, 443 (4th Cir. 2007); Brown v. Braddick, 595 F.2d 961, 966 (5th Cir. 1979); Sheehan v. Doyle, 529 F.2d 38, 39 (1st Cir. 1976) (per curium); Sheehan v. Doyle, 513 F.2d 895, 898 (1st Cir. 1975) ("section 24 is simply a provision giving teeth, through t......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT