Sheehan v. Doyle, No. 75--1218

CourtUnited States Courts of Appeals. United States Court of Appeals (1st Circuit)
Writing for the CourtBefore COFFIN, Chief Judge, McENTEE and CAMPBELL; PER CURIAM
Citation529 F.2d 38
PartiesJohn C. SHEEHAN, Plaintiff-Appellee, v. DOYLE et al., Defendants-Appellants.
Docket NumberNo. 75--1218
Decision Date30 January 1976

Page 38

529 F.2d 38
188 U.S.P.Q. 545
John C. SHEEHAN, Plaintiff-Appellee,
v.
DOYLE et al., Defendants-Appellants.
No. 75--1218.
United States Court of Appeals,
First Circuit.
Argued Jan. 5, 1976.
Decided Jan. 30, 1976.

Page 39

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...

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7 practice notes
  • 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
    ...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.), cert. denied, 429 U.S. 879 (1976), rehearing denied, 429 U.S. 987 (1976), while rejecting the policy annou......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...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.), cert. denied, 429 U.S. 879 (1976), rehearing denied, 429 U.S. 987 (1976), while rejecting the policy annou......
  • 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
    ...authorized 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 ......
  • Worksite Inspection of Quality Products, Inc., In re, No. 78-1232
    • United States
    • U.S. Court of Appeals — First Circuit
    • February 16, 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, ......
  • Request a trial to view additional results
5 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
    ...authorized 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) (e......
  • Worksite Inspection of Quality Products, Inc., In re, No. 78-1232
    • United States
    • U.S. Court of Appeals — First Circuit
    • February 16, 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, ......
  • Brown v. Braddick, Nos. 79-1026
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • May 7, 1979
    ...supra ); 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 Frile......
  • Peer Bearing Co. v. Roller Bearing Co. of Am., MISCELLANIOUS CASE NO. 12-216
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Eastern District of Pennsylvania)
    • December 19, 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......
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