Discovery Barred in Patent Re-Exams, Fed. Circ. Rules

On Wednesday, March 20, the Federal Circuit ruled that “discovery is not allowed in inter partes patent reexaminations.” The finding denies a bid by Cordis Corp. to subpoena Abbott Laboratories for discovery in an inter partes proceeding before the U.S. Patent and Trademark Office (USPTO). The decision noted that the Patent Act allows district courts to issue subpoenas in “any contested case” at the USPTO. The Federal Circuit found that reexaminations are not “contested.” Finnegan represented Abbott in this matter.