April 2013
Section 24 Subpoenas Are Not Available in Inter Partes Reexamination Proceedings
| Judges: Rader, Dyk (author), Reyna |
| [Appealed from E.D. Va., Judge Hilton] |
In Abbott Laboratories v. Cordis Corp., No. 12-1244 (Fed. Cir. Mar. 20, 2013), the Federal Circuit affirmed the district court’s decision granting Abbott Laboratories’ (“Abbott”) motion to quash two subpoenas duces tecum issued under 35 U.S.C. § 24 in an inter partes reexamination procedure.
In September 2009, Cordis Corporation (“Cordis”) sued Abbott and another company, alleging infringement of U.S. Patent Nos. 6,746,773 (“the ’773 patent”) and 7,591,844 (“the ’844 patent”) related to drug eluting stents. In 2010, the defendants filed requests for inter partes reexamination of the two patents, and the PTO granted the requests. During the reexamination proceedings, the parties submitted expert declarations related to obviousness, including the issue of copying as a secondary consideration of nonobviousness.
In October 2011, Cordis sought subpoenas duces tecum under § 24 from the district court. The district court issued the subpoenas, ordering Abbott to produce documents that Cordis alleged were related to copying and other secondary considerations of nonobviousness. The subpoenas were issued specifically for use in the pending reexaminations of the ’773 and ’844 patents. Cordis filed petitions with the Director of the PTO, asking him to clarify the PTO’s rules related to service of subpoenas under § 24 in inter partes reexaminations, and to authorize such subpoenas if authorization was required. The PTO denied Cordis’s petitions, and Abbott moved to quash the subpoenas. The district court granted Abbott’s motion to quash, concluding that the PTO’s decision was persuasive. Cordis appealed the district court’s order quashing the subpoenas.
The Federal Circuit addressed the proper interpretation of § 24 as a question of first impression and construed the term “contested case” as used in § 24 as referring to a proceeding in which the PTO has provided for the taking of depositions for use in that proceeding. The Court based its construction of § 24 on its plain text and relationship with adjacent provisions of title 35, its legislative history, and the interpretation given to it by other courts.
“We hold that 35 U.S.C. § 24 only empowers a district court to issue subpoenas for use in a proceeding before the PTO if the PTO’s regulations authorize parties to take depositions for use in that proceeding. We therefore hold that section 24 subpoenas are not available in inter partes reexamination proceedings.” Slip op. at 18.
Based on the plain meaning of the statute, the Court concluded that “[a] ‘contested case,’ in this context, must . . . be a proceeding for which ‘testimony [may] be taken for use’ before the PTO.” Slip op. at 8 (second alteration in original) (quoting 35 U.S.C. § 24). Looking to the adjacent provisions, the Court concluded that 35 U.S.C. § 23 showed that Congress entrusted the PTO with the power to establish rules for taking depositions. Turning to the legislative history, the Court found that §§ 23 and 24 were enacted to allow the PTO to compel depositions in interferences and patent term extension proceedings. The Court concluded that “section 24 was intended to help the PTO secure deposition testimony it needed by compulsory process, and not to allow parties to secure evidence that the PTO did not consider necessary.” Id. at 13. Finally, the Court reasoned that interpretations by regional courts of appeal prior to creation of the Federal Circuit confirmed the existence of § 24 as the “handmaiden” of § 23. Id. The Court “conclude[d] that section 24 only empowers district courts to issue subpoenas in proceedings for which the PTO has authorized parties to present evidence by means of depositions.” Id. at 14.
The Federal Circuit noted that the Leahy-Smith America Invents Act (“AIA”) replaced inter partes reexamination with a new inter partes review proceeding, and that “[t]he purpose of this reform was to ‘convert[] inter partes reexamination from an examinational to an adjudicative proceeding.’” Id. at 15 (alteration in original) (citation omitted). Congress specifically provided for depositions of affiants in the new proceedings, and the PTO’s new rules authorize parties to seek § 24 subpoenas in those proceedings. The Court concluded that Congress’s actions in creating the inter partes review proceedings demonstrates that depositions and § 24 subpoenas go hand in hand.
The Federal Circuit next considered whether the PTO’s rules allow parties to take depositions in inter partes reexaminations. The Court found that because the PTO regulations only provide for depositions in interferences, derivation proceedings, and the new AIA proceedings, depositions are not available in inter partes reexaminations. The Court thus concluded that § 24 subpoenas are also not available in such proceedings.
The Court rejected Cordis’s arguments about due process, stating that, “[g]iven that the basic rights of notice and an opportunity to be heard have been afforded, determining what additional procedures are guaranteed by due process requires balancing the various interests at stake.” Id. at 18 (citing Mathews v. Eldridge, 424 U.S. 319, 334-35 (1976)). “We do not believe that, under the facts of this case, excluding compulsory production of testimony in inter partes reexamination proceedings raises a ‘serious constitutional problem[].’” Id. (alteration in original) (quoting Edward J. DeBartolo Corp. v. Fla. Gulf Coast Bldg. & Const. Trades Council, 485 U.S. 568, 575 (1988)).
The Court concluded that “35 U.S.C. § 24 only empowers a district court to issue subpoenas for use in a proceeding before the PTO if the PTO’s regulations authorize parties to take depositions for use in that proceeding,” and therefore “that section 24 subpoenas are not available in inter partes reexamination proceedings.” Id.
