Although somewhat of a moot point going forward in view of the new statutory provisions for inter partes review in the AIA, for the old inter partes reexamination proceedings a district court may not issue a subpoena pursuant to 35 U.S.C. § 24 to compel discovery since PTO regulations do not allow parties to take testimony by deposition in such proceedings.
Background / Facts: During an inter partes reexamination at the PTO, Cordis petitioned the district court for two subpoenas duces tecum pursuant to 35 U.S.C. § 24 to compel discovery of documents that Cordis believed would help establish the existence of copying and other secondary considerations with respect to the contested claims. In response, Abbot Labs filed a motion to quash.
Issue(s): Whether 35 U.S.C. § 24 empowers a district court to issue a subpoena in an inter partes reexamination proceeding in the absence of PTO regulations allowing parties to take testimony by deposition in such proceedings.
Holding(s): No. In somewhat circular fashion, the court concluded “that section 24 only empowers a district court to issue a subpoena for use in a ‘contested case,’ and that contested cases are limited to those in which the regulations of the [PTO] authorize the parties to take depositions. Since the PTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not ‘contested cases’ within the meaning of section 24, and subpoenas under section 24 are not available.”