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CAFC Denies Discovery in Inter Partes Patent Reexamination Dispute

Posted On: Mar. 21, 2013   By: Scott A. McKeown
ptab-discoveryAIA Cited by CAFC  as Remedying Known Patent Reexamination Deficiency

As predicted based upon the earlier oral argument, the Federal Circuit closed the door on the potential for discovery in inter partes patent reexamination in Abbott Laboratories v. Cordis Corp. (here) Specifically, the CAFC held that parties to such a patent reexamination proceeding cannot subpoena documents or testimony before the USPTO under 35 U.S.C. § 24.

Interestingly, as was the case earlier in Lingamfelter v. Kappos, the Court utilized the developments of the recent AIA legislation as a lens by which to view the earlier inter partes reexamination statutes, contrasting the earlier legislative intent as:

Congress’s most recent amendment to the Patent Act
further demonstrates that Congress intended for subpoenas
under section 24 to be made available in those proceedings
in which depositions are relied upon by the PTO.
In 2011, Congress replaced inter partes reexamination
with a new proceeding called inter partes review. See
Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
112-29, § 6(a), 125 Stat. 284, 299-304 (2011), to be codified
at 35 U.S.C. §§ 311-319 (2013). The purpose of this reform
was to “convert[] inter partes reexamination from an
examinational to an adjudicative proceeding,” and one of
its touted “improvements” over the former proceeding is to
allow the limited use of depositions. H.R. Rep. No. 112-98,
pt. 1, at 46-47 (2011); see AIA § 6(a), 125 Stat. at 302, to
be codified at § 316(a)(5)(A). In particular, Congress
provided for depositions of affiants in the proceeding, and
also authorized parties to “seek such discovery as the
Patent Office determines is otherwise necessary in the
interest of justice.” See H.R. Rep. No. 112-98, pt. 1, at 47.
In the course of implementing these mandates, the PTO
has recognized that the AIA authorizes parties to seek
section 24 subpoenas in the new proceedings. See 37
C.F.R. §§ 42.52-.53 (2013); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14,
2012). Congress’s actions in creating these inter partes
review proceedings thus demonstrate that depositions and
section 24 subpoenas go hand in hand.
Congress’s most recent amendment to the Patent Act further demonstrates that Congress intended for subpoenas under section 24 to be made available in those proceedings in which depositions are relied upon by the PTO. In 2011, Congress replaced inter partes reexamination with a new proceeding called inter partes review.  . . . The purpose of this reform was to “convert[] inter partes reexamination from an examinational to an adjudicative proceeding,” and one of its touted “improvements” over the former proceeding is to allow the limited use of depositions.  . . . In particular, Congress provided for depositions of affiants in the proceeding, and also authorized parties to “seek such discovery as the Patent Office determines is otherwise necessary in the interest of justice.”  . . . In the course of implementing these mandates, the PTO has recognized that the AIA authorizes parties to seek section 24 subpoenas in the new proceedings.
The Court also shot down arguments on due process grounds explaining that there is an opportunity to be heard by a disinterested decision maker in patent reexamination. As such the need for extra controls, such as discovery, are not justified by a “serious constitutional problem.”

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