Federal Circuit Unlikely to Open the Door to Discovery via Subpoena in Inter Partes Patent Reexamination

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Historically discovery has not been permitted in patent reexamination proceedings because, according to the USPTO, patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24. This argument makes perfect sense for ex parte patent reexamination, but perhaps less so for inter partes patent reexamination proceedings. Since much of the case law denying discovery in patent reexamination came about decades ago in the ex parte patent reexamination context, it is surprising that it took this long for the applicability of discovery in the inter partes context to make it up to the CAFC. (although the lack of discovery in inter partes patent reexamination has been recently emphasized in Lingamfelter v. Kappos)

Last week the Federal Circuit heard oral argument (here) in Abbott Laboratories v. Cordis Corp. (12-1244) on the issue of whether parties can subpoena documents or testimony in an inter partes patent reexamination proceeding before the USPTO under 35 U.S.C. § 24.   By way of background, §24 provides as follows:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena.

Cordis, the patent owner, sought subpoenas under §24 seeking discovery to rebut the declarations submitted by requesters Abbott Laboratories and Boston Scientific on the question of obviousness. Abbott filed a motion to quash the subpoenas, arguing among other things that 35 U.S.C. § 24 does not authorize the issuance of subpoenas because inter partes patent reexaminations are not “contested cases” within the meaning of the statute.

During the oral argument Abbott appeared to have the upper hand, and by a significant margin. Abbott and the amicus Solicitor pointed out that the legislative history of the America invents act (AIA) clearly explains that patent reexamination has been considered an “examinational” proceeding whereas the new post grant proceedings are adjudicative in nature. The AIA provides discovery for these new adjudicative proceedings because they are contested cases that are heard before Administrative Patent Judges of the Patent Trial & Appeal Board, whereas examinational proceedings like reissue and reexamination are essentially an extension of the examination phase and overseen by patent examiners. The Solicitor emphasized that the PTO has declined to promulgate rules allowing the issuance of subpoenas in reexaminations precisely because they are examination proceedings conducted before examiners and not contested cases held before administrative law judges. The Solicitor also made the interesting point that under Cordis’ broad definition of “contested case” even ex parte reexaminations would be subject to §24, which would create the anomalous result that requesters and patent owners would be entitled to obtain discovery via subpoena in ex parte reexaminations.

These arguments are consistent with the Board’s historic treatment of reexaminations as compared to patent interferences. Patent interferences have been conducted as contested cases in which limited discovery is permitted.

It is expected that the Federal Circuit will affirm the district court’s decision to quash the subpoena and decline to open the door to discovery via subpoena in reexamination proceedings. For the parties to the approximately 1,000 inter partes reexaminations still pending, discovery will likely be available only if the challenger seeks inter partes review or is able to pursue such in a parallel litigation.