If Cordis Corp. has its way, non-party discovery by subpoena will be permitted in an inter partes patent reexamination, potentially expanding the scope and complexity of presenting such reexaminations in the Patent Office. In a brief (PDF) filed May 4, 2012, Cordis argues to the federal Circuit that inter partes reexaminations are “contested cases” within the meaning of 35 U.S.C. § 24, which would make such reexaminations eligible for use of the subpoena power of federal courts.
The USPTO refused Cordis’s request to serve subpoenas, holding that discovery is not allowed in inter partes reexamination. The opposing party, Abbott Laboratories, also filed a motion to quash in federal district court, and the district court agreed, quashing the subpoenas. Cordis’s appeal brief to the Federal Circuit relies upon due process concerns, administrative law, and the power of the agency to hold and decide “contested cases.”
The use of subpoena power dates back at least to the 1861 Patent Act, which authorized the district court to subpoena witnesses “in any contested case pending in the Patent Office.” Historically, the “contested case” under Section 24 referred to an interference proceeding in the USPTO that was declared and conducted under 35 U.S.C. § 135. Other contested cases have included patent extension proceedings, disciplinary proceedings, and trademark cancellation and opposition proceedings. Cordis’s arguments regarding inter partes reexamination would extend the definition of “contested cases” for which subpoena power exists.
If Cordis is successful in obtaining the right to issue subpoenas in inter partes reexaminations, it will add another strategic consideration for competitors who want to challenge pending or issued patents. The new inter partes review procedure (which will replace inter partes reexamination on September 16, 2012) and the new post-grant review option under the AIA both have provisions (35 U.S.C. §§ 316 and 326) authorizing some limited fact discovery. Under this new authority from Congress, the USPTO Director is charged with making regulations that, among other things, permit depositions and prescribe sanctions for discovery abuse.
These new USPTO proceedings appear to have the same kind of “contested case” characteristics as interferences. Since they envision the use of limited discovery, it would follow that they also warrant, or require, use of the federal courts’ subpoena power.