Abbott Laboratories v. Cordis Corporation

United States Court of Appeals
for the Federal Circuit
______________________
ABBOTT LABORATORIES,
Movant-Appellee,
v.
CORDIS CORPORATION,
Respondent-Appellant.
______________________
2012-1244
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 11-MC-0042, Judge
Claude M. Hilton.
______________________
Decided: March 20, 2013
______________________
MICHAEL A. MORIN, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P., of Washington, DC, argued for
movant-appellee. With him on the brief was ANDREW J.
VANCE. Of counsel on the brief were JEFFREY A. LAMKEN
and ROBERT K. KRY, Molo Lamken LLP, of Washington,
DC. Of counsel was CORINNE LEE MILLER, Finnegan,
Henderson, Farabow, Garrett & Dunner, L.L.P., of Wash-
ington, DC.
JOSEPH LUCCI, Woodcock Washburn LLP, of Philadelph-
ia, Pennsylvania, argued for the respondent-appellant.
2 ABBOTT LABORATORIES v. CORDIS CORPORATION
With him on the brief was JOHN F. MURPHY. Of counsel
on the brief was JOHN F. DUFFY, Fried, Frank, Harris,
Shriver & Jacobson LLP, of Washington, DC. Of counsel
was EUGENE N. HANSEN.
SAMANTHA L. CHAIFETZ, Attorney, Civil Division, United
States Department of Justice, of Washington, DC, for
Amicus Curiae. With her on the brief were STUART F.
DELERY, Acting Assistant Attorney General, SCOTT R.
MCINTOSH and MARK R. FREEMAN, Attorneys. Of counsel
on the brief were BERNARD J. KNIGHT, JR., General Coun-
sel, RAYMOND T. CHEN, Solicitor and Deputy General
Counsel, THOMAS W. KRAUSE and FARHEENA Y. RASHEED,
Associate Solicitors, United States Patent and Trademark
Office, of Alexandria, Virginia.
______________________
Before RADER, Chief Judge, DYK, and REYNA, Circuit
Judges.
DYK, Circuit Judge.
Cordis Corporation appeals from the decision of the
United States District Court for the Eastern District of
Virginia granting Abbott Laboratories’ motion to quash
two subpoenas duces tecum issued pursuant to 35 U.S.C.
§ 24. We conclude 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 United States Patent and Trademark
Office (“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. We
affirm.
ABBOTT LABORATORIES v. CORDIS CORPORATION 3
BACKGROUND
Section 24 of title 35 of the U.S. Code provides that
“[t]he 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, command-
ing him to appear and testify.” 35 U.S.C. § 24. This appeal
requires us to decide for the first time whether section 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 deposi-
tion in such proceedings. In other words, we must decide
whether such proceedings are “contested cases” within the
meaning of the statute.
The origins of this dispute lie in September 2009,
when Cordis sued Abbott and another company in the
United States District Court for the District of New
Jersey, alleging infringement of two patents held by
Cordis for drug-eluting stents (U.S. Patent No. 6,746,773(“the ’773 patent”) and U.S. Patent No. 7,591,844 (“the
’844 patent”)). The following year, the two defendants
asked the PTO to initiate inter partes reexaminations of
the two patents. The PTO agreed to reexamine the ’844
patent in June 2010, and, on the same day, the examiner
issued an initial office action rejecting all the claims of the
patent as obvious. In August, Cordis submitted an expert
affidavit asserting, among other facts, the existence of
secondary considerations of nonobviousness, including
that Abbott had copied its patent. Abbott’s co-defendant
responded the following month with an expert affidavit of
its own, concluding that the ’844 patent would have been
obvious. In January 2011, the examiner issued a further
“Non-Final Office Action,” affirming the rejection of all
the claims of the ’844 patent. Among other findings, the
examiner determined that Cordis had failed to present
4 ABBOTT LABORATORIES v. CORDIS CORPORATION
evidence of copying. 1
Around the same time that the examiner issued her
second office action rejecting the ’844 patent, a different
examiner issued an initial action rejecting all the chal-
lenged claims of the ’773 patent as obvious. In February
and August 2011, Cordis and Abbott submitted dueling
expert declarations on the obviousness of the ’773 patent,
addressing (among other matters) issues of copying. The
reexamination of the ’773 patent apparently remains
pending before the examiner, while the reexamination of
the ’844 patent is on appeal before the Patent Trial and
Appeal Board (“Board”). 2
In October 2011, Cordis sought subpoenas from the
district court in Virginia under section 24. The court,
pursuant to Cordis’s request, issued two subpoenas duces
tecum ordering Abbott to produce documents that Cordis
believed would help establish the existence of copying and
other secondary considerations with respect to the con-
tested claims of the ’844 and ’773 patents. 3 The subpoenas
were issued specifically for use in the pending PTO reex-
aminations of the two patents.
1 The examiner also found that the allegedly copied
products had been on the market before the patent issued,
and that Cordis had not shown a nexus between the
claimed invention and the commercial success, industry
praise, and unexpected results that had allegedly accrued
to Abbott’s stents.
2 After the examiners’ initial determinations, the
New Jersey district court stayed the infringement pro-
ceedings.
3 Cordis also obtained other subpoenas, for deposi-
tions of its adversaries’ expert witnesses. Those subpoe-
nas are not directly at issue in this appeal.
ABBOTT LABORATORIES v. CORDIS CORPORATION 5
At the same time, Cordis filed petitions with the Di-
rector of the PTO, asking him to “clarif[y] . . . the [PTO’s]
rules as they relate to the service of a subpoena under 35
U.S.C. § 24 in inter partes reexaminations,” and in par-
ticular to “confirm that [the PTO’s] current rules impose
no requirement that parties seeking to enforce subpoenas
under § 24 must obtain the [PTO’s] authorization.” J.A.
538. In the alternative, Cordis asked the PTO to authorize
such subpoenas if authorization was required.
The PTO denied Cordis’s petitions, determining that
section 24 subpoenas are “not permitted by the inter
partes reexamination statute, or by any regulation gov-
erning inter partes reexamination proceedings.” J.A.
1567. The PTO reasoned that because the reexamination
statute requires inter partes reexaminations to be “‘con-
ducted according to the procedures established for initial
examination,’” and because initial examination does not
“provide for a discovery practice,” inter partes reexamina-
tions are not contested cases within the meaning of sec-
tion 24. J.A. 1568 (quoting 35 U.S.C. § 314(a)). The PTO
also concluded that allowing subpoenas in reexaminations
would frustrate the congressional command to complete
these proceedings with “‘special dispatch.’” J.A. 1569
(quoting 35 U.S.C. § 314(c)). Finally, the PTO observed
that it would be “anomalous” to allow discovery in inter
partes reexaminations on the basis of section 24 “in
isolation,” when parties to indisputably “contested” pro-
ceedings such as interferences and inter partes reviews
are constrained by specific statutory and regulatory
frameworks for compelled discovery. J.A. 1571. In a
separate lawsuit, Cordis has challenged the PTO’s denial
of its petitions as arbitrary and capricious in violation of
the Administrative Procedure Act, 5 U.S.C. § 706(2)(A).
The district court has stayed that proceeding pending the
outcome of this appeal. See Cordis Corp. v. Kappos, No.
1:12-cv-75 (E.D. Va. Mar. 29, 2012).
Shortly after the PTO denied Cordis’s petitions, a
6 ABBOTT LABORATORIES v. CORDIS CORPORATION
magistrate judge of the district court in Virginia granted
Abbott’s motion to quash the subpoenas, concluding that
the PTO’s decision, “while not binding, [was] certainly
persuasive,” and that an inter partes reexamination is not
a “contested case” within the meaning of section 24. J.A.
20-21. The district court affirmed the magistrate judge’s
order without opinion. See Abbott Labs. v. Cordis Corp.,
No. 11-mc-42 (E.D. Va. Jan. 19, 2012).
Cordis timely appealed the district court’s order
quashing the subpoenas. We have jurisdiction under 28
U.S.C. § 1295(a)(1). See Micro Motion Inc. v. Exac Corp.,
876 F.2d 1574, 1576 (Fed. Cir. 1989). “We . . . review
statutory interpretation . . . without deference.” Astra-
Zeneca Pharm. LP v. Apotex Corp., 669 F.3d 1370, 1376
(Fed. Cir. 2012).
DISCUSSION
I
The question of whether 35 U.S.C. § 24 empowers a
district court to issue a subpoena for use in an inter
partes reexamination turns on whether an inter partes
reexamination is a “contested case” within the meaning of
section 24. The proper interpretation of section 24 is a
question of first impression in this court. We construe the
term “contested case,” as used in section 24, as referring
to a proceeding in which the PTO has provided for the
taking of depositions for use in that proceeding.
A
The parties debate the precise attributes that make a
proceeding “contested.” According to Cordis, a “contested”
proceeding is simply an adversarial proceeding, or one “in
which one party ‘contests’ or challenges a particular
position . . . adopted by another party.” Cordis Br. 23. In
support of this definition, Cordis cites a dictionary that
defines the verb “to contest” as meaning “‘to make a
subject of litigation: dispute or resist by course of law,’” as
ABBOTT LABORATORIES v. CORDIS CORPORATION 7
well as court decisions that elaborate on the meaning of
“contested.” Cordis Br. 23-25 (quoting Webster’s Third
New International Dictionary of the English Language
Unabridged 492 (2002)). At oral argument, Cordis further
argued that a “contested” proceeding is one in which the
parties may introduce evidence.
Abbott, by contrast, asserts that “contested case” is “a
term of art with a settled meaning” in patent law, refer-
ring to “adversarial proceedings . . . that [bear] the hall-
marks of traditional civil litigation.” Abbott Br. 38-39
(ellipsis in the original, quotation marks and emphasis
omitted). These hallmarks, according to Abbott, include
the rights “to file motions, compel testimony, compel
document production, take depositions, cross-examine
witnesses, . . . seek discovery,” and “appear in person
before” the adjudicator. Abbott Br. 40 (emphasis omitted).
Abbott additionally suggests that a “contested” proceeding
is one that is heard by a legally trained adjudicator.
Finally, the United States, arguing as amicus curiae
in support of Abbott, asserts that “[the] PTO construes
the phrase [‘contested case’] to signify the small but
important category of genuinely trial-like, adjudicative
proceedings . . . of which the paradigmatic example is the
interference,” in contrast to “the examination-based
proceedings that are the daily work of the agency and its
corps of patent examiners.” United States Br. 19.
We do not find the parties’ dueling laundry lists of the
attributes of a “contested case” to be useful in determin-
ing the meaning of section 24. Instead, we construe the
provision in light of its plain text and relationship with
adjacent provisions of title 35, its legislative history, and
the interpretation given to it by other courts.
B
Section 24 makes subpoenas available from “[t]he
clerk of any United States court for the district wherein
8 ABBOTT LABORATORIES v. CORDIS CORPORATION
testimony is to be taken for use in any contested case in
the Patent and Trademark Office.” 35 U.S.C. § 24. A
“contested case,” in this context, must therefore be a
proceeding for which “testimony [may] be taken for use”
before the PTO. Id.The relationship between section 24 and the immedi-
ately preceding section of title 35 shows that Congress
has entrusted to the PTO the power to decide by regula-
tion which proceedings require “testimony . . . to be taken
for use.” 4 Section 23 of title 35 allows the Director of the
PTO to “establish rules for taking . . . depositions required
in cases in the [PTO],” and allows “[a]ny officer authorized
by law to take depositions to be used in [state or federal
courts to] take such . . . depositions.” 35 U.S.C. § 23. 5
Sections 23 and 24 originated as a single sentence in
section 1 of the Patent Act of 1861, which provided:
That the Commissioner of Patents may establish
rules for taking . . . depositions required in cases
pending in the Patent Office, and [that] such . . .
depositions may be taken before any justice of the
peace, or other officer authorized by law to take
depositions to be used in the courts of the United
States, or in the State courts . . . ; and [that] in
4 “A provision that may seem ambiguous in isola-
tion is often clarified by the remainder of the statutory
scheme.” United Sav. Ass’n of Tex. v. Timbers of Inwood
Forest Assocs., 484 U.S. 365, 371 (1988); see also Sale v.
Haitian Ctrs. Council, 509 U.S. 155, 171-74 (1993) (con-
struing a statutory provision in light of its relationship
with other parts of the same statute).
5 Section 23 differs from section 24 one respect, in
that it gives the Director of the PTO the authority to
regulate the use of affidavits, as well as depositions. See
35 U.S.C. § 23.
ABBOTT LABORATORIES v. CORDIS CORPORATION 9
any contested case pending in the Patent Office it
shall be lawful for the clerk of any court of the
United States for any district or Territory, and he
is hereby required, upon the application of any
party to such contested case, . . . to issue sub-
pœnas for any witnesses residing or being within
the said district or Territory, commanding such
witnesses to appear and testify . . . .
See Patent Act of 1861, ch. 88, § 1, 12 Stat. 246, 246. 6
The Patent Act of 1870 divided section 1 into three
sections and revised its language. See Patent Act of 1870,
ch. 230, §§ 43-45, 16 Stat. 198, 204. In 1873, Congress
further subdivided the provision, leaving it spread over
four consecutive sections of the Revised Statutes. See Rev.
Stat. §§ 4905-08, enacted by Act of December 1, 1873, 18
Stat. 1, 957-58. The Patent Act of 1952 merged three of
the four sections and updated their language, creating the
provisions that have come down to us, with subsequent
amendments, as sections 23 and 24. See Patent Act of
1952, Pub. L. No. 82-593, §§ 23-24, 66 Stat. 792, 795.
Nothing in this subsequent history reveals an intent on
the part of Congress to sever the relationship between the
two provisions. The “contested case[s]” of section 24 are,
as they were at the time of the statute’s enactment, those
cases for which the Director of the PTO has “establish[ed]
rules for taking . . . depositions” by compulsion. See 35
U.S.C. § 23 (emphasis added). As the United States
argues, section 24 thus “authorizes district courts to lend
their coercive powers to [the] PTO,” which maintains
“plenary authority” over the production of evidence
6 Section 1 replaced an earlier provision authorizing
the Commissioner of Patents “to make all such regula-
tions in respect to the taking of evidence to be used in
contested cases before him, as may be just and reasona-
ble.” See Patent Act of 1839, ch. 88, § 12, 5 Stat. 353, 355.
10 ABBOTT LABORATORIES v. CORDIS CORPORATION
through section 23. See United States Br. 9, 28.
C
The legislative history of section 24 also supports this
reading. Sections 23 and 24 were enacted in 1861 to help
the PTO secure needed testimony from recalcitrant fact
witnesses. In the years before the enactment of these
provisions, the PTO’s rules allowed depositions to be
taken in interferences and patent term extension proceed-
ings, but offered no means for compelling the attendance
of deponents. See United States Patent Office, Rules and
Directions for Proceedings in the Patent Office §§ 93-98
(1854) (“1854 Rules”); see also United States Patent
Office, Rules and Directions for Proceedings in the Patent
Office §§ 86-91 (1859) (“1859 Rules”). 7
An 1857 report by the Commissioner of Patents drew
Congress’s attention to the problems created by the
inability to compel testimony in these proceedings:
7 For example, the rules provided that “before the
deposition of a witness [may] be taken . . . , notice should
be given to the opposite party of the time and place when
and where such deposition . . . will be taken; so that the
opposite party . . . shall have full opportunity to cross-
examine the witness”; that “[t]he magistrate [taking the
deposition] must append to the deposition his certificate,
stating the time and place at which it was taken, the
names of the witnesses, the administration of the oath, at
whose request the testimony was taken, the occasion upon
which it is intended to be used, the names of the adverse
parties . . . and whether they were present”; and that
“[t]he magistrate must . . . seal up the deposition when
completed, and endorse upon the envelope a certificate.”
1854 Rules, supra, §§ 93.2, 96, 98. The rules also provided
a sample form “recommended for observance in the taking
of depositions.” Id. § 98.
ABBOTT LABORATORIES v. CORDIS CORPORATION 11
In applications for the extension of patents
and in interference cases a wide range of inquiry
into matters of fact is often essential to the ends of
justice. The existing laws furnish no means for
compelling the attendance of witnesses, nor for
obliging them to testify upon such issues. The in-
terests bound up with these investigations are
frequently of the greatest magnitude; and, as a
consequence, refractory or mercenary men, avail-
ing themselves of this omission in the law, have re-
fused to appear or give their depositions, except
upon the payment of the most exorbitant sums by
parties claiming the testimony. Cases of this char-
acter, while working the most cruel hardship to
individuals, have tended to bring the administra-
tion of the government into discredit, if not into
contempt. No reason is perceived why the process
of subpœna, freely allowed to all litigating their
interests in the courts of the country, shall be
withheld from the parties to these important and
complicated controversies.
1 United States Patent Office, Report of the Commissioner
of Patents for the Year 1857: Arts and Manufactures, S.
Exec. Doc. No. 35-30, at 7 (1858) (emphases added). A
commercial guide to patent practice published shortly
before the section’s enactment echoes the Commissioner’s
views, warning inventors and their agents that: “The
taking of evidence in interference cases is a sort of private
inquest. It is not necessarily a Court proceeding. Sub-
pœnas cannot be issued nor compulsory process employed
to cause parties to testify.” Patent Laws of the United
States, Together with Rules and Proceedings in the Patent
Office, 69 (New York, Munn & Co., ca. 1860). 8
8 The regulations governing the use of depositions
in interferences also applied to patent term extension
proceedings—the other class of contested cases discussed
12 ABBOTT LABORATORIES v. CORDIS CORPORATION
Congress proved sympathetic to the Commissioner’s
concerns. In 1857, the House Committee on Patents
reported a bill designed to “remed[y]” the “defect in the
present law” created by the absence of a means for “com-
pel[ling] a witness to testify” or for obtaining “evidence . . .
that is not volunteered” in proceedings before the PTO.
H.R. Rep. No. 34-98, at 1 (1857). In the following Con-
gress, the same committee reported a similar bill, de-
signed to “remove” the “[s]erious difficulties” that arose
“in pursuing the regular and necessary investigations” of
the PTO due to “a defect of authority in commanding the
attendance of witnesses.” H.R. Rep. No. 35-178, at 2
(1858). The proposed bill, the committee asserted, would
“relieve[] the [PTO] from this omission, and enable[]
litigants to have the benefit of testimony, and, at the
same time, carefully guard[] and protect[] the rights of
witnesses and all parties.” Id. The PTO appears to have
drafted these bills. See Cong. Globe, 36th Cong., 1st Sess.
1646 (1860) (statement of Sen. Bigler).
The Patent Act of 1861 was enacted in the waning
days of the Thirty-Sixth Congress. The chair of the Senate
Committee on Patents assured his colleagues that the law
would save parties from the need “to virtually bribe
witnesses” in order to secure their attendance, preventing
witnesses from “embarrass[ing] the operations” of the
PTO and imposing “unnecessary expense” on parties.
Cong. Globe, 36th Cong., 1st Sess. 1731 (1860) (statement
of Sen. Bigler). The chair stated that the provision was
universally supported by “inventors,” their “agents,” and
the PTO, and that he had “never heard any diversity of
opinion” regarding its wisdom. Id. And indeed, through
ten months of subsequent debate over the bill as a whole,
in the Commissioner’s report to Congress. See 1859 Rules,
supra, § 55; see also United States Patent Office, Rules
and Directions for Proceedings in the Patent Office § 56
(1861).
ABBOTT LABORATORIES v. CORDIS CORPORATION 13
section 1 of the bill never engendered any controversy or
amendments. This history demonstrates 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 neces-
sary.
D
The interpretation given to section 24 by the regional
courts of appeal just prior to the creation of this court
further confirms that section 24 is the handmaiden of
section 23. While patent law decisions of the regional
circuits do not bind us, see Superior Fireplace Co. v.
Majestic Prods. Co., 270 F.3d 1358, 1372 (Fed. Cir. 2001),
we may consider them as persuasive authority, see Cer-
veceria Centroamericana, S.A. v. Cerveceria India, Inc.,
892 F.2d 1021, 1023 (Fed. Cir. 1989).
At one time, “[t]he prevailing interpretation of 35
U.S.C. § 24 [was] that it authorize[d] district courts to
grant discovery beyond that permitted by [PTO] discovery
rules and rules of admissibility.” See Brown v. Braddick,
595 F.2d 961, 966 (5th Cir. 1979). In one typical decision,
the Third Circuit held that the insertion into section 24 in
1952 of a reference to the Federal Rules of Civil Procedure
revealed an intent to make “broad discovery . . . available”
in contested cases. In re Natta, 388 F.2d 215, 217 (3d Cir.
1968), overruled by Frilette v. Kimberlin, 508 F.2d 205 (3d
Cir. 1974) (en banc).
The tide began to turn in 1974, when the Third Cir-
cuit reversed its earlier decision. See Frilette, 508 F.2d
205. The court noted the “anomaly” of “permitting discov-
ery in the district court while matters are still pending
before an administrative agency,” and concluded that this
anomaly was inconsistent with the courts’ proper role of
“co-operatively complementing the [PTO]” in managing its
proceedings. Id. at 208, 210 (footnote and quotation marks
omitted). The following year, the First Circuit followed
14 ABBOTT LABORATORIES v. CORDIS CORPORATION
the Third Circuit’s lead. After observing that
“[h]istorically section 24 developed to provide for the
issuance of subpoenas to compel testimony and evidence
required in . . . interferences,” the court held that section
24 only allows courts to issue subpoenas to “aid in
[PTO-]authorized discovery, [or] to obtain testimony and
evidence for use in [an interference] proceeding in pro-
gress.” Sheehan v. Doyle, 513 F.2d 895, 896, 899 (1st Cir.
1975). 9 The court concluded that “section 24 is simply a
provision giving teeth, through the courts’ subpoena
powers, to authority conferred upon the Commissioner of
Patents” to regulate PTO proceedings. Id. at 898. 10 Like
the First and Third Circuits, we conclude that section 24
is designed to allow the courts to render assistance to the
PTO.
For all these reasons, we conclude that section 24 only
empowers district courts to issue subpoenas in proceed-
ings for which the PTO has authorized parties to present
evidence by means of depositions. 11
9 The PTO’s rules at the time, like its present rules,
explicitly provided for the use of depositions in interfer-
ences and related proceedings. See 37 C.F.R. § 1.272(1972).
10 In Brown, the Fifth Circuit appeared to approve
the views of the First and Third Circuits in Sheehan and
Frilette. See 595 F.2d at 965-67.
11 Although section 24 only speaks explicitly of the
courts’ power to “issue a subpoena . . . commanding [a
witness] to appear and testify,” 35 U.S.C. § 24, the PTO
apparently construes the statute as providing for subpoe-
nas duces tecum, such as the subpoenas at issue in this
appeal. See 37 C.F.R. §§ 41.156(a), 42.52(a) (regulating
the use of subpoenas to “compel testimony or production
of documents or things” (emphasis added)).
ABBOTT LABORATORIES v. CORDIS CORPORATION 15
E
Congress’s most recent amendment to the Patent Act
further demonstrates that Congress intended for subpoe-
nas under section 24 to be made available in those pro-
ceedings 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.
II
We turn to the question of whether the PTO’s regula-
tions allow parties to take depositions in inter partes
reexaminations.
The PTO regulations make no provision for the taking
of depositions in proceedings before examiners. Deposi-
tions are allowed only in matters before the Board. The
PTO’s regulations for inter partes reexaminations make
16 ABBOTT LABORATORIES v. CORDIS CORPORATION
no provision for either party to take depositions. See 37
C.F.R. §§ 1.902-.997 (2005). The PTO’s regulations indeed
specifically exclude appeals of inter partes reexamina-
tions (the only stage of the reexamination occurring before
the Board) from the category of Board proceedings in
which depositions are allowed by defining such proceed-
ings as not being “contested cases.” See 37 C.F.R. § 41.2(2005); Rules of Practice for Trials before the Patent Trial
and Appeal Board and Judicial Review of Patent Trial
and Appeal Board Decisions; Final Rule, 77 Fed. Reg.
48,612, 48,616 (Aug. 14, 2012) (“2012 Rules”). The PTO
also has stated that “[t]he existence of a contested case
[within the meaning of 37 C.F.R. § 41.2] is a predicate for
authorizing a subpoena under 35 U.S.C.[ §] 24.” See 2012
Rules, 77 Fed. Reg. at 48,616.
The only PTO regulations providing for depositions in
patent proceedings apply exclusively to interferences,
derivation proceedings, and the new Board proceedings
created by the AIA. See 37 C.F.R. §§ 41.1(a), 41.157 (2005)
(interferences); 37 C.F.R. §§ 42.1(a), 42.2, 42.53 (2013)
(derivation proceedings and proceedings under the AIA).
Each of these regulations, moreover, is accompanied by a
regulation explicitly allowing the parties to seek section
24 subpoenas in the covered proceedings, reinforcing the
connection between the availability of depositions and
compelled production. See 37 C.F.R. § 41.156 (2005); 37
C.F.R. § 42.52 (2013). 12
12 Section 24 subpoenas are explicitly permitted in
two other types of PTO proceedings, as well: trademark
proceedings and disciplinary proceedings. See 37 C.F.R.
§§ 2.120(3)(b),(j)(2), 11.38. Both types of proceedings allow
the use of depositions. See 37 C.F.R. §§ 11.50-.51, 2.123-
.124. Another type of proceeding, public use proceedings,
follows the rules governing the use of testimony in inter-
ferences, including the use of depositions. See 37 C.F.R.
§ 1.292; MPEP § 720.04 (8th ed. Rev. 9, Aug. 2012). The
ABBOTT LABORATORIES v. CORDIS CORPORATION 17
The PTO’s regulations thus do not permit parties to
take depositions in inter partes reexaminations, and
section 24 subpoenas are not available in such proceed-
ings.
III
Finally, Cordis urges us to construe section 24 as al-
lowing subpoenas in these reexaminations in order to
avoid “serious constitutional concerns” regarding due
process. See Cordis Br. 38 (quotation marks omitted). See
generally Edward J. DeBartolo Corp. v. Fla. Gulf Coast
Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988);
SKF USA Inc. v. USCBP, 556 F.3d 1337, 1349-50 (Fed.
Cir. 2009).
While a patent is a property right protected by the
Due Process Clause, see Fla. Prepaid Postsec. Educ.
Expense Bd. v. College Sav. Bank, 527 U.S. 627, 642
(1999); Patlex Corp. v. Mossinghoff, 758 F.2d 594, 599
(Fed. Cir. 1985), due process requires an individualized
analysis of “the particular circumstances of the case,” see
Patlex Corp. v. Mossinghoff (“Patlex II”), 771 F.2d 480,
485 (Fed. Cir. 1985).
The indispensable ingredients of due process are no-
tice and an opportunity to be heard by a disinterested
decision-maker. See Caperton v. A.T. Massey Coal Co., 556
parties dispute whether section 24 subpoenas are availa-
ble in public use proceedings, and we need not decide this
question.
The PTO requires a party to obtain authorization
from the Board prior to seeking a section 24 subpoena in a
patent proceeding. See 37 C.F.R. §§ 41.156, 42.52; see also
id. § 11.38. This requirement was first introduced in 1985.
See 37 C.F.R. § 1.671(g) (1985); Patent Interference Pro-
ceedings, 49 Fed. Reg. 48,416, 48,417 (Dec. 12, 1984). This
requirement for individual authorization is not before us.
18 ABBOTT LABORATORIES v. CORDIS CORPORATION
U.S. 868, 876-81 (2009); Lachance v. Erickson, 522 U.S.
262, 266 (1998); Memphis Light, Gas & Water Div. v.
Craft, 436 U.S. 1, 13 (1978); Mathews v. Eldridge, 424
U.S. 319, 333 (1976). There is no dispute that inter partes
reexamination provides the patent owner with notice and
an opportunity to be heard by a disinterested decision-
maker. See 35 U.S.C. §§ 311(c), 312(b), 314(a),(b); see also
Patlex II, 771 F.2d at 485-86 (noting that ex parte reex-
aminations are conducted by “disinterested experts,” and
concluding that “the patentee’s opportunity to participate
after the [decision to initiate a reexamination], and to
appeal . . . , affords the patentee due process”).
Given that the basic rights of notice and an opportuni-
ty to be heard have been afforded, determining what
additional procedures are guaranteed by due process
requires balancing the various interests at stake. See
Mathews, 424 U.S. at 334-35. This balancing must take
into account the fact that a reexamination, unlike an
interference proceeding, does not involve a contest over
patent ownership, as well as the fact that Congress has
specifically charged the PTO with conducting reexamina-
tions “with special dispatch,” see 35 U.S.C. § 314(c) (2000).
We do not believe that, under the facts of this case, ex-
cluding compulsory production of testimony in inter
partes reexamination proceedings raises a “serious consti-
tutional problem[].” See DeBartolo, 485 U.S. at 575.
CONCLUSION
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.
AFFIRMED