Section 24 Subpoenas Are Not Available In Inter Partes Reexamination Proceedings

In Abbott Laboratories v. Cordis Corp., No. 12-1244 (Fed. Cir. Mar. 20, 2013), the Federal Circuit affirmed the district court's decision granting Abbott Laboratories' (“Abbott”) motion to quash two subpoenas duces tecum issued under 35 U.S.C. § 24 in an inter partes reexamination procedure.

In September 2009, Cordis Corporation (“Cordis”) sued Abbott and another company, alleging infringement of U.S. Patent Nos. 6,746,773 (“the '773 patent”) and 7,591,844 (“the '844 patent”) related to drug eluting stents. In 2010, the defendants filed requests for inter partes reexamination of the two patents, and the PTO granted the requests. During the reexamination proceedings, the parties submitted expert declarations related to obviousness, including the issue of copying as a secondary consideration of nonobviousness.

In October 2011, Cordis sought subpoenas duces tecum under § 24 from the district court. The district court issued the subpoenas, ordering Abbott to produce documents that Cordis alleged were related to copying and other secondary considerations of nonobviousness. The subpoenas were issued specifically for use in the pending reexaminations of the '773 and '844 patents. Cordis filed petitions with the Director of the PTO, asking him to clarify the PTO's rules related to service of subpoenas under § 24 in inter partes reexaminations, and to authorize such subpoenas if authorization was required. The PTO denied Cordis's petitions, and Abbott moved to quash the subpoenas. The district court granted Abbott's motion to quash, concluding that the PTO's decision was persuasive. Cordis appealed the district court's order quashing the subpoenas.

The Federal Circuit addressed the proper interpretation of § 24 as a question of first impression and construed the term “contested case” as used in § 24 as referring to a proceeding in which the PTO has provided for the taking of depositions for use in that proceeding. The Court based its construction of § 24 on its plain text and relationship with adjacent provisions of title 35, its legislative history, and the interpretation given to it by other courts.

“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.” Slip op. at 18.

Based on the plain...