Discovery Barred In Patent Re-Exams, Fed. Circ. Rules

Law360, New York (March 20, 2013, 8:42 PM EDT) -- The Federal Circuit ruled Wednesday that discovery is not allowed in inter partes patent re-examinations, rejecting a bid by Johnson & Johnson's Cordis Corp. unit to subpoena rival Abbott Laboratories as part of a re-examination.

The Patent Act states that district courts can issue subpoenas for use in "any contested case" at the U.S. Patent and Trademark Office, but the Federal Circuit concluded that re-examinations are not "contested."

The legislative history of the Patent Act makes clear that contested cases include only those in which USPTO...
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