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

By Ryan Davis (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 regulations authorize the parties to take depositions, the court ruled. Since depositions are not allowed...

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