Therriault v. Garbe

When a junior party in an interference needs testimony or documents from a non-party who will not appear without a subpoena, and the parties would be prejudiced by the usual order of presenting the case-in-chief, the Board may authorize a two-step procedure under 37 CFR § 1.671(g) and 35 U.S.C. § 24. Under it, the movant first takes ex parte testimony and documents from the third party under a first subpoena, with the opponent not participating, so the opponent sees the entire case-in-chief. Only if the opponent then needs to cross-examine a third-party witness does the movant issue a second subpoena for an inter partes deposition. Authorization is not a license for a fishing expedition, and the movant must submit the proposed subpoena to the Board before seeking its issuance. No prior Board precedent is named as directly addressing this issue; the Board relies on the commentary in the 1984 Notice of Final Rule (49 Fed. Reg. 48416), which adopted the policy of Sheehan v. Doyle and rejected Brown v. Braddick. For the opposing party (here the senior party, Garbe), the decision means it is kept out of the first subpoena proceedings but receives the junior party's entire case-in-chief before objecting to admissibility or deciding whom to cross-examine. It can also ask the Board to resolve disputes over documents before any second subpoena issues. For the party seeking the subpoena (here the junior party, Therriault), it gains ex parte access to third-party personnel to decide who should testify and what documents to use, but it must show the subpoena is warranted, submit the proposed subpoena to the Board first, bear the burden of a second subpoena for cross-examination, and minimize inconvenience to the third party. The Board relied on Federal Circuit and CCPA reduction-to-practice cases such as Estee Lauder, Inc. v. L'Oreal, S.A. and Scott v. Finney to show why contact with the third party was needed, and on Sheehan v. Doyle (1st Cir.) for the policy behind the rule. LEGAL TEST OR STANDARD: The Board stated no numbered test for granting leave. It looked to the policy of 37 CFR § 1.671(g), under which prior permission ensures that a subpoena is necessary and that the testimony sought is relevant, and which is not to be construed as authorizing a fishing expedition. It weighed the plausible prejudice to each side. It then fashioned a two-step procedure: (1) an ex parte first subpoena, with Garbe not participating, so the third party can designate who should testify and what documents exist, with testimony by affidavit or ex parte deposition; (2) if Garbe must cross-examine an Alza witness, a second subpoena for an inter partes deposition, with any document dispute resolved by the Board beforehand. TRIGGERING FACTS: The interference was in the priority testimony phase. Junior party Therriault alleged that a third party, Alza, made and tested a transdermal drug delivery device from adhesive matrix material supplied by Adhesives Research and that the device meets the count. Alza's counsel said testimony would be given only under a subpoena. Therriault could not yet know what documents existed or which Alza individuals would need to testify to establish an actual reduction to practice. Therriault argued it could not prepare its case-in-chief without first obtaining information from Alza. Garbe argued it could not cross-examine effectively if it had to cross-examine Alza witnesses before seeing the rest of Therriault's case. The Board found both arguments plausible. KEY QUOTE: "However, entry of an order in an interference authorizing a party to proceed under § 24 should not be construed as an authorization to permit that party to engage in a fishing expedition." (Paper 82, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows the policy of Sheehan v. Doyle, 513 F.2d 895 (1st Cir.), cert. denied, 423 U.S. 874 (1975), and Sheehan v. Doyle, 529 F.2d 38 (1st Cir.), cert. denied, 429 U.S. 870 (1976), as stated in the Notice of Final Rule, Patent Interference Proceedings, 49 Fed. Reg. 48416, 48417 (Dec. 12, 1984), which rejected the policy announced in Brown v. Braddick, 595 F.2d 961 (5th Cir. 1979). PRACTICE TIP: When you need testimony from a non-party who will not cooperate without a subpoena, file a motion under 37 CFR § 1.671(g) that shows the subpoena is necessary and the testimony relevant, and propose the two-step ex parte then inter partes procedure. Have the proposed subpoena ready to file with the Board before seeking issuance from a district court. Plan to minimize burden on the third party, and be ready to hand-deliver copies of any protective-order papers to the Board promptly.