District Court Lacks Power to Issue Subpoenas for TTAB Disqualification Petition

In a case of first impression, the U.S. District Court for the Eastern District of Pennsylvania ruled that 35 U.S.C. § 24 does not provide the courts with power to issue subpoenas in support of petitions to disqualify attorneys from proceedings before the TTAB. Peer Bearing Co. v. Roller Bearing Co., Misc. Case No. 12-216 (E.D. Pa. December 19, 2012).

Roller Bearing (RBC) sought to take discovery in connection with its petition to disqualify Peer Bearing’s counsel from Peer’s opposition proceeding. Peer moved to quash the subpoenas served by RBC on several third parties.

Congress granted federal district courts the power to issue subpoenas in support of USPTO proceedings under 35 U.S.C. § 24.

The 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 . . . . The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and the production of documents and things shall apply to contested cases

By its terms, Section 24 applies only to "contested cases." [Not every proceeding before the USPTO is a contested case]. Moreover, a number of appellate courts (including the Third Circuit) have ruled that Section 24 allows courts to issue subpoenas only if the discovery or testimony being sought is authorized by the USPTO.

RBC argued that because its petition to disqualify was filed in an opposition, it is therefore entitled to the broad discovery available in opposition proceedings under 37 C.F.R. Part 2. In other words, it should be treated as a "contested case." Peer contended that since the opposition proceeding was automatically stayed by the filing of the petition (TBMP § 513.02), the provisions of Part 2 should not apply, and instead the petition should be governed by 37 C.F.R. § 11.19(c), under which rule RBC is not entitled to any discovery. The court agreed with Peer.

Part 11, subpart C sets forth the procedures for Part 11 proceedings. Subpart C specifically addresses petitions to disqualify, exempting them from subpart C’s procedures and making them subject to the USPTO Director’s "case-by-case" determinations. Id. § 11.19(c). Nothing in subparts A or C suggests that petitions to disqualify import procedures from the regulations for other proceedings.

And so, regardless of whether petitions for disqualification are "contested cases," the court does not have power to issue the subpoenas because they are not authorized by the USPTO.

The court therefore granted Peer's motion to quash the subpoenas.

TTABlog comment: Petitions for disqualification are rare, in my experience. Thus even rarer is the attempt to subpoena witnesses in connection with such a petition. No wonder this is a case of first impression.

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Text Copyright John L. Welch 2013.