Abbott (NYSE:ABT) held on to a win in its patent infringement war with Johnson & Johnson‘s (NYSE:JNJ) Cordis Corp. after a federal appeals court upheld a lower court ruling last month.
The U.S. Court of Appeals for the Federal Circuit said the U.S. District Court for Eastern Virginia was right to quash a pair of subpoenas sought by Cordis under a U.S law referred to as "section 24." The subpoenas were aimed at uncovering evidence of Cordis’s allegation that Abbott copied the patents, according to court documents.
Cordis sued Abbott and Boston Scientific (NYSE:BSX) in September 2009 in a New Jersey federal court, alleging infringement of 2 patents covering drug-eluting stent technology. In 2010 the companies asked the U.S. Patent & Trademark Office to re-examine the patents.
Patent & Trademark examiners initially rejected the patents as obvious, according to the documents, prompting Cordis in October 2011 to seek the subpoenas from the court in Eastern Virginia, which were granted "ordering Abbott to produce documents that Cordis believed would help establish the existence of copying and other secondary considerations with respect to the contested claims."
Cordis also asked the USPTO director’s office to clarify the rules for subpoenas issued during patent reexaminations, seeking either to confirm that such demands can be issued without the patent office’s OK, or alternatively that the USPTO grant approval for the Cordis subpoenas. The patent office denied the request, writing that such subpoenas aren’t allowed under the reexamination statute.
Meanwhile, according to the documents, the federal court in Eastern Virginia granted Abbott’s move to quash to Cordis subpoenas, prompting an appeal to the Federal Circuit.
The appeals court, citing the USPTO’s response to Cordis, concluded that patent reexaminations do not count as "contested cases," meaning district courts have no authority to grant them.
"This appeal requires us to decide for the first time whether [U.S. law] empowers a district court to issue a subpoena in an inter partes reexamination proceeding, in the absence of PTO regulations allowing parties to take testimony by deposition in such proceedings. In other words, we must decide whether such proceedings are ‘contested cases’ within the meaning of the statute," wrote Federal Circuit Judge Timothy Dyk. "We hold that [the statute] 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."