Xactware Solutions, Inc. v. Buildxact Software Limited, No. 22-1871 (4th Cir. 2024)
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The United States Court of Appeals for the Fourth Circuit affirmed a lower court's decision to grant a motion to quash a subpoena issued by Xactware Solutions, Inc. against Buildxact Software Limited in a trademark dispute. The case revolves around Xactware's desire to orally depose a Buildxact employee as part of opposition proceedings in the U.S. Patent and Trademark Office (PTO). All of Buildxact's employees are located in Australia.
The court agreed with the district court's determination that it lacked authority to subpoena evidence that, under PTO rules, is inadmissible in internal PTO proceedings. The court reasoned that 35 U.S.C. § 24, which allows district courts to subpoena testimony for use in any contested case in the Patent and Trademark Office, only empowers district courts to issue subpoenas for depositions that comply with PTO rules.
The court rejected Xactware's argument that the PTO's rules contradict the Federal Rules of Civil Procedure and thus exceed the PTO's statutory authority. The court found that the PTO rules and the Federal Rules serve different purposes and contexts, and that the PTO's rule-making authority under Section 23 of the Patent Act allows it to establish its rules for taking affidavits and depositions.
The court concluded that a contrary ruling would significantly displace the PTO's authority to police its internal proceedings, and affirmed the lower court's decision to quash the subpoena.
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