Abbott Labs v. Cordis Corp., No. 12-1244 (Fed. Cir. 2013)
Annotate this CaseCordis sued Abbott, alleging infringement of patents for drug-eluting stents. The PTO reexamined the 844 patent and issued an initial office action rejecting all claims as obvious. Cordis submitted an expert affidavit asserting secondary considerations of nonobviousness, including that Abbott had copied its patent. The examiner issued a further action, affirming rejection of all claims, finding that Cordis had failed to present evidence of copying. A different examiner issued an initial action rejecting all challenged claims of the 773 patent as obvious. The parties submitted dueling expert declarations. The reexamination of the 773 patent remains pending, while reexamination of the 844 patent is on appeal before the Patent Trial and Appeal Board. Cordis obtained subpoenas from the district court ordering Abbott to produce documents believed to establish copying and other secondary considerations for use in the pending PTO reexaminations. The court subsequently quashed the subpoenas. The Federal Circuit affirmed, holding that 35 U.S.C. 24 only empowers a district court to issue a subpoena for use in a “contested case,” and that contested cases are limited to those in which the regulations of the PTO authorize the parties to take depositions. The PTO does not provide for depositions in inter partes reexamination proceedings.
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