464 F.2d 573 - Vogel v. Jones — 464 F.2d 573

¶1See also, D.C., 346 F.Supp. 1005.

¶2Stanley G. DeLaHunt, Kinney, Alexander, Sell, Steldt & DeLaHunt, St. Paul, Minn., Richard A. Graddock, Walter J. Fessler, Lum, Biunno & Tompkins, Newark, N. J., for plaintiffs-appellants; William G. Ewert, Terryl K. Qualey, St. Paul, Minn., of counsel.

¶3Edgar H. Martin, Cushman, Darby & Cushman, Washington, D. C., Paul N. Kokulis, Washington, D. C., for defendants-appellees; Raymond M. Tierney, Jr., Shanley & Fisher, Newark, N. J., of counsel.

¶4Before SEITZ, Chief Judge and VAN DUSEN and ADAMS, Circuit Judges.

¶5OPINION OF THE COURT

¶6PER CURIAM:

¶7The parties to this appeal seek to be named first inventor of certain moldable plastic compositions in administrative proceedings pending in the United States Patent Office under 35 U.S.C. § 135 (Interference Nos. 96,167 and *57496,50o).1 By opinion and order of February 8, 1972, the district court dismissed as moot this ancillary action brought by plaintiffs, pursuant to 35 U. S.C. § 24, to secure discovery for use in such proceedings. Although considerable delay in the determination of this action has unfortunately resulted from the prior appeals (see Vogel v. Jones, supra), the appeals cited in note 4 below, and this appeal, and despite some concern regarding the manner in which this August 1970 action was handled in the district court following the remand of the case to it in June 1971, we have concluded, after a careful review of the record, that the abovementioned district court order was not erroneous.2

¶8Under the circumstances presented by the record in this appeal, where the Assistant Commissioner of Patents has repeatedly made clear 3 that plaintiffs had no right to take testimony in this interference proceeding and hence production of evidence by ancillary discovery proceedings was moot, the February 8, 1972, district court order will be affirmed.4

¶11. See Decision of February 10, 1971, Decision of April 1, 1971, refusing to modify such February 10 Decision, Decision of May 12, 1971, by Board of Patent Interferences denying motion under Rule 243, requesting the setting of a testimony period, and Decisión of June 25, 1971. In the above-mentioned May 12, 1971, Decision, this language appears:

“In addition, we note that the question of ‘Jones’ entire course of conduct, etc. was raised in the motion for leave to file further argument, et seq., filed by Vogel on November 7, 1968. See 2, supra. The Motion was dismissed as untimely and Vogel did not petition from the dismissal. At this late date, said issue is a fortiori untimely.”

¶12In the June 25, 1971, Decision, the Assistant Commissioner of Patents said:

“The purpose of 35 U.S.C. 24 is to enlist the powers of the federal courts to assist in the conduct of contested cases in the Patent Office. The provisions of that section are of assistance in interference cases only when results of action thereunder may be material in the determination of priority. In this case where the sole question is the benefit of a prior application by one of the parties, which question is normally readily determined from official records, it is not considered that discovery would be useful.”