A Question of First Impression: Do Federal Courts Have Subpoena Powers to Support Attorney Disqualifications from TTAB Proceedings?

A Question of First Impression: Do Federal Courts Have Subpoena Powers to Support Attorney Disqualifications from TTAB Proceedings?

In a case of first impression, the Eastern District of Pennsylvania was recently asked to determine whether 35 U.S.C. § 24 provided courts with the power to issue subpoenas in support of petitions to disqualify attorneys from Trademark Trial and Appeals Board (TTAB) proceedings.  Under the facts of the case, § 24 did not authorize the requested subpoenas. Peer Bearing Co. v. Roller Bearing Co. of Am., 2012 U.S. Dist. LEXIS 179782 (E.D. Pa. Dec. 19, 2012) [enhanced version available to lexis.com subscribers].

Subpoena powers under § 24 were deemed subject to two conditions:

  1. Subpoenas could only be issued in support of "contested cases;" and
  2. The discovery sought had to be otherwise authorized by the USPTO.

"[N]ot all proceedings before the USPTO are 'contested cases,'" the court said,  "and the USPTO regulatory framework appears to exclude petitions to disqualify from the scope of this term."

However, the court left undecided whether petitions to disqualify were "contested cases" under § 24. The question was not relevant under the facts because § 24's second condition had not been met.

"Even if they are 'contested cases,'" the court said, "[we] would still not have the power to issue RBC's subpoenas, because the discovery RBC seeks is not authorized by the USPTO."

The court noted that 37 C.F.R. Part 11, which exclusively governs petitions to disqualify:

  1. exempts petitions to disqualify from even the narrow discovery allowed in disciplinary proceedings; and
  2. subjects petitions to disqualify to the USPTO Director's ad-hoc procedural determinations.

"It would be unreasonable," the court said, "to find that this amounts to a standing authorization for discovery in support of petitions to disqualify."

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