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
"[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:
"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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