The opinion
SEITZ, Circuit Judge
(dissenting).
I dissent because I believe the district court committed error in construing 35 U.S.C. § 24 to include the right to “discovery” of matter which would be inadmissible as evidence in Interference proceedings in the Patent Office.
I view 35 U.S.C. § 24 as providing the mechanics *by which parties can make at least part of the record for the use of the Patent Office in deciding an Interference case. The immediate progenitor of Section 24 is found in old Title 35 Section 54, enacted in 1922. 1 In that year old Section 54 was amended to authorize the use of the subpoena duces tecum to obtain documents for use as evidence in Interference proceedings. 2 This it did by incorporating therein the rights given under the then existing subpoena duces tecum statute (Revised Statutes § 869). But I am equally satisfied that the 1922 statute did not authorize the use of the subpoena duces tecum to obtain documents which would not be admissible as evidence in Patent Office Interference proceedings. I say this because of the explicit language of the controlling subpoena duces tecum statute. It provided that before authorizing the issuance of a subpoena duces tecum the judge was required to find, inter alia, that there was reason to believe that the documents so sought “would be competent and material evidence for the party applying therefor.” This is to be contrasted, for example, with that portion of F.R.C.P. 26 (b) which requires production of material which, though not itself admissible, may lead to the discovery of admissible evidence.
I do not understand that the majority challenge the foregoing propositions. Rather, the majority conclude that by making the changes reflected in the present statute ( 35 U.S.C. § 34 ), particularly by substituting the words “Federal Rules of Civil Procedure,” Congress intended to enlarge the statutory power of the district court to include the right to compel “discovery” to the full extent permitted by such rules. I cannot find such a Congressional intent.
The subpoena duces tecum statute, which was incorporated by reference into the 1922 statute, was repealed by the adoption of the Federal Rules which took place prior to the 1952 recodification of the patent laws. It was quite natural, in recodifying, to replace the reference to the statute governing the issue of subpoena duces tecum with the following language:
“ * * * The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office.”
When the 1952 amendment is considered in conjunction with its statutory antecedent and its particular Congressional history, I think it reveals an intent to provide only the same power formerly given the district court under the old subpoena duces tecum statute.
What does the Congressional history reveal? The Senate and House Committee reports upon the proposed recodification both recite: 3
“Although the principal purpose of the bill is the codification of Title 35, *222 United States Code, and involves simplification and clarification of language and arrangement, and elimination of obsolete and redundant provisions there are a number of changes in substantive statutory law. These will be explained in some detail in the revision notes keyed to each section which appear in the appendix of this report”
With respect to § 24, the appendices of both House and Senate reports stated as follows:
“Based on Title 35, U.S.C., 1946 ed., §§ 54, 55 and 56 (R.S. 4906, amended Feb. 18, 1922, ch. 58, § 7, 42 Stat. 389 , 391-2; R.S. 4908).”
“Three sections of the existing statute are combined with some changes in language and placed in part 1 since they apply to trade-mark eases in the Patent Office as well as to patent cases. Reference to a repealed statute in the first paragraph is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.”
Was the inclusion of full discovery rights, which the majority necessarily find was incorporated into the 1952 version of the statute, a change in the “substantive statutory law” ? I cannot see how that can be seriously doubted in view of the prior law. Consider also that the drafters of the Federal Rules felt it necessary to explicitly incorporate that power into the Rules in order to change the generally applicable pre-existing law. Moreover, anyone familiar with “discovery” practices will attest to the practical significance of the change. I would therefore expect the Congressional history or the Reviser’s notes to the section to reflect a recognition of the change. They do not.
The majority opinion states that, “* * * if Congress had desired to limit discovery to the type available under Rule 45(b), it simply would have pointed to that specific rule instead of referring generally to the Federal Rules of Civil Procedure.” The answer is that Congress did not refer to the Federal Rules generally. Rather, it carefully limited the reference to the Rules relating to the attendance of witnesses and to the production of documents and things. ■ The language thus faithfully tracked the scope of the statutory provision which it replaced. So viewed, it was only intended, in my opinion, to incorporate the provisions of the Federal Rules to the extent they constituted the current procedure in those particular areas of trial practice.
I conclude that 35 U.S.C. § 24 does not include the authority to use the Federal Rules of Civil Procedure to obtain production of documents which are not admissible in evidence or needed to examine witnesses.
Although the district court was confronted with a motion for production under Rule 34, in order to express my views fully as to the scope of 35 U.S.C. § 24 , let me treat the motion as though it were a subpoena for the production of documents at trial under Rule 45(b). So viewed, I believe the right to have that production should be tested under the usual eviden-tiary standards. Certainly this would have been the procedure required of the district court prior to the amendment of the statute because “discovery” was not then permitted. The fact that the Patent Office rules authorize it to make rulings on evidence in deciding Interference proceedings does not militate against my construction of the statute. The Office presumably had that power prior to the 1952 amendment and yet the district court could not then have permitted the use of the subpoena duces tecum to obtain discovery. I believe the district court has today the same power under this statute as it possessed under its predecessor.
I would therefore reverse the judgment of the district court but, in doing so, make it clear that the appellee could renew its application. However, appellee’s rights under the renewed application would be tested solely by admissibility standards. I would permit the renewed application because the Interference proceedings had reached the period which had been assigned to appellee to complete *223 its testimony. In other words it was making its trial record for the Interference proceedings. It was therefore entitled under the statute, in my view, to the production of documents for introduction into evidence or for the purpose of examining witnesses.
I think, contrary to the majority, that even the language quoted by the majority from Gladrow v. Weisz, 354 F.2d 464 (5th Cir. 1965) shows that the court was talking about the use of the Federal Rules solely in connection with production for use in making the record for the Interference proceedings. The court said that Rule 34 could be used to obtain documents required for examination or cross-examination of a witness. I agree. But this is not to say that such production is not to be tested by evidentiary standards. In my view the Gladrow case reached the result which I think is dictated here. I do not read Natta v. Zletz, 379 F.2d 615 (7th Cir. 1967) to the contrary. Indeed, had the district court determined here that the production was to be measured by evi-dentiary rather than discovery standards I would have no quarrel with its interpretation of the statute.
Finally, contrary to the implication in the majority opinion, I cannot find that wé are concerned with any issue of procedural or substantive due process. The breadth of even-handed rules governing the production of evidence does not raise a constitutional issue in this context. Nor do I think any personal preference as to the desirability of full discovery is here involved. The matter is one for Congress to treat, if it desires, after full consideration of the problem.
I express no opinion on the particular discovery rulings made by the district court because I think this court lacks jurisdiction under the interlocutory appeal statute ( 28 U.S.C. § 1292 (b)) to review them. Indeed, I do not think the order allowing the appeal can be construed to have authorized the submission of such issues. The same is true of the other issues raised by appellant. I say this because the pertinent portion of the statute only permits interlocutory review of “a controlling question of law.” In my view the controlling question of law here is the interpretation of 35 U.S.C. § 24 , not the other matters' raised. Furthermore, because it was not urged as a basis for the appeal, I express no view as to whether this type of order could be considered to be a final order for appeal purposes.
. “The clerk of any court of the United States, for any district or Territory wherein testimony is to be taken for use in any contested case pending in the Patent Office, shall, upon the application of any party thereto, or of his agent or attorney, issue a subpoena for any witness residing or being within such district or Territory, commanding him to appear and testify before any officer in such district or Territory authorized to take depositions and affidavits at any time and place in the subpoena stated. But no witness shall be required to attend at any place more than forty miles from the place where the subpoena is served upon him; and the provisions of section 647 of Title 28 [Revised Statutes § 869] relating to the issuance of subpoenas duces tecum shall apply to contested cases in the Patent Office.”
. Although these statutes are not limited to production, I shall limit my discussion thereto because that is our problem.
. S.Rep. No. 1979, 82d Cong.2d Sess., P. 4 (1952). H.Rep. No. 1923, 82d Cong. 2d Sess., P. 5, U.S.Code Congressional and Administrative News p. 2394 (1952).