Frilette v. Kimberlin

ADAMS, Circuit Judge

(dissenting):

The principal issue addressed on the rehearing in banc is whether we should now overrule In re Natta, 1 which decided that 35 U.S.C. § 24 2 permits the parties to an interference proceeding pending in the Patent Office to obtain discovery in the district courts under the provisions of the Federal Rules of Civil Procedure.

I concur in Judge Van Dusen’s careful analysis of the language and history of section 24, which indicates that it was reasonable for this Court to conclude in Natta that the reference in section 24 to the Federal Rules was intended to include the broad discovery procedures therein. I have some additional observations, however, regarding the respect a court should accord its earlier decisions, particularly a decision such as Natta, and regarding the practical effects that the holding announced today by the majority will have on interference litigation in the future.

I.

Section 24 was enacted in 1952. In 1968 this Court, in Natta, interpreted the intent of Congress, as expressed in the statute, as follows: “This statute manifests a clear congressional intent to make available to parties to patent interferences the broad discovery provisions of the Federal Rules of Civil Procedure.” 3 The Natta Court’s construction of section 24 conformed to pri- or interpretations by the Courts of Appeals for the Fifth 4 and Seventh 5 Circuits and by the District Courts for the Western District of Michigan 6 and the Northern District of Oklahoma. 7 Subsequent to our decision in Natta, the same interpretation has been adopted by the Courts of Appeals for the Tenth 8 and Second 9 Circuits, and by the District *219 Courts for the District of Columbia 10 and the District of Massachusetts. 11 And this Court has applied its Natta interpretation of the statute on a number of occasions. 12 Indeed, no court of appeals has adopted a narrower reading of section 24 than that set forth in Natta.

The parties to these appeals who would have us upset our decision in Nat-ta contend that the adoption of discovery procedures by the Patent Office in 1971 necessitates a reversal of this Court’s interpretation of a congressional statute enacted in 1952.

II.

The basic issue before this Court is whether an intermediate federal appellate court that has for approximately seven years adhered to one interpretation of the congressional intent embodied in section 24 may properly adopt a new interpretation of that statute because of the actions of an administrative agency and the Court’s present views regarding the optimal allocation of jurisdiction in the federal system. I believe that an appropriate respect for the doctrine of stare decisis and for the separation of judicial and legislative functions should preclude such a result.

Stare decisis is one of the fundaments of our legal system. All lawyers, I suppose, are familiar with the classic words of Lord Coke, “The knowne certaintie of the law is the safetie of all.” 13 Indeed, this aphorism is emblazoned on the walls

of some of our most prestigious law schools. 14 The knowledge that a tenet of law, once decided, will remain constant permits the public to order their lives in reliance upon the prior decisions of the court. 15 In addition, observance of the precept of stare decisis advances the efficient administration of the judicial system. More significantly, a court’s adherence to its earlier decisions encourages public confidence in the legal system by providing evidence that the court’s holdings are the product of principled and carefully reasoned consideration and that the courts dispense equal treatment to all litigants similarly situated. 16 As Justice Brandéis observed, “Stare decisis is usually the wise policy, because in most matters it is more important that the applicable rule of law be settled than that it be settled right . . . . This is

commonly true even where the error is a matter of serious concern, provided correction can be had by legislation,” 17 as it can in the case before this Court.

The constitutional doctrine of the separation of powers lends added significance to the principle of stare decisis in the area of statutory construction. In deciding Natta in 1968, this Court was called upon to construe the congressional intent expressed in section 24. Our interpretation then became an integral part of the statute. 18 When a court has once determined the meaning Congress intended its words to carry, the court has completed its judicial function. Ab *220 sent amendment, the legislative intent is not altered by time. Therefore, excepting extraordinary circumstances, a court, in altering its interpretation of the meaning to be derived from the words of the statute, encroaches on the power of Congress to enact or amend legislation.

Of course, when this Court first interprets a statute, then the statute becomes what this Court has said it is. Such an initial interpretation is proper, and unavoidable The Court undertakes the task of interpretation, however, not because the Court has any special ability to fathom the intent of Congress, but rather because interpretation is unavoidable in the decision of the case before it. When the law has been settled by an earlier case then any subsequent “reinterpretation” of the statute is gratuitous and neither more nor less than an amendment: it is no different in effect from a judicial alteration of language that Congress itself placed in the statute. 19

If in construing a statute a court has misapprehended the intention of Congress, the error is susceptible to correction by the legislature. If this Court has failed to perceive the intent of Congress, or has interpreted a statute in such a manner as to thwart the legislative purpose, Congress may change it. “The lessons of experience are not learned by judges alone.” 20 Statutory constructions are, in this respect, dissimilar from constitutional precedents, where the only alternative to overruling a judicial interpretation is the cumbersome procedure of constitutional amendment. Courts should therefore exercise greater restraint in overruling statutory as distinguished from constitutional precedents. 21

Additionally, when, as in the case before us, the allegedly erroneous statutory interpretation has been made by a court of appeals, Supreme Court review provides an additional remedy for an unsound construction.

A federal court should be particularly circumspect in setting aside its construction of a statutory provision which is still under review by Congress. In the interim since our decision in Natta, numerous unsuccessful attempts have been made in Congress to amend section 24. For example, prior to the Patent Office’s promulgation of Rule 287, bills were introduced in 1968 22 1969 23 and 1971 24 seeking to amend the final sentence of the first paragraph of section 24 so as to provide that “the provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and the production of documents and things shall apply to contested cases in the Patent Office insofar as consistent with [Patent Office] regulations.” (emphasis added) Other legislation introduced during the same period, however, proposed no changes in section 24. 25 Bills introduced since the promulgation of Rule 287 have offered a number of resolutions of the dual system of discovery available in the Patent Office and in the district courts. S. 2930 26 and H.R. 11868 27 — like the bills introduced in 1968, 1969 and 1971 — provide that the Federal Rules of Civil Procedure should apply to cases in the Patent Office only “insofar as consistent with Patent Office regulations estab *221 lished under section 23 of this title.” On the other hand, S. 1321 28 and S. 2504, 29 although limiting the district court’s jurisdiction in Patent Office cases, would require the Patent Office to provide discovery procedures substantially the same as those available in the district courts under Natta.

These various unsuccessful attempts to modify section 24 provide no clear signal that in Natta this Court erred in con- *222 staling the legislative intent underlying that provision. Further, since some of these proposals are still under consideration by Congress, we should be wary of infringing on the authority of the legislative branch by seeking to accomplish by judicial fiat what Congress has contemplated doing, but so far has declined to do, through amendatory legislation. 30

III.

The social benefits derived from adherence to the doctrine of stare decisis and from the separation of the judicial and legislative powers mandate that a court cast aside its prior interpretation of statutory language only in extraordinary circumstances. In the present case, Judge Van Dusen’s comprehensive discussion of the legislative history demonstrates that the Natta court’s interpretation was certainly not unreasonable. In addition, the Natta opinion has not been undercut by subsequent decisions. Nor does Natta conflict with any previous, overriding, more fundamental policy of federal law.

The majority opinion in this case offers two justifications for overruling Natta. The first is the Patent Office’s adoption of a rule providing limited discovery in the Patent Office. Nothing in section 24, however, makes the district court’s jurisdiction dependent on the failure of the Patent Office to adopt discovery procedures. Moreover, the promulgation of a rule by an administrative agency subsequent to the enactment of section 24 could hardly alter the legislative intent embodied in the statute. Judicial estimation of the legislative purpose should not turn on the vagaries of an administrative agency in first rejecting, then accepting, and possibly again rejecting a procedural device. In addition, the statutory grant of authority under which the Patent Office adopted Rule 287 31 predates this Court’s decision in Natta. Recent recognition by the Patent Office of the practice of discovery, therefore, would not seem to justify a reversal of this Court’s established reading of section 24.

The second justification advanced by the majority for redefining the congressional will underlying section 24 is what the majority regards as an undesirable burden on judicial administration *223 brought about by broader discovery. The majority asserts that allowing Patent Office litigants discovery in the district courts increases the caseload in those courts. Also, since any discovery order becomes an appealable decision, 32 the courts of appeals are confronted with a spate of questions which in ordinary federal litigation would be considered interlocutory and therefore not subject to appeal. Furthermore, the majority states that there is no centralized control over the discovery proceedings, since an independent action may be brought in each district in which discoverable evidence is located. Concededly the above consequences flow in some degree from section 24, as interpreted in Natta. But jurisdiction in the federal courts is controlled by Congress, not by the judiciary. Courts may not refuse to exercise jurisdiction granted by statute even though such exercise might place additional burdens on the courts, and even though the courts may not agree with the procedures thus sanctioned.

Assuming, arguendo, that the inefficiencies generated by the Natta construction of section 24 exist and that they are as pernicious as they are portrayed by the majority, they may be remedied by Congress. The judiciary is not alone in possessing the insight to recognize impediments to efficient judicial administration. Also, the judicial branch is not as well equipped as the legislature to investigate the problem and to evaluate the potential resolutions.

The majority has apparently concluded that since some modicum of discovery is now available in the administrative agency, the federal judicial system would be operated most efficiently by removing, for all practical purposes, patent discovery proceedings from the district courts. But the majority’s conclusion rests solely on its own theorization. The Court has no empirical evidence regarding the extent of the saving of judicial resources which could be achieved without discarding Natta. For instance, the courts may be able to reduce the volume of patent discovery litigation by clearly indicating that in the exercise of their discretion the district courts will refuse to grant discovery which is or will be available in the Patent Office unless the party seeking discovery can show substantial need for the discovery in the district court rather than in the Patent Office.

Nor does the record contain any evidence whether, accepting the Natta construction, discovery litigation could be reduced by imposing costs or other sanctions on recalcitrant parties. In addition, litigants dissatisfied with the outcome of interference litigation in the Patent Office may initiate a trial de novo in the district court, 33 where the full discovery provisions of the Federal Rules will, of course, be applicable. There is, however, no data available regarding the relative impact the majority’s holding will have in reducing the judicial resources devoted to discovery in Patent Office cases as compared with the increase in district court time which will be expended on the de novo trial of interferences. Also, this Court does not possess the means to assess the extent to which this construction of the discovery available will alter the outcome of interference litigation.

Thus, neither the adoption of discovery procedures by the Patent Office nor the prospect of relief from the burden placed on the courts by the necessity of deciding discovery issues in administrative interference proceedings would appear to vindicate a reconsideration of the interpretation of section 24 that until today had been accepted by every Court of Appeals that had addressed the subject.

IV.

Even were the proposed justifications for reconsidering Natta more substantial, I would pause before repudiating that decision because of the effect the majority’s ruling will have on the availability of discovery in proceedings in the *224 Patent Office. The essence of the discovery provided by Rule 287(a) is that each party must provide his adversary with a copy of each document in his possession on which he intends to rely in presenting his case, and reasonable access to each “thing” on which he intends to rely, as well as a list of the witnesses he intends to call. Under 287(c) during the period for the preparation of testimony or thereafter a party may, upon a showing “that the interest of justice so requires,” obtain additional discovery within the scope of the discovery rules of the Federal Rules of Civil Procedure, if the materials sought are within the control of the adverse party.

These Patent Office discovery procedures are in several notable respects more restricted than those available under the Federal Rules. First, the automatic discovery — discovery of right — applies only to that evidence on which the movant’s adversary intends to rely. There is no discovery of materials which may bolster the movant’s own case except at the discretion of the Board of Patent Interferences. In contrast, the Federal Rules make discovery of both supportive and detrimental evidence equally available. 34

Second, in order to obtain discretionary discovery a party must demonstrate that “the interest of justice requires” that he have access to the material. On the other hand, the Federal Rules require only that the material sought be “reasonably calculated to lead to the discovery of admissible evidence.” 35 The standard that “the interest of justice so requires” appears to be a more demanding test than the requirement of “good cause” formerly contained in Rule 34, 36 and even stricter than the requisite showing of “substantial need” for the disclosure of “work product.” 37

Third, the scope of the materials which Rule 287 authorizes the Board of Patent Interferences to order divulged may not be as broad as that available under section 24, as interpreted by Natta. It is doubtful whether Rule 287 provides for discovery relating to issues beyond the merits of the interference proceeding itself. In Duffy v. Barnes, for instance, the district court concluded that Rule 287 did not authorize discovery pertaining to existence of fraud in the filing of a patent application since a motion to have the application stricken pursuant to Patent Office Rule 56 38 is not within the ambit of an interference proceeding. At least under the trial judge’s view of the scope of Rule 287, therefore, the majority’s holding today will foreclose a party from obtaining discovery regarding the existence of fraud in the filing of a patent application.

Fourth, Rule 287 is more restrictive than the Federal Rules as to the time when discovery may be obtained. Rule 287(a) does not require the junior party to furnish the senior party with the specified discovery materials until after the close of the period set by the Board of Interferences for the consideration of motions. Then the senior party need not provide his materials to the junior party until the junior párty has completed taking his testimony-in-chief.

It is obvious, therefore, that the non-discretionary discovery under 287(a) will be of no use to the junior party in preparing his case-in-chief. Also, discovery may not be obtained under 287(c) until after the close of the motions period. *225 Under the majority’s reading of section 24, therefore, which would confine the parties to discovery through the administrative proceeding, there is no device by which a litigant may obtain discovery of evidence which is expected to become unavailable before the commencement of discovery in the Patent Office under Rule 287. Nor may a party obtain discovery earlier than 287 allows even though such accelerated discovery would materially accelerate termination of the litigation.

Fifth, Rule 287 provides only for discovery of information that is under the control of one of the parties. Thus the majority’s reading of section 24 deprives litigants of the benefit of pretrial disclosure of relevant information that may be in the hands of non-parties.

Aside from the much narrower scope given discovery by the majority’s ruling, another serious defect is apparent. In overruling Natta, the majority rejects the construction of section 24 which, as previously noted, has been accepted by every court of appeals that has considered the question. Therefore the extent of discovery available to Patent Office litigants will hereafter depend upon the fortuity of the location of the evidence sought to be discovered, since only within the Third Circuit will discovery be confined to the limited discovery available administratively. This lack of homogeneity among the courts of appeal may result in serious injustice where disclosure of one party’s evidence is controlled by the law of this Circuit, while divulgence of that of the adversary party is governed by the decisions of another Circuit.

V.

Therefore, on the basis of the considerations set forth above and the statutory interpretation explicated by Judge Van Dusen, I would adhere to the interpretation of section 24 propounded in Natta. There remains, therefore, only the application of that construction of the statute to the facts of these cases.

I concur in Judge Van Dusen’s discussion of the proper resolution of Frilette v. Kimberlin. In view of the majority’s holding today, an extensive discussion of how I would resolve Duffy under this Court’s previous decision in Natta would serve no useful purpose. Suffice it to say therefore, that I find no abuse of discretion 39 by the district court in allowing Duffy to proceed with discovery related to whether Barnes and Preziosi filed their patent application fraudulently. 40

Circuit Judge VAN DUSEN concurs in this opinion.

. 388 F.2d 215 (3d Cir. 1968).

. 35 U.S.C. § 24 (1954).

. 388 F.2d at 217.

. Gladrow v. Weisz, 354 F.2d 464 (5th Cir. 1965).

. Natta v. Zletz, 379 F.2d 615 (7th Cir. 1967).

. Korman v. Shull, 184 F.Supp. 928 (W.D.Mich.1960).

. Hogan v. Zletz, 151 U.S.P.Q. 103 (D.C.N.D.Okla.1966). See also Ochsner v. Millis, 382 F.2d 618 (6th Cir. 1967).

. Natta v. Hogan, 392 F.2d 686 (10th Cir. 1968).

. Babcock & Wilcox Co. v. Combustion Engineering, Inc., 430 F.2d 1177 (2d Cir. 1968), affirming per curiam 314 F.Supp. 235 (D.Conn.1968).

. Lomex v. Kihara, 175 U.S.P.Q. 538 (D.C.D.C.1972).

. Sheehan v. Doyle, 181 U.S.P.Q. 64 (D.Mass.1973).

. See, e. g., Vogel v. Jones, 464 F.2d 573 (3d Cir. 1972); Babcock & Wilcox Co. v. Foster Wheeler Corp., 457 F.2d 1307 (3d Cir. 1972); Montecatini Edison S. p. A. v. E. I. duPont de Nemours, 434 F.2d 70 (3d Cir. 1970); Bab-cock & Wilcox Co. v. Foster Wheeler Corp., 432 F.2d 385 (3d Cir. 1970); Babcock & Wilcox Co. v. Foster Wheeler Corp., 415 F.2d 777 (3d Cir. 1969).

. Coke, Institutes 395 (12th ed. 1738) (Epilogue to Pt. 1, Bk. 3).

. Lord Coke’s maxim is, for instance, inscribed along the ceiling of the Grand Stairway of William Draper Lewis Hall of the University of Pennsylvania Law School.

. Hart & Sax, The Judicial Process 601.

. See Boys Markets v. Local 770, Retail Clerks Union, 398 U.S. 235, 257 , 90 S.Ct. 1583 , 26 L.Ed.2d 199 (1970) (Black, dissenting); Helvering v. Hallock, 309 U.S. 106, 129 , 60 S.Ct. 444 , 84 L.Ed. 604 (1970) (dissenting opinion).

. Burnet v. Coronado Oil & Gas Co., 285 U.S. 393, 406 , 52 S.Ct. 443, 447 , 76 L.Ed. 815 (1932) (dissenting opinion).

. Gulf, Colo. & Santa Fe Ry. v. Moser, 275 U.S. 133, 136 , 48 S.Ct. 49 , 72 L.Ed. 200 (1927).

. Boys Markets, supra, 398 U.S. at 257 , 90 S.Ct. at 1596 . (Black, dissenting).

. Swift & Co. v. Wickham, 382 U.S. 111, 134 , 86 S.Ct. 258, 271 , 15 L.Ed.2d 194 (Douglas, dissenting).

. Boys Markets, supra, 398 U.S. at 259 , 90 S.Ct. 1583 (Black, dissenting); United Gas Improvement Co. v. Continental Oil Co., 381 U.S. 392, 406 , 85 S.Ct. 1517 , 14 L.Ed.2d 466 (1965) (Douglas, dissenting); Burnet v. Coronado Oil & Gas Co., 285 U.S. 293 , 406, 52 S.Ct. 443 , 76 L.Ed. 815 (1932) (Brandéis, dissenting).

. S. 3892, 90th Cong., 2d Sess. § 24 (1968).

. S. 1246, 91st Cong., 1st Sess. § 24 (1969).

. S. 643, 92nd Cong., 1st Sess. § 24 (1971).

. See S. 2756, 91st Cong., 1st Sess. § 24 (1969). See also S. 1042, 90th Cong., 1st Sess. § 24 (1967); S. 2597, 90th Cong., 1st Sess. § 24 (1967). Both of the latter were proposed prior to our decision in Natta but subsequent to the earlier decisions, supra, to the same effect.

. S. 2930, 93d Cong., 1st Sess. § 24 (1973).

. H. R. 11868, 93d Cong., 1st Sess. § 24 (1973).

. S. 1321, 93d Cong., 1st Sess. § 23 (1973):

Sec. 23. Issue of Subpenas and Other Orders by Patent Office, Review and Enforcement.

(a) Any party of record in any Patent Office proceeding may apply at any time to the primary examiner or other presiding official for subpenas or other orders to provide discovery, testimony, or evidence, and he shall issue the same ex parte. The primary examiner or any member of the Board of Appeals may also issue such subpenas or orders on his own motion, in any proceeding. Such subpenas and orders may issue against the applicant or any person within the jurisdiction of the United States, whether or not he is a party of record.

(b) (1) The Commissioner shall establish rules for taking such discovery, testimony, and evidence. Such rules shall provide the parties of record all discovery permitted and the sanctions for noncompliance therewith prescribed in the Federal courts pursuant to the Federal Rules of Civil Procedure, as procedural necessities within the Officer permit. * * *

(2) The Commissioner shall also establish rules governing inter partes proceedings by which subpoenas and orders issued pursuant to subsection (a) of this section may be sustained, quashed, or modified.

(c) (1) Agency action pursuant to subsections (a) and (b) of that section shall not be deemed final decisions or orders for the purposes of chapter 13 of this title. Judicial review of such order may be had upon review of the final decision or order in the entire proceedings. . . . Judicial review of agency action pursuant to subsections (a) or (b) of this section may also be had in the course of a civil enforcement proceeding. Such proceeding may be by way of application by any party aggrieved by refusal or failure to comply with a subpoena or order issued pursuant to subsections (a) or (b) of this section, to the United States District Court for the District of Columbia, for an order to show cause why the person refusing or failing to comply with such subpoena or order should not be commanded by the court to comply therewith.

. S. 2504, 93d Cong., 1st Sess. § 23 (1973):

§ 23. Issue of subpoenas and other orders by Board of Examiners-in-Chief; review and enforcement

(a) Except as otherwise provided in section 135 of this title, any party to a proceeding before the Board of Examiners-in-Chief may apply at any time to any member of the panel for subpoenas or discovery orders to provide testimony, evidence, depositions, or other information, and such members shall issue the same ex parte. Any member of the Board of Examiners-in-Chief may also issue such subpoenas or orders on his own motion, in any proceeding. Subpoenas and orders may issue against the applicant or any person within the jurisdiction of the United States, whether or not he is a party in the proceeding.

(b) (1) The Commissioner shall establish rules for obtaining such discovery, testimony, evidence, depositions, or other information. Such rules shall provide the parties all discovery permitted, and the sanctions for noncompliance therewith prescribed, in the Federal courts pursuant to the Federal Rules of Civil Procedure, as now in force or as amended hereafter, with such different time limits as the Commissioner may by regulation prescribe. * * *

(2) The Commissioner shall also establish regulations governing proceedings by which subpoenas and orders issued pursuant to subsection (a) of this section may be sustained, quashed, or modified by the Board of Examiners-in-Chief.

(c) (1) Agency action pursuant to subsections (a) and (b) of this section shall not be deemed final decisions or orders for the purposes of chapter 13 of this title. Judicial review of orders pursuant to subsections (a) and (b) of this section may be had upon review of the final decision or order in the entire proceeding.....Judicial review of agency action pursuant to subsections (a) or (b) of this section may also be had in the course of a civil enforcement proceeding. Such proceeding may be by way of application by any party aggrieved by refusal or failure to comply with a subpoena or order issued, and not quashed, pursuant to subsections (a) or (b) of this section, to the United States District Court for the District of Columbia, for an order to show cause why the person refusing or failing to comply with such subpoena or order should not be commanded by the court to comply therewith. * * *

. It might be argued that the majority’s action here in overturning its own interpretation of a federal statute is similar to the Supreme Court’s conduct in Boys Markets v. Local 770, Retail Clerks Union, 398 U.S. 235 , 90 S.Ct. 1583 , 26 L.Ed.2d 199 (1970). However, there are two significant distinctions between the situation presently before this Court and that in Boys Markets .

First, in Boys Markets Justice Brennan reasoned that the intervening decision in Avco Corp. v. Aero Lodge No. 735, 390 U.S. 557 , 88 S.Ct. 1235 , 20 L.Ed.2d 126 (1968), had undermined the Court’s previous construction of the interrelationship between the Norris-LaGuardia Act and section 301(a) of the Labor-Management Relations Act. Avco “has produced an anomalous situation which, in our view, makes urgent the reconsideration of Sinclair. [ 370 U.S. 195 , 82 S.Ct. 1328 , 8 L.Ed.2d 440 (1962)] The principal practical effect of Avco and Sinclair taken together is nothing less than to oust state courts of jurisdiction in § 301(a) suits where injunctive relief is sought for breach of a no-strike obligation.” 398 U.S. at 244-245 , 90 S.Ct. 1583, 1589 . Such result, Justice Brennan found, was inconsistent both with the Court’s conclusion in Dowd Box, 368 U.S. 502 , 82 S.Ct. 519 , 7 L.Ed.2d 483 (1962) — that the purpose of section 301(a) was to supplement rather than to encroach upon the pre-existing jurisdiction of the state courts — and with the doctrine of the “federal policy of labor law uniformity” 398 U.S. at 245-246 , 90 S.Ct. 1583 , expressed by the Court in Lucas Flour, 369 U.S. 95 , 82 S.Ct. 571 , 7 L.Ed.2d 593 (1962). In contrast, our previous decision in Natta has been reaffirmed, rather than undercut, by our intervening decisions. Compare Mac-Pherson v. Buick Motor Co., 217 N.Y. 382 , 111 N.E. 1050 (1916).

Second, the Supreme Court concluded that the earlier decision in Sinclair contravened one of the fundamental policies of federal labor law: “Thus, because Sinclair, in the aftermath of Avco, casts serious doubt upon the effective enforcement of a vital element of stable labor-management relations — arbitration agreements with their attendant no-strike obligations — we conclude that Sinclair does not make a viable contribution to federal labor policy." 398 U.S. at 249 , 90 S.Ct. at 1591 . Our decision in Natta, on the other hand, does not conflict with any such overriding policy of federal law.

. 35 U.S.C. § 23 (1954).

. Babcock & Wilcox Co. v. Foster Wheeler Corp., 415 F.2d 777 (3d Cir. 1969).

. 35 U.S.C. § 146 (1954).

. F.R.Civ.P. 26(b)(1).

. F.R.Civ.P. 26(b)(1).

. See Advisory Committee Notes to the 1970 Amendments to Rule 34.

. F.R.Civ.P. 26(b)(3).

. 37 C.F.R. § 1.56 :

“Improper applications. Any application signed or sworn in blank, or without actual inspection by the applicant, and any application altered or partly filled in after being signed or sworn to, and also any application fraudulently filed or in connection with which any fraud is practiced or attempted on the Patent Office, may be stricken from the files.”

. In Montecatini Edison v. E. I. duPont de Nemours & Co., 434 F.2d 70, 72 (3d Cir. 1970), this Court ruled that on review of discovery orders under section 24, the district court’s actions should be tested against the standard of abuse of discretion.

. Three factors provide a basis for the district court’s decision permitting discovery limited to the issue of fraud in the filing of the application. First, there is serious question whether the materials in question may be obtained through discovery in the Patent Office, because of the strictures imposed on such discovery by Rule 287. Second, the requested discovery, if available in the Patent Office at any time, could not have been obtained under Rule 287 at the time Judge Coolahan permitted such discovery in the district court, since the discovery period in the Patent Office had not commenced. Third, it was possible that such earlier discovery would have led to a measureable advance of the litigation and, conceivably, to its prompt termination.

Two other considerations indicate that in some circumstances the refusal of discovery by the district court might well be warranted first, the inconvenience occasioned by the possibility of discovery conducted simultaneously before two tribunals, and second, the potentially disruptive impact of such proceedings on the methods adopted by the Patent Office for disposition of controversies before it. However, the district court’s conclusion that, in this case, the factors favoring a grant of discovery outweigh those suggesting the contrary result is not, in my judgment, so clearly improper as to constitute an abuse of discretion.