concluding that a party could not immediately appeal an ancillary order compelling discovery after distinguishing cases where production is denied and “no other court may ever be in a position to order production”
How later courts described this case
- concluding that a party could not immediately appeal an ancillary order compelling discovery after distinguishing cases where production is denied and “no other court may ever be in a position to order production”
- explaining that subsequent panel decisions, "not being an en banc decision, may not be viewed as having overruled our earlier [panel decision]”
Written by the judges who cited it.
The opinion
MOORE, Circuit Judge
(concurring):
Although I would not disturb Judge Burke’s order on appeal, my reasons differ somewhat from those expressed by the majority. 1
Two professors, learned in the field of federal procedure, have written that “An order of a district court allowing or denying discovery in [a] proceeding ancillary to a patent interference case in the Patent Office is appealable as a final judgment.” 8 Wright & Miller, Federal Practice & Procedure § 2006, at 3 (Supp. 1974).
This is a patent interference case in the Patent Office and this proceeding in the United States District Court for the Western District of New York is ancillary thereto. The conditions mentioned have been met. The authors declare that it makes no difference whether the order grants or denies discovery. At first blush there might be some basis for a distinction but upon analysis the blush quickly fades. Denial forecloses the party seeking production from placing before the Patent Office or a court such evidence of fraud as the documents might disclose; granting will reveal that which it is contended should be concealed. In choosing between these alternatives it is probably better to lean towards disclosure. If the documents disclose fraud the truth should be revealed; if no fraud is disclosed, Xerox should not be harmed. If the nature of the documents is so confidential that Xerox feels that they should not be disclosed, the merits of this question, not presently before us, can be tested in future proceedings. What effect, if any, the Board will give to whatever may be in the documents is for their determination. If fraud be irrelevant to a decision as to priority of invention, this issue is for the Patent Office — not for us. Therefore, on balance, despite my dislike for the “old-fashioned and semi-barbaric” contempt procedure, I view that procedure as the best present means of disclosing the truth and protecting each of the parties. Evolutionary process in certain procedural phases of the law is slow. Possibly our lawmakers or even the courts will find a better solution eventually.
The documents in question, apparently not having been produced even for in camera inspection by the trial judge, were not made the subject of any ruling as to the confidential content thereof. They are not before us on appeal. Therefore it remains for some other court on some other occasion to pass upon this issue. It is enough at this juncture and on these specific facts to decide whether the order of the district court should be affirmed and I would so hold.
. Specifically, I cannot subscribe to the majority’s prophecy of what the Board will do with respect to the “priority of invention” issue. Nor do I accept any en banc requirement in this Circuit for not following a 51-year old decision, Tucker v. Peiler, 297 F. 570 (2d Cir., 1924), if applicable.