Petition — Goodbar v. Parker

IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

No. YO -293

REID C. GOODBAR and ARTHUR M. PRESSLEY,

Junior Party Patentees,

Petitioners,

vs.

DONALD W. BANNER, Commissioner of Patents

and Trademarks,

MARVIN A. CHAMPION, NORMAN G. TORCHIN, and

MICHAEL SOFOCLEOUS, Members U.S. Patent and

Trademark Office Board of Patent Interference,

and

_ WILLIAM KLEIN, Senior Party Applicant,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

LTE SEER OI. ARE AHA MES NES HANES T AN TOTTI FOOT SSCA. ARAM SS IRRITATION S CIC EINER SID:

JosepH J. C. Rana

330 Madison Avenue

New York, New York 10017

Counsel for all Petitioners

Of Counsel

JosEPH J. CATANZARO

FREDERICK F. CaLVETTI

Pennie & EpmMonps

330 Madison Avenue

New York, New York 10017

Attorneys for all Petitioners

INDEX

To Petition:

REG a TS aot i Lah

Reasons for Granting the Writ ....................

I. In Denying Jurisdiction, The CCPA Committed

Error Which Will Seriously Erode Long Standing

TE ac RS ei

II. There Is A Clear And Substantial Conflict Be-

tween The Second Circuit And The CCPA Re-

garding The Relief Permissible Under PTO

Discovery Rule 37 CFR 1.287(c) ..............

ETS SOLES EEE a Sa

To Appendiz:

Decision of the Court of Customs and Patent

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CrraTIons

Cases

Brenner v. Manson, 383 U.S. 579 (1966) ...........

Cochran v. Kresock, 530 F.2d 385, 188 USPQ 533

is ee

Cook v. Dann, Comm’r of Pats., 522 F.2d 1276, 188

WO I BPD goons on ve cc secccecsey

10

Al

|

,

|

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ii INDEX

PAGE

Dwersified Industries, Inc. v. Meredith, 572 F.2d 596

CS NY RE ics whic oo kik vos CAE hs eiendk te 7

Goodbar v. Banner, —— F.2d ——, 202 USPQ 106

PAE ak BORE A Ch ww besewis sostbewnsdeucthuwes 2,5, 7

Harper & Row Publishers, Inc. v. Decker, 423 F.2d

487 (7th Cir. 1970), aff'd 400 U.S. 348 (1970) .. 7

Shattuck v. Hoegl, 555 F.2d 1118, 194 USPQ 405

COE GES MERE o FGeikok dv ad awash eener sei ree 8,9

U.S. Board of Parole v. Merhige, 487 F.2d 25 (4th

Cir. 1973), cert. denied 417 U.S, 918 (1974) ..... 7

U.S. v. Hemphill, 369 F.2d 589 (4th Cir. 1966) ...... 7

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IN THE

Supreme Court of the United States

OCTOBER TERM, 1979

PE ba ait Fax

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>

Rem C. Gooppar and ArrHur M. Pressey,

Junior Party Patentees,

Petitioners,

vs.

Donatp W. Banner, Commissioner of Patents

and Trademarks,

Marvin A. CHampion, Norman G. Torourn, and

MicHaset Soroc.teous, Members U.S. Patent and

Trademark Office Board of Patent Interference,

and

Wun Kzern, Senior Party Applicant,

Respondents.

’%

¥

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

Petitioners respectfully pray that a Writ Of Certiorari

issue to review the order of the United States Court of Cus-

toms and Patent Appeals entered in this proceeding on May

31, 1979.

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2

Decision Below

The decision of the United States Court of Customs and

Patent Appeals was reported as Goodbar v. Banner,

F.2d ——, 202 USPQ 106 (CCPA 1979) and appears in

the Appendix.

Jurisdiction

The decision of the United States Court of Customs and

Patent Appeals was rendered on May 31, 1979. This Peti-

tion For Writ Of Certiorari was filed within 90 days of that

date. This Court’s jurisdiction is invoked under 28 USC

1256. Brenner v. Manson, 383 U.S. 519 (1966).

Question Presented

Whether the United States Court of Customs and Patent

Appeals (CCPA) erred in holding that it is without juris-

diction to entertain a Petition For Writ Of Mandamus to

vacate a discovery order issued by the U.S. Patent and

Trademark Office Board of Patent Interferences (board)

because the discovery order might not result in evidence re-

lated to the issue of priority or to an ancillary issue involv-

ing priority?

Statement of the Case

The Petition For Writ Of Mandamus derived from

United States Patent Interference No. 98,935. On March 6,

1975, the U.S. Patent and Trademark Office (PTO) declared

an interference between Reid C. Goodbar and Arthur M.

Pressley (Goodbar), junior party patentees,’ and William

* U.S. patent No. 3,703,073 issued to Goodbar on November 21,

1972 based on application serial No. 63,755, filed August 14, 1970.

3

G. Klein (Klein), senior party applicant.’

The junior party in an interference is the first to present

evidence on the issue of priority, i.e., evidence that the

junior party was the first to conceive the invention and the

first to reduce it to practice. Goodbar presented evidence

of his conception and reduction to practice during his testi-

mony-in-chief and the senior party, Klein, during cross-

examination, made certain discovery requests under 37

CFR 1.287(b). That section provides:

(b) The provisions of paragraph (a) of this section

are without prejudice to the right of a party, where

appropriate, to obtain production of documents or

things during cross-examination of an opponent’s wit-

ness or during his own period for rebuttal testimony.

[Emphasis added. ]

Goodbar refused Klein’s requests on the grounds that

those requests were inappropriate. On July 18, 1978,

Klein filed a Motion For Production of Documents under

37 CFR 1.287(c). That section provides:

(c) Upon motion (§ 1.246)* brought by a party dur-

ing the period for preparation for testimony, or there-

after as authorized under § 1.246, and upon a showing

that the interest of justice so requires, the Board of

Patent Interferences may order additionel discovery

as to matters under the control of a party within the

scope of the discovery rules of the Federal Rules of

*U. S. application serial No. 262,108 was filed by William G.

Klein on June 12, 1972 and is a division of application serial No.

29,822 filed April 4, 1970, which matured into U. S. patent

No. 3,678,675.

537 OFR 1.246 provides:

A motion or other paper belatedly filed will not normally be

considered except upon a showing, under oath or in the form

of a declaration (§ 1.68), of sufficient cause as to why such

motion or paper was not timely presented.

4

Civil Procedure, specifying the terms and conditions of

such additional discovery. An order by the Board

granting or denying a motion under this paragraph

shall not be subject to review prior to a decision award-

ing priority. [Emphasis added. ]

Klein’s motion contained twenty-two (22) requests for

production of documents. The board denied all but three

(3) of Klein’s requests. Because Goodbar responded to

one request and is prepared to respond to another, only one

request was in issue. Goodbar petitioned to the Commis-

sioner of Patents and Trademarks (Commissioner) to re-

verse the decision of the board granting discovery on the

remaining request.

Goodbar maintained that the board abused its discre-

tion. Goodbar’s principle objection was that the board

had improperly provided discovery of documents which

are privileged and/or proprietary without just cause or

proper safeguards.

After offering an interpretation of the board’s decision,

the Commissioner affirmed the board’s order. However,

that interpretation did not obviate Goodbar’s principal ob-

jection to the board’s decision. Consequently, Goodbar

petitioned the CCPA for issuance of a Writ Of Mandamus

pursuant to 28 USC 1651(a) of the All Writs Act, 28 USC

1542(1), 35 USC 141 and CCPA Rule 7.1.

Goodbar urged that the CCPA had jurisdiction to enter-

tain his petition based on that Court’s specific holding in

Cook v. Damn, Comm’r of Pats., 522 F.2d 1276, 188 USPQ

175 (CCPA 1975). Although the CCPA denied Cook’s

Petition For Writ Of Mandamus on the merits of his peti-

tion, the CCPA specifically held that it had the authority

to issue a Writ of Mandamus to review a decision by the

board under 37 CFR 1.287(c) prior to a determination of

priority.

5

On May 31, 1979, Goodbar’s petition was, nevertheless,

dismissed on the ground that the CCPA was without

power to entertain the Petition For A Writ Of Mandamus

“since the matter complained of is not one which would

be cognizable before this court on appeal from a decision

of the board awarding priority. [A8]”

The CCPA’s ratio descedendi centers on the following,

—— F.2d at ——, 202 USPQ at 109:

The language relied upon here by petitioners was not

intended to convey the meaning they wish to ascribe

to it. In Cook, the court stated “The Patent [and]

Trademark Office (PTO) respondents’ challenge to our

jurisdiction under the All Writs Act (28 U.S.C.

§1651(a)) must be rejected.” 522 F.2d at 1276, 188

USPQ at 176. We were there responding to a sugges-

tion by the Commissioner in the PTO brief that “As

previously submitted in the commissioner’s opposition

to the petition in Duffy v. Tegtmeyer [citation], the

court lacks jurisdiction to issue an order in the nature

of mandamus on the commissioner in a patent case.”

(Emphasis ours.)

Thus, while it may not be clear from the face of the

court’s opinion in Cook, we did not there intend to

imply that this court had jurisdiction over the action

complained of by Cook. We were there dealing with

this court’s basic power to act under the All Writs

Act in attempting to correct the erroneous interpreta-

tion of the law by the PTO to the effect that this

court could never issue a writ of mandamus to the

Commissioner in a patent case. As to the merits in

Cook, we were of the opinion that, assuming subject

matter jurisdiction to be present, we could not find

an abuse of discretion on the part of the PTO. In

Cook we did not decide whether we had jurisdiction.

[A6-A7] [Insertions and emphasis in original.]

Reasons for Granting the Writ

The CCPA candidly admitted that the “recent prolifera-

tion of petitions for extraordinary relief” is the reason

for it to “once more . . . analyze the jurisdictional basis

which empowers us to grant such relief [A7].”

Goodbar submits that the CCPA should not be permitted

sua sponte to limit its jurisdiction as a means of alleviat-

ing its case load particularly where the self-imposed limita-

tion prevents it from fulfilling its duties as an appellate

court.

Goodbar asserted that the board had improperly pro-

vided discovery of documents which contain privileged

and/or proprietary information. This is the very type of

situation where appellate courts have not hesitated to

invoke their jurisdiction by way of mandamus because it

is well recognized that once the information is improperly

exposed the privileged and proprietary nature of that in-

formation is lost forever. This Court’s review, therefore,

is necessary to safeguard these important rights and

privileges.

A further reason for the Court to grant the writ is that

a conflict presently exists between the CCPA and the Sec-

ond Circuit Court of Appeals regarding the extent of the

CCPA’s jurisdiction in discovery matters under 37 CFR

1.287(¢). Guidance from this Court is necessary if uni-

formity among the courts is to be obtained.

I

In Denying Jurisdiction, The CCPA Com-

mitted Error Which Will Seriously Erode

Long Standing Legal Principles.

Courts have issued writs of mandamus under circum-

stances similar to those involved here to prevent dis-

semination of privileged and confidential information.

7

Diversified Industries, Inc. v. Meredith, 572 F.2d 596 (8th

Cir. 1977); U.S. Board of Parole v. Merhige, 487 F.2d 25

(4th Cir. 1973), cert. denied, 417 U.S. 918 (1974); Harper

& Row Publishers, Inc. v. Decker, 423 F.2d 487 (7th Cir.

1970), aff'd 400 U.S. 348 (1970); U.S. v. Hemphill, 369

F.2d 539 (4th Cir. 1966).

The CCPA in Cochran v. Kresock, 530 F.2d 385, 396,

188 USPQ 553, 561 (CCPA 1976) recognized the principle

that proprietary information should be guarded and also

set forth the standard for review under 37 CFR 1.287(c)

involving such information:

Paragraph (c) of Rule 287 states that the addi-

tional discovery provided by the paragraph may be

granted by the board. It is therefore clear that the

discovery sought by appellant is not a matter of right,

but rather is discretionary with the board. We do

not ordinarily interfere in matters which are discre-

tionary within the Patent and Trademark Office unless

there has been a clear showing of abuse of that dis-

cretion. Cook v. Dann, Comm’r of Pats., 522 F.2d

1276, 188 USPQ 175 (CCPA 1975). [Emphasis in

original. |

Thus, the CCPA recognized the importance of safeguard-

ing this type of information from improper dissemination.

Nevertheless, it now states that it is without jurisdiction to

entertain a writ of mandamus seeking to do just that.

The CCPA’s statements in Cochran, its reliance therein

on Cook and the fact that the petition in Cook was denied

rather than dismissed* demonstrate that the CCPA’s failure

*The CCPA explained the significance between the terms

*‘denied’’ and ‘‘dismissed’’, —— F.2d at ——, 202 USPQ at 109:

Even in cases where the writ does not issue, there is a sig-

nificant difference between dismissing a petition for lack of

jurisdiction and denying a petition for want of a good case

on the merits, [ A7].

8

to find jurisdiction is little more than a method to reduce

“the recent proliferation of petitions.” This Court should

therefore grant this petition and issue a Writ of Certiorari

so that the significant issues raised in the Petition For Writ

Of Mandamus may be given a proper review.

There Is A Clear And Substantial Conflict

Between The Second Circuit And The CCPA

Regarding PTO Discovery Rule 37 CFR

1.287(c).

The CCPA based its decision on the fact that review of

the board’s order would not be ancillary to priority and

consequently would not be subject to review on appeal to

the CCPA from a final decision of the board awarding pri-

ority of invention. The CCPA does, however, have the

power to review the board’s discovery decision on appeal.

37 CFR 1.287(c) specifically provides for such a review.

The rule states, in pertinent part:

An order by the Board granting or denying a motion

under this paragraph shall not be subject to review

prior to a decision awarding priority. [Emphasis

added.}

The Second Circuit recently reviewed this rule in Shat-

tuck v. Hoegl, 555 F.2d 1118, 194 USPQ 405 (2nd Cir. 1977).

The matter there under review was a decision of the Dis-

trict Court for the Northern District of New York in con-

nection with an ancillary PTO interference discovery pro-

ceeding instituted under 35 USC 24. Judge Meskill writing

for the Court stated, 555 F.2d at 1121, 194 USPQ at 408:

A party in the position of IBM is not left without a

remedy. The Patent Office has recently adopted a rule

[37 CFR 1.287] under which discovery may be con-

ducted in interference proceedings. Moreover, a party

g

disappointed by an interference proceeding has access

to two Article III courts. An appeal may be taken to

the Court of Customs and Patent Appeals. If that

court finds that discovery against a party should have

been ordered, it can vacate the decision of the Patent

Office . . . Inasmuch as the chosen forum for review

may be able to remedy any error in the discovery pro-

ceedings there is no reason to allow this interlocutory

appeal. [Footnotes omitted; emphasis added. ]

Even though Shattuck involved an interlocutory appeal,

that fact does not distinguish that authority here. Simply,

the Second Circuit has recognized that matters involving

discovery before the board are reviewable by the CCPA

and that the CCPA can remedy errors in such proceedings.

The CCPA, in holding that it lacks jurisdiction to review

discovery matters either by way of mandamus or appeal,

disregards the Second Circuit’s holding in Shattuck.

As a consequence of the decision below, petitioners are

obliged to turn over what may well be critical, privileged

documents as well as substantial proprietary information

to a competitor without review of any court even after

priority has been determined. What is more anomalous is

that the CCPA is able to conclude that the subject matter

sought to be discovered does not involve a question of

priority and is not ancillary to priority while prefacing

this conclusion by saying that ‘‘it is not known whether

the requested discovery will actually lead to legally relevant

and admissible evidence. [Emphasis in original.]’’ (A7).

Goodbar submits this Court should grant this petition

to resolve this anomalous situation so that uniformity

among courts will exist regarding discovery proceedings

under 37 CFR 1.287(c).

10

CONCLUSION

For the reasons presented, this Petition for a Writ

of Certiorari should be granted.

Respectfully submitted,

JosepH J. C. Ranaryi

Counsel for all Petitioners

Of Counsel

JosEPH J. CaTANZARO

Freperick F’, Catverti

Pennie & Epmonps

330 Madison Avenue

New York, New York 10017

Attorneys for all Petitioners

Al

APPENDIX

Decision of the Court of Customs and Patent Appeals.

UNITED STATES COURT OF CUSTOMS AND

PATENT APPEALS

Appeal No. 79-555.

On Petition for Writ of Mandamus

Interference No. 98,935.

é.

bs

Rem C. Goopspar and ArtHur M. PREs.Ley,

Junior Party Patentees,

Petitioners,

v.

Donatp W. Banner, Commissioner of

Patents and Trademarks,

Marvin A. CHampion, Norman G. Torcurn, and MicHaEn

Sorocige0us, Members U. S. Patent and Trademark Office

Board of Patent Interference, and

WituiaM Kern, Senior Party Applicant,

Respondents.

é,

7

Decwrep: May 31, 1979

Before Markey, Chief Judge, Ricn, Baupwin, Lanz,* and

Mier, Associate Judges.

Ricu, Judge.

* Judge Lane took part in the consideration and decision of

this matter but died before the decision was announced.

A2

Appendix—Decision of the Court of Customs

and Patent Appeals.

Petitioners seek a writ of mandamus, directing the

Patent and Trademark Office (PTO) Board of Patent

Interferences (board) to vacate its order compelling

petitioners to produce for inspection and copying certain

documents in connection with interference No. 98,935. Re-

spondents are the Commissioner of Patents and Trade-

marks (Commissioner), the board, and Klein, petitioners’

interference adversary. Oppositions to the petition have

been filed by the Commissioner and Klein.

This petition was kindled by testimony elicited from Dr.

Roger Varin, former Director of Research for Riegel

Textile Corporation, assignee of the junior party peti-

tioners’ patent. This testimony was taken during the

junior party petitioners’ testimony-in-chief period. Specif-

ically, on cross-examination, Dr. Varin testified that he

kept a file of correspondence generated while he was em-

ployed by Riegel. After testifying that he was familiar

with the contents of the file, the following was elicited:

Q. Did you find anything relating to this proceeding?

A. There were some things.

As a result of this testimony, respondent Klein filed a

Motion For Propuction or Documents Unper 37 CFR

1.287 (b) and (c) requesting, inter alia, the production of

Dr. Varin’s correspondence file for inspection and copying.

Petitioners opposed production of the file. They as-

serted that the request was overly broad and indefinite and

would require the production of documents containing con-

fidential and proprietary information. They also stated

that Klein has failed to show that production of the file

would be in the “interests of justice” as required by 37

CFR 1.287(c).

The board granted respondent Klein’s motion, but only

to the extent that the documents to be produced were the

mee eer

ss

A3

Appendix—Decision of the Court of Customs

and Patent Appeals.

ones referred to in Dr. Varin’s testimony as being related

to this proceeding. The board stated:

With regard to requests 2, 4 and 5 [request 5 is

the only one at issue here], the motion is granted as

being in the “interest of justice”. As to request 2,

there is no ostensible objection. As to requests 4 and

d, the motion paper indicates that Klein ascertained

the probable existence of the photographs [the subject

of request 4] and the “somethings” [sic, some things]

during cross-examination and their existence could not

have been determined earlier by inspecting the docu-

ments served under $1.287(a). Also request 5 is con-

sidered properly limited to the subject matter of the

counts m isswe imasmuch as it ts limited to “some-

things” [sic, some things] related to this proceeding.

[Emphasis ours. ]

The board adhered to this decision on reconsideration.

Relief was requested from the Commissioner by a peti-

tion to reverse the decision of the board. Commissioner

Banner denied the petition with the following comments:

Petitioners maintain that the board should have denied

request 5 because the documents sought thereby were

not limited in scope to a relevant time period. It is

apparent that petitioners have misinterpreted the

board’s order. A fair reading of the board’s order,

taken in light of the motion and opposition before the

board and Dr. Varin’s cross-examination, demonstrates

that the board only ordered petitioners to make dis-

covery of the “some things” in his file which relate “to

this proceeding,” or as respondent’s counsel put it

those things which “relate to this subject matter.”

Since the board’s order properly limits the documents,

both as to scope of time and subject matter, it follows

A4

Appendix—Decision of the Court of Customs

and Patent Appeals.

that the board correctly ruled on respondent’s re-

quest 5. [Emphasis ours.] Accordingly, the decision

of the board granting request 5 is affirmed [emphasis

in original].

Petitioners assert an abuse of discretion on the part of

the board in granting the request, and on the part of the

Commissioner in refusing to reverse the board’s decision.

They claim, as they did before the board, that the request

is overly broad and indefinite, and that the material sought

to be discovered is proprietary and confidential. We are

asked to issue mandamus to vacate the decision of the

board and its order requiring the production of documents

as per request 5.

Petitoners have also, by motion, requested oral argu-

ment on their Petrrion ror MANDAMUS. Respondent Klein

opposes the motion.

OPINION

1. Request for Oral Argument

The motion for oral argument is denied. Oral arguments

on petitions for extraordinary relief are not granted unless

directed by this court. See CCPA Rule 7.1(b). The court

does not find oral argument helpful in cases such as this

where the issues are clear and the case is not complex. Cf.

United States v. Watson, Judge, United States Customs

Court and Michelin Tire Co., Appeal No. 79-17, argued

May 2, 1979 (oral argument granted on Government's

motion due to complexity and importance of issues).

2. The Requested Writ

Under 28 USC 1651(a), the All Writs Act, this court, as

one “established by Act of Congress,” has the power to

issue all writs “necessary or appropriate in aid of [our]

AS

Appendix—Decision of the Court of Customs

and Patent Appeals. —

jurisdiction” (emphasis ours). Loshbough v. Allen, 56

CCPA 913, 404 F.2d 1400, 160 USPQ 204 (1969). The All

Writs Act is not an independent grant of appellate juris-

diction, and, therefore, the appellate jurisdiction which

the writs are “in aid of” must have some other basis.

Roche v. Evaporated Milk Assoc., 319 U.S. 21, 23-26 (1943).

This basis, of course, must be found within the subject

matter jurisdiction of this court, since the All Writs Act

does not bestow upon this court the power to adjudicate

issues falling outside of this jurisdiction. The crucial

question is thus whether we have subject matter jurisdic-

tion over the issues presented in the petition for extraor-

dinary relief. For this reason, it is incumbent upon any

petitioner seeking such relief in this court to demonstrate

that we have subject matter jurisdiction over the issue

involved.

The present petition arises out of an interference. Spe-

cifically, it is the result of a decision of the board which

granted the senior party’s request for additional discovery,

made by motion under 37 CFR 1.287(b) and (ce). Since

there is no appeal from decisions of the board on motions,

any support for the jurisdiction of this court must be

found elsewhere.*

* We, like all other federal appellate courts, are bound by the

final judgment rule which limits our jurisdiction to final decisions

of the PTO appeal boards, as contrasted with decisions which are

merely interlocutory. See Feigelman v. Meyers, 476 F.2d 1475,

177 USPQ 530 (COPA 1973) ; United States Treasury v. Synthetic

Plastics Co., 52 CCPA 967, 341 F.2d 157, 144 USPQ 429 (1965) ;

Seamless Rubber Co. v. Ethicon, Inc., 46 CCPA 950, 268 F.2d 231,

122 USPQ 391 (1959). While certain exceptions to this rule ex-

ist in order to further the interests of justice and judicial economy,

see €.g., Stabilisierungsfonds Fur Wein v. Zimmermann-Graeff KG,

198 USPQ 154 (CCPA 1978) ; Toro Co. v. Hardigg Industries Inc.,

549 F.2d 785, 193 USPQ 149 (CCPA 1977); Knickerbocker Toy

Co., Inc, v. Faultless Starch Co., 59 CCPA 1300, 467 F.2d 501, 175

USPQ 417 (1972), we find no reason to extend the exception to

the case at bar.

A6

Appendix—Decision of the Court of Customs

and Patent Appeals.

This court has appellate jurisdiction over interferences

by virtue of 28 USC 1542 and 35 USC 141. The latter

section limits our jurisdiction to issues involving “the

question of priority,” which question includes matters

ancillary to priority. Duffy v. Tegtmeyer, 489 F.2d 745,

180 USPQ 317 (CCPA 1974). Thus, we have no jurisdic-

tion to entertain this petition unless it can be said to in-

volve a matter ancillary to priority over which we would

have appellate jurisdiction in the normal course of events

on appeal from a decision of the board awarding priority.

As shown below, this appeal does not involve such a matter.

In support of their position, petitioners rely on Cook

v. Dann, 522 F.2d 1276, 188 USPQ 175 (CCPA 1975), in

which this court rejected a challenge to its jurisdiction

under the All Writs Act. In that case, Cook sought a writ

of mandamus to direct the board to vacate its decision

limiting the scope of discovery in an interference, an issue

quite similar to that which we are now confronting. Ac-

cording to petitioners here, ‘‘this court held in Cook v.

Dann, Comm’r of Patents [citation] that it had the au-

thority to issue a writ of mandamus to review a decision

by the PTO under 37 CFR 1.287 prior to a determination

of priority.”

We do not read Cook so broadly. The language relied

upon here by petitioners was not intended to convey the

meaning they wish to ascribe to it. In Cook, the court

stated “The Patent [and] Trademark Office (PTO) re-

spondents’ challenge to our jurisdiction under the All Writs

Act (28 U.S.C. §1651(a)) must be rejected.” 522 F. 2d

at 1276, 188 USPQ at 176. We were there responding to

a suggestion by the Commissioner in the PTO brief that

“As previously submitted in the commissioner’s opposi-

tion to the petition in Duffy v. Tegtmeyer [citation], the

court lacks jurisdiction to issue an order in the nature of

A7

Appendix—Decision of the Court of Customs

and Patent Appeals.

mandamus on the commissioner in a patent case.’’ (Em-

phasis ours.)

Thus, while it may not be clear from the face of the

court’s opinion in Cook, we did not there intend to imply

that this court had jurisdiction over the action complained

of by Cook. We were there dealing with this court’s basic

power to act under the All Writs Act in attempting to

correct the erroneous interpretation of the law by the PTO

to the effect that this court could never issue a writ of

mandamus to the Commissioner in a patent case. As to the

merits in Cook, we were of*the opinion that, assuming sub-

ject matter jurisdiction to be present, we could not find an

abuse of discretion on the part of the PTO. In Cook we

did not decide whether we had jurisdiction.

The recent proliferation of petitions for extraordinary

relief has caused us once more to analyze the jurisdictional

basis which empowers us to grant such relief. It cannot

be assumed that subject matter jurisdiction is present in

every case. Even in cases where the writ does not issue,

there is a significant difference between dismissing a peti-

tion for lack of jurisdiction and denying a petition for want

of a good case on the merits.

In the case before us, the action complained of by peti-

tioner would not be subject to review by this court on

appeal after a determination of priority by the board.

This matter relates to the scope of discovery; a witness

has testified that he has certain material relevant to the

interference proceeding. The opposing party seeks this

material. At this stage of the proceeding, it is not known

whether the requested discovery will actually lead to

legally relevant and admissible evidence. This is cer-

tainly not a question of priority, and we are of the opinion

that it is not ancillary to priority as the case law has

developed the meaning of that term. The happenstance

that the ordered discovery might result in evidence bearing

A8

Appendizx—Decision of the Court of Customs

and Patent Appeals.

upon or even establishing priority does not make this issue

ancillary to priority.’

We therefore hold that we are without power to enter-

tain this petition for a writ of mandamus since the matter

complained of is not one which would be cognizable before

this court on appeal from a decision of the board awarding

priority.

The petition is dismissed. The motion for oral argument

is denied.

*In contrast, the question of whether evidence was properly

admitted, as well as questions regarding the weight to be accorded

evidence, have been held to be ancillary to priority, and, hence,

reviewable by this court after a determination and award of

priority. Piel v. Falkner, 57 CCPA 1132, 426 F.2d 412, 165 USPQ

708 (1970).