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Thomas C. Walsh

Abstract

When courts ignore the plain meaning of statutes, they fail to interpret the statutes in accordancewith the objective intent ofCongress. This has happened in relation to 35 U.S.C. §§ 23 and 24, which are statutes governing discovery rules for proceedings within the United States Patent and Trademark Office’s courts. As a result, the law has been in a state of flux for nearly fifty years. In 1952, Congress passed the Patent Act of 1952. As part of the Act, Congress passed 35 U.S.C. § 23, which gives discretionary authority to the Director of the United States Patent and Trademark Office to create discovery rules for proceedings within the United States Patent and Trademark Office’s courts, and 35 U.S.C. § 24, which mandates that the Federal Rules of Civil Procedure apply under certain circumstances and that federal district courts are to become involved in proceedings before a court within the United States Patent and Trademark Office’s courts. Until 1971, the federal district courts did not have trouble reconciling these seemingly conflicting statutes because no discovery rules had been created by theUnited States Patent and Trademark Office’s courts to apply. Thus, the Federal Rules of Civil Procedure applied. However, in 1971, the Director created discovery rules for the United States Patent and Trademark Office courts. This caused the federal district courts to have difficulty reconciling 35 U.S.C. § 23 with 35 U.S.C. § 24. The federal district courts began to defer to the discovery rules created for theUnited States Patent and TrademarkOffice’s courts rather than deferring to the plainmeaning of 35 U.S.C. § 24. This deferential interpretation is the Narrow View of a federal district court’s powers under 35 U.S.C. § 24, while the plain meanings of 35 U.S.C. §§ 23 and 24 represent the Broad View of a federal district court’s powers under 35 U.S.C. § 24. Even though the Narrow View (and to a certain extent, the Broad View) relies on legislative history to defend its interpretation, courts should not use legislative history when reconciling 35 U.S.C. §§ 23 and 24. Legislative history is too subjective to accurately determinewhat Congress’s intent actually was in passing the statute because legislative history includes details that may or may not have impacted the statute’s passage. To interpret a statute accurately, courts should evaluate the plain meaning of the statute. Because 35 U.S.C. § 23 uses the word “may” when discussing the Director of the United States Patent and Trademark Office’s ability to create discovery rules and because 35 U.S.C. § 24 uses the word “shall” when describing when the Federal Rules of Civil Procedure apply, two conclusions can be drawn. First, the plainmeaning of these statutes reveal that the Federal Rules of Civil Procedure are the minimum standard of discovery rules to apply in the affected proceedings. Second, the discovery rules that the Director creates may allow for more discovery, not less. Furthermore, 35 U.S.C. § 24 also uses the word “shall” to describe when the federal district courts must become involved in these proceedings, which indicates that the federal district courts and the courts within the United States Patent and Trademark Office are supposed to work together in the applicable cases. As a result, the legal doctrines of judicial duty and judicial power reveal what role the federal district courts are to play in these proceedings. Judicial duty gives a court the ability to apply—but not to interpret—a statute, while judicial power gives a court the extra ability to interpret a statute while applying it. Because the Federal Rules of Civil Procedure are a creature of the United States Supreme Court, the federal district courts, not the courts within the United States Patent and Trademark Office, have judicial power over the Federal Rules of Civil Procedure. Therefore, if the courts within the United States Patent and Trademark Office misapply the Federal Rules of Civil Procedure, the federal district courts should have the opportunity to correct thismisinterpretation, at least in an appellate capacity.

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