                                                                   FILED
                                                       United States Court of Appeals
                                                               Tenth Circuit

                                                                June 17, 2016
                                    PUBLISH
                                                Elisabeth A. Shumaker
                   UNITED STATES COURT OF APPEALS Clerk of Court

                               TENTH CIRCUIT


 EL ENCANTO, INC.; HATCH CHILE
 ASSOCIATION,

       Petitioners - Appellants,

 v.                                                  No. 15-2012

 HATCH CHILE COMPANY, INC.;
 MIZKAN AMERICAS, INC., the
 successor in interest to Border Foods,
 Inc.,

       Respondents - Appellees.



                 Appeal from the United States District Court
                        for the District of New Mexico
                       (D.C. No. 1:14-MC-00045-MV)


Martha L. Fitzgerald, Brownstein Hyatt Farber Schreck, LLP, Denver, Colorado
(Eric R. Burris and Nury H. Yoo, Brownstein Hyatt Farber Schreck, LLP,
Albuquerque, New Mexico, with her on the briefs), for Petitioners-Appellants.

Nickay B. Manning, Law Office of Nickay B. Manning, LLC, Corrales, New
Mexico (Ross B. Perkal and Kevin Lynn Wildenstein, Southwest Intellectual
Property Services, LLC, Albuquerque, New Mexico, and Rita M. Haeusler,
Hughes Hubbard & Reed, Los Angeles, California, on the briefs, for Respondents-
Appellees.


Before GORSUCH, EBEL, and BACHARACH, Circuit Judges.
GORSUCH, Circuit Judge.

      The Hatch Valley may be to chiles what the Napa Valley is to grapes.

Whether it’s the soil, the desert’s dry heat, or the waters of the Rio Grande, the

little town of Hatch, New Mexico, and its surroundings produce some of the

world’s finest chile peppers. Just ask any of the 30,000 people who descend on

the place every year for the chile festival.

      One thing we know about life and the law is that where value lurks

litigation will soon follow — and the Hatch Valley chile pepper supplies no

exception. After the Hatch Chile Company sought to trademark the term “Hatch”

for its exclusive use, a chile producing rival, El Encanto, objected. Before the

Trademark Trial and Appeal Board (TTAB), a division of the Patent and

Trademark Office (PTO), El Encanto argued that “Hatch” can’t be trademarked

both because it refers to a place and because Hatch Chile has used the term in a

misleading manner. To prove its case of deception, El Encanto sought to show

that Hatch Chile’s products regularly include chiles that aren’t even from the

Hatch Valley.

      As so many do these days, this seemingly mild dispute turned hot during

discovery. When El Encanto asked Hatch Chile to disclose the provenance of its

chiles, the company responded (maybe a little curiously) that it didn’t know the

answer and that El Encanto would have to ask its “co-packers and suppliers.” So

that’s just what El Encanto did, issuing a Fed. R. Civ. P. 45 subpoena to Mizkan


                                          2
Americas, Inc., for documents revealing the geographic source of Hatch Chile’s

peppers. But instead of yielding documents that request yielded motions practice.

After seeming to encourage El Encanto to ask its suppliers for just this

information, Hatch Chile filed a motion seeking a protective order. And Mizkan

added its own motion to quash.

      So apparently determined to keep the source of the chiles a secret, Hatch

Chile and Mizkan offered this rather paradoxical argument in their attempt to

defeat the subpoena. They began by acknowledging that parties to TTAB

proceedings may use Rule 45 subpoenas to compel nonparties to produce

documents at a deposition. But, they argued, requesting a deposition is a

necessary precondition to any document demand. Of course, El Encanto replied

that it didn’t want to waste everyone’s time with a deposition: documents would

suffice to answer its pretty simple question. But this response didn’t satisfy

Hatch Chile or Mizkan, for they told the district court that, needless and wasteful

though it might be, a deposition had to be convened — and because El Encanto’s

Rule 45 subpoena failed to seek one it had to be quashed. El Encanto’s discovery

request faltered, then, not because it demanded too much discovery — the usual

complaint. It faltered only because El Encanto demanded too little discovery. A

topsy turvy sort of argument, to be sure, but one aimed all the same at keeping the

source of Hatch Chile’s peppers a mystery. And one that met with considerable

initial success, for the district court agreed and granted Mizkan’s motion to quash.

                                         3
      So it is this curious case now comes to us. We, of course, review district

court discovery rulings for an abuse of discretion. But a district court always

abuses its discretion when it errs on a legal question, and we decide the presence

or absence of legal error de novo. So really in cases like this, where everything

turns on the interpretation of rules, regulations, and statutes, it’s a bit anomalous

to ask whether the district court abused its discretion. The real question is simply

whether we think the district court read the law correctly. See Frontier Ref. Inc.

v. Gorman-Rupp Co., 136 F.3d 695, 702 (10th Cir. 1998). And answering that

question here, we think it did not. For we see nothing in the federal rules, the

relevant statute, or the applicable regulations that commands the pointless process

Hatch Chile and Mizkan insist upon.

      Start with Rule 45. That rule, like the rest in the Federal Rules of Civil

Procedure, is supposed to be administered by courts and parties to ensure the

speedy and inexpensive resolution of all cases. Indeed, the rules committee only

last year amended Rule 1 to make this point unmistakable. See Fed. R. Civ. P. 1.

So how can it be that we must insist on an application of Rule 45 that would, by

everyone’s estimation, ensure only needless delay and expense? Months of

motions practice followed by a new subpoena and a deposition that no one really

wants just to secure documents the relevance of which no one seriously disputes?

Of course it’s true that, years ago, Rule 45 was often read as requiring a party to

notice a deposition if it wanted to compel nonparties to produce documents. But

                                          4
it’s also true that the rulemakers addressed this anomaly a quarter-century ago,

adding language to make plain that parties may compel a nonparty to produce

documents while “spar[ing]” everyone “the necessity” of a needless deposition.

See Fed. R. Civ. P. 45(a)(1) advisory committee’s note to 1991 amendment. So it

is that nothing in the federal rules today requires the pointless process Hatch

Chile and Mizkan demand.

      That, though, isn’t the end of the story but closer to its beginning. For the

federal statute that authorizes parties to TTAB proceedings to invoke federal

discovery processes, 35 U.S.C. § 24, was written long before the 1991

amendments to Rule 45. And it is the particular and maybe peculiar interaction

between this statute and the federal rules, Hatch Chile and Mizkan suggest, that

requires parties in TTAB proceedings to request a deposition in order to obtain

documents from nonparties.

      For our part, though, we just don’t see it. Section 24 says this:

      The clerk of any United States court for the district wherein
      testimony is to be taken for use in any contested case in the Patent
      and Trademark Office, shall, upon the application of any party
      thereto, issue a subpoena for any witness residing or being within
      such district, commanding him to appear and testify before an officer
      in such district authorized to take depositions and affidavits, at the
      time and place stated in the subpoena. 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 and Trademark Office.




                                         5
Everyone before us agrees that this case qualifies as a “contested” one. See

Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1319-20 (Fed. Cir. 2013)

(suggesting a possible definition of “contested” cases). And everyone agrees that

the TTAB is a division of the PTO. See 15 U.S.C. § 1067. So it is everyone

agrees that the first sentence of the statute allows parties like El Encanto to

compel nonparties like Mizkan to appear and testify at a deposition. But of

course that is not all the statute permits, for the second sentence goes on to say

that “[t]he provisions of the Federal Rules of Civil Procedure relating to the

attendance of witnesses and to the production of documents . . . shall apply.” 35

U.S.C. § 24 (emphasis added). And, as we’ve seen, Rule 45 today affords parties

the power to compel nonparties to produce documents without also convening a

deposition. In this way, and following this chain of logic, it seems to us that the

statute’s terms are ample enough to permit the very sort of efficient discovery El

Encanto seeks.

      To be sure, there’s room to disagree over exactly how much work the

second sentence of § 24 does. Some (including this court) have suggested that it

affords parties to contested PTO proceedings access to all of the Federal Rules of

Civil Procedure “relating to the attendance of witnesses and to the production of

documents and things,” including not only Rule 45’s provisions relating to

nonparty discovery but also Rule 34’s provisions relating to the production of

documents from the parties themselves. See, e.g., Natta v. Hogan, 392 F.2d 686,

                                          6
690 (10th Cir. 1968) (holding that the statute “does not limit discovery to that

permissible under Rule 45”); Natta v. Zletz, 379 F.2d 615, 618 (7th Cir. 1967);

Babcock & Wilcox Co. v. Combustion Eng’g, Inc., 430 F.2d 1177, 1178 (2d Cir.

1968) (per curiam). Others have suggested the second sentence does less work

than that. Though the statutory language appears to afford parties to contested

PTO proceedings the right to invoke all of the Federal Rules of Civil Procedure

relating to the attendance of witnesses and the production of documents, some

have argued that Congress really intended to afford parties to PTO proceedings

only the power to compel testimony and documents from nonparty witnesses

pursuant to the provisions of Rule 45. See, e.g., Frilette v. Kimberlin, 508 F.2d

205, 209, 212 (3d Cir. 1974) (en banc) (holding that the statute refers only “to the

matters encompassed by Fed. R. Civ. P. 45 . . .”).

      But, while which account of the statute you prefer might very well matter

for other purposes, it doesn’t much matter to the resolution of this appeal. On the

first account, the second sentence makes the full panoply of procedures relevant

to document production available to parties in contested PTO proceedings. On

the second account, the statute still affords parties the right to compel nonparties

to provide documents under Rule 45. Either way, parties to TTAB proceedings

may invoke Rule 45 and (again) that Rule today expressly allows a party to

compel nonparties to produce documents without also convening a deposition.




                                          7
      To be sure, you might at this point wonder which version of Rule 45 the

statute’s language means to reference. After all, § 24 was last amended in 1975,

long before Rule 45’s revision in 1991. So, you might ask, could it be that § 24

allows the parties to TTAB proceedings only those powers Rule 45 specified back

in 1975 rather than those it specifies today? We think not. Indeed, even Hatch

Chile and Mizkan don’t purvey this argument. The fact is that the plain language

of § 24 doesn’t suggest that a reader must look to the Federal Rules of Civil

Procedure as they were back when the statute was enacted. To the contrary, as

written the language suggests that a reader may look to the rules as they are found

on any given day, today included. And surely our job when interpreting statutes

is to read them as an ordinary citizen might, not to lay spring traps for the unwary

and force lay persons to become experts in the vestigial esoterica of every statute

and federal rule. See Dir., Office of Workers’ Comp. Programs v. Peabody Coal

Co., 554 F.2d 310, 322 (7th Cir. 1977); Norman J. Singer & J.D. Shambie Singer,

2B Sutherland Statutory Construction § 51:8 (7th ed. 2015) (“A statute which

refers to a subject generally . . . adopts the law on the subject at the time the law

is invoked, which includes all amendments and modifications subsequent to the

reference statute’s enactment.” (footnotes omitted)).

      Having exhausted two possible readings of the statute we must admit still a

third can be found in currency today. Some have suggested that for a party to

avail itself of any rights under § 24, it must first have the PTO’s approval to do

                                           8
so. For support, they point to the immediately preceding statute, 35 U.S.C. § 23,

a provision that affords the PTO the power to “establish rules for taking affidavits

and depositions required in cases in the” PTO. See, e.g., Rosenruist-Gestao E

Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437, 447-48 (4th Cir. 2007); Brown

v. Braddick, 595 F.2d 961, 966-67 (5th Cir. 1979); Sheehan v. Doyle, 529 F.2d

38, 39 (1st Cir. 1976) (per curiam). Of course, you might question whether the

power to establish rules for proceedings “in cases in the” PTO also conveys the

power to prescribe what rules the parties may follow once § 24 permits them

entry to federal court and access to the Federal Rules of Civil Procedure. But

even assuming (without deciding) it does and accepting this, the last possible

interpretation of the statute anyone’s suggested to us, we still don’t see how

Hatch Chile and Mizkan might prevail.

      We don’t because the PTO has issued rules allowing parties in contested

proceedings like this one to make use of Rule 45’s existing procedures. In patent

proceedings the PTO has expressly said that parties may seek and obtain

subpoenas for nonparty documents without a deposition. In fact, it has done so

twice. 37 C.F.R. § 41.156(a); id. § 42.52. To be sure, its regulations anticipate

that the parties will file a “motion” first with the PTO. But no parallel motion is

required in TTAB proceedings. Indeed, the PTO’s promulgated rules for TTAB

proceedings are even more generous than its rules for patent proceedings,

indicating that, “[e]xcept as otherwise provided,” all of the Federal Rules of Civil

                                          9
Procedure govern in “inter partes proceedings” (as everyone agrees this

proceeding is). Id. § 2.116. Neither do the TTAB rules ever “otherwise provide”

when it comes to Rule 45. See id. § 2.120. 1

       At this juncture, Hatch Chile and Mizkan reply by directing us to a sub-

regulatory manual. And whether by virtue of the operation of § 23 or thanks only

to judge-made doctrines of deference like Chevron or Auer, they suggest we owe

this sub-regulatory manual our obeisance. And, they say, this manual does forbid

TTAB parties from issuing document subpoenas to nonparties unless they are

accompanied by a demand for a needless deposition. It seems the district court

found this argument most persuasive for it is the one on which its opinion appears

to rest.




       1
         We admit we can imagine at least one further interpretation still of the
relevant statutes. Section 23 speaks of allowing the Commissioner of Patents to
“establish rules for taking affidavits and depositions.” It does not expressly
authorize the PTO to establish rules regarding other forms of discovery. So if the
PTO’s authorization is really required for any discovery, even that permitted in
federal court under § 24, you might well wonder if discovery must be limited to
affidavits and depositions alone. No one in this case, however, has suggested an
interpretation remotely so aggressive. To the contrary, Hatch Chile and Mizkan
(again) take as given that parties to TTAB proceedings can seek document
discovery in federal court under some circumstances, and they do not challenge
any of the PTO’s various rules allowing document discovery as resting on an
impermissible interpretation of the relevant statutes. Maybe someone will on
some other distant day choose to pursue an argument along these lines, but the
parties before us have waived anything like it.

                                         10
      But here too we just don’t see it. The relevant portion of the manual, called

the Trademark Trial and Appeal Board Manual of Procedure (TBMP), says this:

      Requests for production may not be served on a non-party. [Note 4[:
       See Fed. R. Civ. P. 34(a).]] However, if a discovery deposition
      deponent is a nonparty witness residing in the United States,
      production of designated documents by the witness at the deposition
      may be obtained by means of a subpoena duces tecum. [Note 5[: 35
      U.S.C. § 24; Fed. R. Civ. P. 45. But see Dan Foam ApS v. Sleep
      Innovations Inc., 106 USPQ2d 1939, 1942-43 (TTAB 2013)
      (discussing notice requirement to adverse party under Fed. R. Civ. P.
      45(b)(1) for a subpoena duces tecum (without deposition) issued to
      nonparty and noting that respondent could have sought its own
      subpoena of the nonparty to obtain additional documents and/or a
      discovery deposition).]]

TBMP § 406.01 (June 2014).

      What exactly does this language mean? Hatch Chile and Mizkan suggest

that the first sentence generally prohibits a party from seeking documents from

nonparties and that the second sentence provides a limited exception for situations

when the nonparty is being deposed. Maybe. But El Encanto offers another

plausible reading that yields a very different conclusion. On this reading, the first

sentence alerts parties to the truism that requests for production of documents

under Rule 34 may be directed only to parties, not nonparties. And the second

sentence proceeds to explain how to get documents from nonparties. Allowing,

on El Encanto’s view, parties to seek documents from nonparties either at a

deposition or, as the footnote seems to explain, however permitted by Rule 45.

After all, El Encanto notes, the footnote expressly acknowledges that a party used


                                         11
a Rule 45 subpoena without an attendant deposition in the Dan Foam litigation

before the TTAB.

      Who is right about the optimal reading of this most opaque of sub-

regulatory guidance? In the end, we think this is just another debate that doesn’t

matter. It doesn’t matter because the TBMP itself disavows any suggestion that it

seeks to offer authoritative interpretive guidance about § 23 or § 24 that might

possibly command our deference. The manual states quite plainly that it doesn’t

purport to “bind[]” the TTAB or the PTO or anyone else and doesn’t purport to

“have the force and effect of law.” TBMP Introduction (June 2014). Instead the

TBMP says it aspires only to serve as a sort of rough-and-ready handbook,

supplying some “basic information” that may prove “generally useful” to TTAB

practitioners. Id. And we are aware of nothing that might require a federal court

to afford deference to such a self-effacing agency document, one that not only

doesn’t demand deference but actually disclaims it. Maybe especially when

another circuit has already found this manual not “particularly persuasive.”

Rosenruist-Gestao, 511 F.3d at 448. And maybe especially when, if we were to

read the TBMP as Hatch Chile and Mizkan suggest, it would only wind up

creating a conflict between this sub-regulatory handbook and the PTO’s

promulgated Administrative Procedure Act notice-and-comment regulations that

clearly permit the use of document-only subpoenas. For surely if the agency is

indeed so confused that it has spoken out of both sides of its regulatory mouth, it


                                         12
has to be the side speaking unambiguously through formal rulemaking, rather than

the side speaking in garbled terms so quickly disavowed, that speaks the more

loudly.

      At this stage we might note only that one thing further conspires to

persuade us of the conclusion we reach in this case. History teaches that, when

Congress first established the PTO, a problem arose because the legislature

neglected to afford the office the power to force nonparty witnesses to participate

in its proceedings. See generally id. at 444. As long ago as 1857, the

Commissioner of Patents complained to Congress that this oversight seriously

impeded his work because “refractory or mercenary men, availing themselves of

this omission in the law . . . refused to appear or give their depositions, except

upon the payment of the most exorbitant sums by the parties.” U.S. Patent Office,

Report of the Commissioner of Patents for the Year 1857, at 7 (1858). And by all

accounts that’s at least one reason why Congress eventually adopted what is now

§ 24 — to help the PTO secure needed evidence from recalcitrant nonparties by

giving parties to its proceedings the power to seek and obtain subpoenas

enforceable in federal court. Rosenruist-Gestao, 511 F.3d at 444; Abbott Labs.,

710 F.3d at 1323-24. A rationale that seems to extend not just to nonparty

testimony but equally and independently to their documents. So it is we can see

nothing (and no one has pointed us to anything) in the statute’s history suggesting




                                         13
that the production of nonparty documents should necessarily depend on the

fortuity of a deposition.

      This seemingly small case about chile pepper sourcing and document

discovery has carried a surprisingly large punch, requiring us to try to fit together

in a sensible way an aged statute, many and diverse judicial glosses given to that

law, various agency rules — and musings — about the statute, and their

interaction with amendments to the Federal Rules of Civil Procedure. We have

done the best we can to fit these disparate pieces together. In having attempted

that much, though, we take care to point out what we haven’t attempted. We

haven’t sought to offer any views on the optimal interpretation of § 24 or its

interaction (if any) with § 23. The long lingering circuit split that lingers there

lingers there still. Neither do we purport to address Mizkan’s many more prosaic

objections to the subpoena under Rule 45 itself (objections about the scope of the

document requests, etc.). The district court chose not to rely on these grounds in

its order quashing the subpoena, and they are the sort of issues it is better

equipped to address in the first instance. Today we’ve sought to show no more

than that, consistent with any of the various statutory interpretations and

regulations cited to us, a party to a TTAB proceeding can obtain nonparty

documents without wasting everyone’s time and money with a deposition no one

really wants. We trust that this litigation might now turn away from a chase up

and down the federal court system over collateral disputes related to the


                                          14
production of documents whose relevance no one before us seriously disputes and

advance toward a more informed discussion of the merits consistent with the

aspirations of Rule 1.

      Reversed.




                                       15
