Summary
The Federal Circuit denied Shelbyzme LLC’s petition for a writ of mandamus seeking to vacate a district court order piercing attorney-client privilege under the crime-fraud exception. The court held that Shelbyzme had not shown the extraordinary circumstances required for mandamus and could seek review of the privilege and intent issues after final judgment.
Topics
Practice areas
Questions Presented
- Whether the Federal Circuit should issue a writ of mandamus directing the district court to vacate its order compelling disclosure of attorney-client communications under the crime-fraud exception.
- Whether the district court's findings supporting a prima facie showing of falsity and intent constituted a clear abuse of discretion or otherwise warranted extraordinary mandamus relief.
Holdings
- Mandamus relief is unavailable because Shelbyzme failed to establish the exacting requirements for extraordinary relief, including the absence of adequate alternative legal channels and a judicial usurpation of power, clear abuse of discretion, or manifest injustice.
- The petition for a writ of mandamus was denied without prejudice to Shelbyzme's ability to raise the privilege, falsity, and intent issues on appeal after final judgment.
Key quotations
“Mandamus may be used in “extraordinary circumstances” to correct an unlawful disclosure of privileged communications.” (1002)
“That standard is an exacting one, requiring petitioner to establish that there are no adequate alternative legal channels through which it may obtain the same relief and that the disclosure order “ ‘amounts to a judicial usurpation of power or a clear abuse of discretion,’ or otherwise works a manifest injustice....”” (1002)
Factual background
Shelbyzme owned U.S. Patent No. 7,011,831, whose application had been deemed abandoned in October 1999 and later revived after payment of the required fee and submission of a statement that the entire delay was unintentional. In the patent infringement action, Genzyme alleged that the PTO had been deliberately misled and sought communications concerning the petition to revive. The district court concluded that Genzyme had made a prima facie showing that the representation was false and intentional, and ordered disclosure of communications asserted to be privileged.
Procedural history
In a patent infringement action, Genzyme asserted that the Patent and Trademark Office had been deliberately misled when an abandoned patent application was revived and sought discovery of communications between the applicant and counsel. The district court found a prima facie showing of falsity and intent and ordered disclosure of privileged communications. Shelbyzme sought interlocutory mandamus relief in the Federal Circuit.