Case: 21-138 Document: 13 Page: 1 Filed: 05/04/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: MODERN FONT APPLICATIONS LLC,
Petitioner
______________________
2021-138
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of Utah in No. 2:19-cv-561-
DBB-CMR, Judge David Barlow.
______________________
ON PETITION
______________________
Before PROST, Chief Judge, O’MALLEY and WALLACH, Cir-
cuit Judges.
PROST, Chief Judge.
ORDER
Modern Font Applications LLC (MFA)’s petition chal-
lenges the United States District Court for the District of
Utah’s March 2, 2021 order requiring MFA to turn over cer-
tain documents in discovery. We deny the petition.
MFA brought this suit against Alaska Airlines alleging
infringement of
U.S. Patent No. 9,886,421. Alaska re-
quested discovery of settlement agreements between MFA
and other parties relating to the patent. MFA rejected
turning over the agreements, claiming they were protected
Case: 21-138 Document: 13 Page: 2 Filed: 05/04/2021
2 IN RE: MODERN FONT APPLICATIONS LLC
under the common interest privilege. * Alaska moved to
compel production of all settlement agreements as relevant
to determining a reasonable royalty. The district court
judge, agreeing with the magistrate’s order, ruled that the
documents were not privileged. MFA now petitions for a
writ of mandamus challenging the ruling.
Mandamus is a “drastic and extraordinary” remedy
“reserved for really extraordinary causes.” Cheney v. U.S.
Dist. Ct. for D.C.,
542 U.S. 367, 380 (2004) (internal quota-
tion marks and citation omitted). In seeking a writ of man-
damus, MFA must establish a “clear and indisputable”
right to relief and that it has “no other adequate means to
attain the relief” it seeks.
Id. at 380–81 (internal quotation
marks and citations omitted). And, “even if the first two
prerequisites have been met, the issuing court, in the exer-
cise of its discretion, must be satisfied that the writ is ap-
propriate under the circumstances.”
Id. at 381. MFA has
not satisfied those requirements for relief.
To begin, MFA has not established that it has no alter-
native means to obtain meaningful relief on this matter. In
accordance with Mohawk Industries, Inc. v. Carpenter,
558
U.S. 100, 109 (2009) and other Supreme Court precedent,
we have recognized that mandamus is ordinarily unavail-
able for immediate review of pretrial discovery rulings be-
cause a post-judgment appeal generally is an adequate
remedy for asserting privilege violations. See Waymo LLC
* By the common interest privilege, we understand
MFA to be invoking the general exception to the ordinary
attorney-client privilege waiver rule when attorneys for
different clients are pursuing a common legal cause to com-
municate with each other. See generally In re Regents of
Univ. of Cal.,
101 F.3d 1386, 1390 (Fed. Cir. 1996). MFA
also relies heavily on the fact that the parties to the agree-
ments also entered into confidentiality agreements.
Case: 21-138 Document: 13 Page: 3 Filed: 05/04/2021
IN RE: MODERN FONT APPLICATIONS LLC 3
v. Uber Techs., Inc.,
870 F.3d 1350, 1357–58 (Fed. Cir.
2017). Although we have recognized that mandamus may
be available to review particularly injurious or novel privi-
lege rulings,
id. at 1358, we cannot say that MFA has
shown those circumstances exist here.
As to injury, MFA fails to identify any specific or
unique harm or prejudice that would occur in this case if
MFA were required to wait to seek vacatur of the ruling
and remand for a new trial in a post-judgment appeal. In-
stead, it relies only on the general argument that “[o]nce
disclosed, the privileged materials could not be unseen by
Alaska’s counsel (and Alaska itself),” and “later exclusion
from evidence would not prevent the privileged materials
from being improperly used against MFA[.]” Reply at 14–
15. Such allegations, however, are generally insufficient to
establish the need for mandamus review. See Waymo, 870
F.3d at 1358 (rejecting same general argument).
Nor has MFA raised a particularly novel issue. In In
re MSTG, Inc.,
675 F.3d 1337, 1348 (Fed. Cir. 2012), this
court declined to recognize a common law privilege that
would prevent discovery of litigation settlement negotia-
tions and other communications. That issue had split both
circuit courts and district courts.
Id. at. 1342. While MFA
argues that MSTG did not expressly address application of
the attorney-client privilege and common interest doctrine
to the settlement agreements themselves, that issue is not
one that involves any apparent disagreement among trial
courts that might warrant immediate resolution.
Moreover, MFA shows no clear and indisputable error
on the part of the district court in rejecting its claim of priv-
ilege. In concluding in MSTG that settlement communica-
tions were not privileged, we emphasized the fact that
Congress had elected not to protect both settlement agree-
ments and settlement communications from discovery in
Rule 408 of the Federal Rules of Evidence. See
id. at 1344.
We further explained that “to the extent we need to protect
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4 IN RE: MODERN FONT APPLICATIONS LLC
the sanctity of settlement discussions and promote the
compromise and settlement of dispute[s], there are other
effective methods to limit the scope of discovery to achieve
those ends,” including granting motions for protective or-
ders to restrict the use of information.
Id. at 1346. For
those same reasons, we cannot say that MFA has estab-
lished a clear and indisputable right to relief.
Even putting aside this court’s holding in MSTG,
MFA’s arguments concerning the attorney-client privilege
and common interest doctrine are insufficient on their own
terms to establish mandamus relief. “[T]o invoke the com-
mon interest doctrine, a party first must demonstrate the
elements of [the] privilege[.]” Waymo, 870 F.3d at 1360 (ci-
tation omitted). But MFA fails to explain how the agree-
ments themselves constitute “‘communications by a client
to an attorney made in order to obtain legal assistance’
from the attorney in his capacity as a legal advisor.” In re
Grand Jury Subpoena Duces Tecum Issued on June 9,
1982,
697 F.2d 277, 278 (10th Cir.1983) (quoting Fisher v.
United States,
425 U.S. 391, 403 (1976)). Furthermore,
MFA has identified no legal authority establishing a clear
and indisputable right against imposing the ordinary
waiver principles of sharing alleged privileged communica-
tions under the circumstances presented here.
Accordingly,
IT IS ORDERED THAT:
The petition for mandamus is denied.
FOR THE COURT
May 04, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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