Case: 13-167 Document: 26 Page: 1 Filed: 12/12/2013
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE SHELBYZYME LLC,
Petitioner.
______________________
2013-167
______________________
On Petition for Writ of Mandamus to the United
States District Court for the District of Delaware in No.
09-CV-0768, Chief Judge Gregory M. Sleet.
______________________
ON PETITION
______________________
Before RADER, Chief Judge, LOURIE and TARANTO, Circuit
Judges.
RADER, Chief Judge.
ORDER
This case comes to us in an interlocutory posture after
a privilege dispute. Shelbyzme LLC asks this court to
issue a writ of mandamus directing the District of Dela-
ware to vacate its order that vitiated Shelbyzme’s assert-
ed attorney-client privilege based on the “crime-fraud”
exception. Genzyme Corporation opposes the petition.
Shelbyzme is the owner of U.S. Patent No. 7,011,831.
The application that eventually gave rise to that patent
was deemed abandoned in October 1999, but revived after
Case: 13-167 Document: 26 Page: 2 Filed: 12/12/2013
2 IN RE SHELBYZYME LLC
the applicant paid the requisite fee in March 2002 and
submitted an accompanying statement that the entire
delay in reviving the application had been unintentional.
See 37 C.F.R. § 1.137(b).
In this patent infringement action, Genzyme has as-
serted as an affirmative defense that the Patent and
Trademark Office (PTO) was deliberately misled into
accepting the petition to revive the patent and sought
discovery of, inter alia, communications between the
applicant and counsel relating to the petition to revive.
The communications that are the subject of the order
to compel appear to relate to declarations intended to
accompany the petition to revive. See Docket Entry Nos.
204, p. 5 n.10, and 219. In its order granting Genzyme’s
request, the district court found that a prima facie show-
ing had been made that the applicant deliberately misled
the PTO into believing that the entire delay in reviving
the application was unintentional in view of the court’s
conclusion that the applicant was aware more than two
years before that the fee had not been paid.
Mandamus may be used in “extraordinary circum-
stances” to correct an unlawful disclosure of privileged
communications. Mohawk Indus., Inc. v. Carpenter,
558
U.S. 100, 111 (2009). That standard is an exacting one,
requiring petitioner to establish that there are no ade-
quate 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 injus-
tice . . . .” Id.; Cheney v. U.S. Dist. Court,
542 U.S. 367,
380-81 (2004); Kerr v. U.S. Dist. Court,
426 U.S. 394, 403
(1976).
We cannot say that Shelbyzme has met the necessary
standard to overturn the district court’s disclosure order
by writ of mandamus. Shelbyzme’s arguments, at bottom,
are an attack on the district court’s findings regarding a
Case: 13-167 Document: 26 Page: 3 Filed: 12/12/2013
IN RE SHELBYZYME LLC 3
prima facie case of the falsity of the representation and
the applicant’s intent, which this court is not prepared to
disturb on the limited record before us. Petitioner may, of
course, contest Genzyme’s falsity and intent allegations in
the contemplated bench trial, including, if possible,
through a clearer and more direct explanation from the
author of the key email than any petitioner has yet of-
fered. Moreover, petitioner has alternative avenues to
obtain meaningful review of its arguments after trial. See
Mohawk
Indus., 558 U.S. at 109. For these reasons, we
deny mandamus relief without prejudice to raising these
issues on appeal after final judgment. *
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of the Court
s19
* We expect that these communications and related
documents will be kept under seal to mitigate the harmful
effects caused by disclosure. See In re MSTG, Inc.,
675
F.3d 1337, 1346 (Fed. Cir. 2012). In addition, it may be
advisable for the district court, in making findings after
trial, to indicate separately what findings it would make
without the documents obtained as a result of the piercing
of the privilege at issue here.
