In Re Ipcom Gmbh & Co., Kg. , 428 F. App'x 984 ( 2011 )

NOTE: This order is nonprecedential
United States Court of Appeals
for the Federal Circuit
IN RE IPCOM GMBH & CO., KG,
Petitioner. '
Misce11aneous Docket No. 972
011 Petiti0n for Writ of Mandamus to the United
States District Court for District of District of C01umbia
in case no. 08-CV-1897, Judge Rosemary M. Co11yer.
ON PETITION
Before GAJA_RsA, MAYER, and PRosT, Circu,it Ju,dges.
PER CUR1AM.
0RDER
This is a petition for a writ of mandamus from a dis-
trict court order rejecting IPCom GInbH & Co.’s (“IPCom")
contention that it should not be required to turn over
documents held on its behalf by its German counsel
Because IPCom has not satisfied the high burden for
mandamus re1ief, we deny the petition
lN RE lPCOM 2
I.
This petition grows out of a declaratory judgment ac-
tion concerning IPCom’s global telephony patent portfolio.
lPCom acquired these patents from another German
company, Robert Bosch GmbH (“Bosch"). The portfolio
includes U.S. and Japanese patents, along with the Ger-
man patents to which the Japanese and U.S§ patents
claim priority. The Frohwitter firm assisted both sides in
the transaction and became the custodian of the docu-
mentation related to the prosecution of these patents.
Several years after IPCom acquired these patents,
HTC Corporation and HTC America, Inc. (collectively,
“HTC") filed a declaratory judgment action against
lPCom, alleging that the patents in the portfolio were
invalid or not infringed. HTC served IPCom -with re-
quests for production of documents relating to IPCom’s
evaluation, valuation, and purchase of the Bosch portfolio
of patents and patent applications. As explained in the
District Court’s order, HTC’s requests included the follow-
ing sets of documents in the Frohwitter firm’s custody: (1)
lnvention Disclosure and Notification statements from
Bosch’s employees pertaining to the German patent
applications to which the U.S. patents at issue here claim
priority; (2) correspondence between Bosch’s in-house
German counsel and its Japanese patent counsel regard-
ing its Japanese patent applications; and (3) correspon-
dence between Bosch’s in-house German counsel and its
U.S. patent counsel regarding its U.S. patent applica-
tions.
IPCom refused to produce documents in response to
these requests, asserting attorney-client privilege. HTC
moved to compel disc0very, arguing that any privilege
was waived when Bosch sold the portfolio to IPCom.
Applying United States privilege laW, the United States
3 lN RE IPCOM
District Court for the District of Columbia granted HTC’s
motion to compe1. The court held that Bosch had sold
these documents and the patents to IPCom, and in doing
so, had waived any attorney-client privilege.
II.
A party seeking a writ of mandamus bears the burden
of proving that it has no other means of attaining the
relief desired, Mallard v. U.S. District C'ourt, 490 U.S.
296, 309 (1989), and that the right to issuance of the writ
is "clear and undisputable." Allied C'hem. C'orp. v.
Daiflon, Inc., 449 U.S. 33, 35 (1980). In appropriate
cases, a writ of mandamus may issue to “prevent the
wrongful exposure of privileged communications.” In re
Regents of the Umlv. of Cc1l., 101 F.3d 1386, 1387 (Fed.
Cir. 1996).
A. German In.uention Disclosure Stoctements "cmd Ger-
man-Jczpanese Commun.icoctions
IPCom argues that the district court erred in applying
United States rather than GerInan law in deciding
whether these documents were discoverable For German
law to apply, IPCom would first have to establish a con-
flict exists between German and United States law. See
Hartford Fire Ins. C0. v. Californ,ia, 509 U.S. 764, 798
(1993) (limiting the application of international comity
doctrine to cases in which “there is in fact a true conflict
between domestic and foreign law"). While "[i]t is well
known that the laws of some foreign countries present
conflicts with . . . United States discovery demands,”
Cochran Consulting, Inc. v. Uwatec USA, Inc., 102 F.3d
1224, 1226 (Fed. Cir. 1996), despite bearing the burden of
proof, IPCom has not clearly identified how or why the
application of German law here would yield a different
outcome See generally In re Lindsey, 148 F.3d 1100, 1106
(D.C. Cir. 1998) (the party asserting attorney-client
lN RE lPCOM 4
privilege bears the burden of proving that the privilege
exists). In fact, IPCom has presented no evidence on this
issue, admitting that “the issue of a possible waiver under
German law was never . . . briefed by any of the parties
below." (emphasis added).
Moreover, IPCom cannot use German discovery laws
to shield itself from producing documents that can be used
to attack the validity or enforceability of its patents. If an
inventor wants the protections afforded under the U.S.
patent laws, that inventor must comply with all applica-
ble rules and regulations to secure and maintain those
rights. Notably, that includes the duty of candor and
disclosure requirements during patent prosecution. To
the extent that IPCom could lose its U.S. patent rights for
failure to satisfy these obligations based on an assertion
(if proven) of inequitable conduct, we agree that IPCom
should not be able to shield itself from such a result by
protecting otherwise discoverable documents from disclo-
sure under the guise of international comity. See also
Int’l Nutrition Co. r). H0rphag Research Ltd., 257 F.3d
1324, 1329 (Fed. Cir. 2001) (stating that comity may not
be extended when, as here, "doing so would be contrary to
the policies or prejudicial to the interests of the United
States.”)
Finally, IPCom notes that the Frohwitter firm is obli-
gated under German ethics laws to maintain these com-
munications as confidential and may face criminal
liability for disclosure Although “fear of criminal prose-
cution constitutes a weighty excuse for non-production . . .
[and this is] not weakened because the laws preventing
compliance are those of a foreign sovereign," an excuse
from non-production must be predicated upon a lack of
"any fault of’ the party. Société Internationale P0ur
Participations In,dustrielles et C'ommerciales, S.A. u.
Rogers, 357 _U.S. 197, 211-12 (1958). The district court
5 IN RE IPCoM
considered and rejected IPCom’s argument, suggesting
the firm was at least partially at fault. Based on our
review of the papers and the trial court’s f1ndings, we
cannot say that IPCom has met its burden on mandamus.
B. German-US C0mmunications
IPCom challenges the district court’s holding that
there was no waiver of attorney-client privilege under the
"c0mmon interest” doctrine Although the disclosure of
attorney-client confidences to a third party waives privi-
lege, the common interest doctrine allows for such privi-
leges to remain intact "When the third party is a lawyer
whose client shares an overlapping ‘common interest’ with
the primary client." In re Linclsey, 158 F.3d 1263, 1282
(D.C. Cir. 1998). The district court here found that there
was no common interest between Bosch`` and IPCom
because "Bosch sold the Patents and all documents relat-
ing to the Patents to IPCom; Bosch did not share this
information as part of a joint legal claim or defense." This
court discerns no error that satisfies the high bar for
mandamus review in the district court’s conclusion re-
garding this issue
Accordingly,
lT lS ORDERED THATI
The petition is denied
FoR THE CoURT
JUN 2 2 wl 131 Jan Horbaly
Date J an Horbaly
Clerk
cc: lVlichael A. Oblon, Esq. F'LED
M1tchell G. Stockwell, Esq. U.S. GOURT 0F APPEALS FOR
THE FEDERAL C|RCUlT
JUN 22 2011
.|AN |'lDRBALY
CLEFl&
IN RE IPCOM
A. James Isbester, Esq.
Clerk, United States District Court for the District of
Columbia
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