NOTE: This order is nonprecedential.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. 

O R D E R

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 Delaware to vacate its order that vitiated Shelbyzme’s asserted 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

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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 asserted 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 showing 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 circumstances” 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 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 . . . .” 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 

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 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 offered. 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. 

 

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