N OTE : This order is nonprecedential.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 R ADER
, Chief Judge

, L OURIE and T ARANTO
, Circuit Judges

. R ADER
, 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 man damus directing the District of Del aware to vacate its order that vitiated Shelbyzme’s asser ted 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: 1 Filed: 12/12/2013IN RE SHELBYZYME LLC 2

the applicant paid the requisite fee in March 2002 an d submitted an accompanying statement that the entire delay in r eviving the application had been unintentional. See 37 C.F.R. § 1.137(b).

In this patent infringement action, Genzyme has a ssert ed as an affirmative defense that t he Patent and Trademark Office (PTO) was deliberately misled into accept ing the petition to revive the patent and sought discovery of, inter a lia, com munications between the applicant and counsel relating to the petition to reviv e

. T he communications that are the sub ject of the or der 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 sho wing had been made that the applicant deliberately misled the PTO in to believing that the entire delay in reviving the appli cation was unintentional in v iew of the court’s

con clusion that the applicant was aware more than two years before that the fee had not been paid

. Mandamus may be used in “extraordinary circu mstances” to correct an unlawful disclosure of privileged

commu nications. 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 ad equate 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 inju stice . . . .” 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)

. W e cannot say that Shelbyzme has met the necessary standard to overturn the district court’s disclosure order by writ of mandamus

. Shelbyzme’s argu ment s, at bot tom,

are an attack on the district court’s findings regarding a Case: 13-167 Document: 26 Page: 2 Filed: 12/12/2013IN RE SHELBYZYME LLC 3

prima facie case of the f alsity of the representation and the applicant ’s inten t , 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, i f possible, through a clearer and more direct explanation from the author of the key email than any petitioner has yet o ffered. Moreover, petitioner has alternative avenues to obtain meaningful review of its arguments after trial

. S ee 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,

I T I S O RDERED T HAT : The petition is denied.

F OR THE C OURT

/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, i t may be advisable for the district court, in making findings after trial , to indicate separately what findings it would make without the docu ments obtained as a result of the piercing of the privilege at issue here. Case: 13-167 Document: 26 Page: 3 Filed: 12/12/2013