NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE TAIWAN UNION TECHNOLOGY 

CORPORATION,

Petitioner.

______________________ 

2014-144

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the District of Arizona in No. 

2:12-cv-01361-SLG, Judge Sharon L. Gleason.

______________________ 

ON PETITION

______________________ 

Before O’MALLEY, WALLACH, and HUGHES, Circuit Judges.

O’MALLEY, Circuit Judge.

O R D E R

This petition for a writ of mandamus has its origins in

related suits brought by Isola USA Corporation (“Isola”) 

against Park Electrochemical Corporation et al. (“Park”) 

and Taiwan Union Technology Corporation (“TUC”). 

After Isola settled with Park, TUC moved to compel Park 

to produce confidential materials TUC believed could 

demonstrate Isola’s patents are invalid. The district court 

granted the motion but only to the extent that Park was 

compelled to turn over all materials it produced to Isola in 

discovery. See Isola USA Corp. v. Taiwan Union Tech. 

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2 IN RE TAIWAN UNION TECHNOLOGY CORP. 

Corp., 2:12-cv-01361-SLG (D. Ariz. May 23, 2014) (Docket 

Entry No. 115) (hereinafter “Discovery Order”). Not 

satisfied with that relief, TUC now seeks an order from 

this court compelling additional information relevant to 

its invalidity defense. Park opposes the petition and 

moves for sanctions. For the following reasons, we deny 

the petition and motion. 

BACKGROUND

Isola is the owner of U.S. Patent Nos. 6,509,414; 

7,897,258; and 8,022,140 (collectively, the “Patents-InSuit”), which are directed toward a resin composition that 

can be used to manufacture prepregs and laminates. All 

three of the Patents-In-Suit share a claimed priority date 

of at least October 29, 1996. On June 25, 2012, Isola filed 

two complaints in the United States District Court for the 

District of Arizona, charging TUC and Park with infringement of the Patents-In-Suit. Isola’s charges against 

Park centered on Park’s N4000-13 line of products, an 

epoxy resin system designed for use in printed circuit 

materials. Eight months after the action was initiated, 

Park and Isola settled their dispute. 

In March 2014, TUC subpoenaed Park, seeking information concerning: (1) the ingredients and/or materials 

used to prepare each resin composition in the manufacture of Park’s N4000-13 prior to September 24, 1996; (2) 

the recipe and/or process used to prepare each resin 

composition used in the manufacture of the N4000-13 

prior to September 24, 1996; (3) the specific amounts or 

ratios of each ingredient and/or material used to prepare 

the resin composition used in the manufacture of the 

N4000-13 prior to September 24, 1996; and (4) any marketing, sales and/or offer for sales of the N4000-13 prior to 

September 24, 1996. After Park objected on the grounds

that the information requested constituted or contained

trade secret and other highly sensitive competitive information, TUC filed a motion to compel. 

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 IN RE TAIWAN UNION TECHNOLOGY CORP. 3

On May 23, 2014, the district court issued an order 

granting-in-part and denying-in-part TUC’s motion to 

compel. As is relevant here, the district court concluded 

that TUC had demonstrated a “substantial need” to 

obtain information from Park regarding the N4000-13 

prior to September 1996, reasoning that “if N4000-13 was 

a prior art as defined under the applicable patent law, 

then TUC may be entitled to assert that fact as a defense 

in this case against its product.” Discovery Order at 2-3. 

The court added that “information on the ingredients 

within the ‘varnish’ for N4000-13 as it existed prior to the 

1996 priority date for the Patents-In-Suit could be highly 

relevant to TUC, and that information would appear to be 

not otherwise discoverable to TUC from other sources.” 

Id. 

Although the district court was persuaded that TUC 

was entitled to more information than Park had already 

turned over to TUC, it refused to grant the full scope of 

TUC’s request. Instead, the court ruled that it was appropriate to limit discovery to “whatever Park previously 

provided to Isola that relates to the prior a[r]t issue 

during the course of the Park/Isola litigation.” Id. at 3. 

In rejecting TUC’s request for wholesale discovery of the 

N4000-13 product, the district court stated that “Park, as 

a non-party to this litigation, should not be put to the 

time and expense of sorting through the documents and 

communications between Park and Isola, except as necessary.” Id. at 4. “Rather, to the extent such discovery is 

allowed,” the court went on to explain, “that responsibility 

should fall to Isola, excepting only those relevant documents that Park provided to Isola subject to the protective 

order in the Isola/Park litigation.” Id. 

TUC moved for reconsideration in the district court 

and for a legible copy of one of the documents turned over 

by Park. The court denied the motion on July 8, 2014 

except to direct Park to provide a fully legible version of 

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4 IN RE TAIWAN UNION TECHNOLOGY CORP. 

the document. TUC filed this petition. We have jurisdiction to consider the matter under 28 U.S.C. § 1651(a). 

DISCUSSION

“The remedy of mandamus is a drastic one, to be invoked only in extraordinary situations.” Kerr v. U.S. Dist. 

Court, 426 U.S. 394, 402 (1976). Accordingly, “three 

conditions must be satisfied before it may issue.” Cheney 

v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The petitioner must show a “‘clear and indisputable’” right to 

relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The 

petitioner must “lack adequate alternative means to 

obtain the relief” it seeks. Mallard v. U.S. Dist. Court, 

490 U.S. 296, 309 (1989); Cheney, 542 U.S. at 380; Kerr, 

426 U.S. at 403. And “even if the first two prerequisites 

have been met, the issuing court, in the exercise of its 

discretion, must be satisfied that the writ is appropriate 

under the circumstances.” Cheney, 542 U.S. at 381. 

While we do not agree with Park that the petition is 

frivolous, we do agree that TUC has not carried its burden 

in seeking mandamus relief. A party adversely affected 

by an order denying a motion to compel may ordinarily

obtain meaningful review on appeal after final judgment. 

See, e.g., In re Subpoena Served on Cal. Pub. Utilities 

Comm’n, 813 F.2d 1473, 1480 (9th Cir. 1987) (dismissing 

interlocutory appeal on the ground that the order to 

quash the subpoena could be appealed after final judgment). Although mandamus relief provides a “safety 

valve” in “extraordinary circumstances” to promptly 

correct “serious errors” or “manifest injustice,” postjudgment appeals remain “generally suffic[ient] to protect the 

rights of litigants[.]” Mohawk Indus., Inc. v. Carpenter, 

558 U.S. 100, 109-111 (2009) (internal citations omitted). 

We are unable to say that this is one of those rare 

“safety valve” cases. Id. at 111. TUC contends that “it 

should not have to wait until after final judgment to 

compel Park to produce” these documents. TUC’s Reply 

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 IN RE TAIWAN UNION TECHNOLOGY CORP. 5

at 5. But mandamus relief is not available simply to 

relieve TUC of the burden of having to go through trial. 

Cf. In re Roche Molecular Sys., Inc., 516 F.3d 1003, 1004 

(Fed. Cir. 2008) (petitioner’s “hardship [and] inconvenience” in going through trial did not provide a basis for 

mandamus). TUC further contends that there is a risk 

that it would have no remedy if Park were to engage in 

spoliation. But this assertion appears to amount to 

nothing more than speculation. Indeed, Park assures the 

court in its opposition and motion that TUC’s fear of 

document destruction is unfounded. Thus, we conclude 

that TUC has not presented extraordinary circumstances 

warranting mandamus relief. 

Accordingly, 

 IT IS ORDERED THAT: 

(1) TUC’s petition for a writ of mandamus is denied. 

(2) Park’s motion for sanctions is denied. 

 FOR THE COURT

 /s/ Daniel E. O’Toole 

 Daniel E. O’Toole

 Clerk of Court

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