N OTE : This o rder is non precedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________
IN RE TAIWAN UNION T ECHNOLOGY 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’M ALLEY , W ALLACH , and H UGHES , Circuit Judges.

O’M ALLEY , 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 confi dential materials TUC beli eved could demonstrate Isola’s patents are invalid

. The d istrict 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. Case: 14-144 Document: 28 Page: 1 Filed: 09/19/2014IN RE TAIWAN UNION TECHNOL OGY CORP

. 2

Corp. , 2:12

- cv

- 01361

- SLG ( D . Ariz. May 23, 2014) (Docket Entry No. 115) (hereinafter “Discovery Order”). Not satisfied with th at relief , TUC now seeks a n order from this court compel ling additional information relevant to its invalidity defense

. Park oppose s the petition and moves for sanctions. For the following reasons, we deny the petition and motion.

B ACKGROUND Isola is the owner of U.S. Patent Nos. 6,509,414; 7,897,258; and 8,022,140 (col lectively, the “Patent s- In

Suit ”)

, which are directed toward a resin composition that can be used to man ufacture prepregs and lami nates . All three of the P atents

- In

- Suit share a claimed priority date of at least Octo ber 29, 1996

. On June 25, 2 012, Isola filed two complaints in the United States District Court for the District of Arizona, charging TUC and Park with i nfringement of the P atents

- 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 sett led their dis pute

. In March 2014, TUC subpoenaed Park, seeking i nformation concerning: (1) the ingredients and/or materials used to prepare each resin composition in the manufa cture of Park’s N4000

- 13 prior to September 24, 1996; (2) the recipe and/or pro cess 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 N400 0- 13 prior to September 24, 1996; and (4) any ma rketing, sales and/or offer for sales of the N4000

- 13 prior to September 24, 1996. After Park objected on the grounds th at the information requested constituted or con tained trade secret and other highly sensitive competitive info rmation, TUC filed a motion to compel. Case: 14-144 Document: 28 Page: 2 Filed: 09/19/2014IN RE TAIWAN UNION TECHNOLOGY COR P

. 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 conc luded 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.

Alt hough the district court was persuaded that TUC was entitled to more information than Park had already
t urned over to TUC , it refused to grant the full scope of TUC’s request. Instead, the court ruled that it was a ppropriate to limit discovery to “whatever Park previously provided to Is ola 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 stat ed 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 Par k and Isola, except as nece ssary.” 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 doc uments that Park provided to Isola subject to the pr otective order in the Isola/Park litigation.” Id.

TUC moved for reconsideration in the district court and for a le gible 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 ful ly legible version of Case: 14-144 Document: 28 Page: 3 Filed: 09/19/2014IN RE TAIWAN UNION TECHNOL OGY CORP

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

D ISCUSSION “The remedy of mandamus is a drastic one, to be i nvoked 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. ” Ch eney v. U.S. Dist. Court , 542 U.S. 367, 380 (2004). The pet itioner must show a “‘ clear and indisputable ’” right to relief. Id. at 381 (quoti ng Kerr , 426 U.S. at 403). The petitioner must “lack adequate alternative means to obtain the relief ” it seek s. 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 prerequisit es 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 i s frivolous, we do agree that TU C 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 Co mm’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 jud gment). Although manda mu s relief provides a “safety valv e” in “ extraordinary circumstances ” to promptly
correct “ serious errors ” or “ manifest injustice, ” postjud gment 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” cas es. 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 Case: 14-144 Document: 28 Page: 4 Filed: 09/19/2014IN RE TAIWAN UNION TECHNOLOGY COR P

. 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] inconve nience” in going through trial did n ot provide a basis for mandamus ). TUC fu rther 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 d ocument destruction is unfounded . Thus, we conclude that TUC has not presented extraordinary circumstances
warrant ing mandamus relief.
Accordingly

, I T I S O RDERED T HAT : (1) TUC’s petition for a writ of mandamus is denied

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

F OR THE C OURT

/s/ Daniel E. O’Toole Daniel E. O’Toole Clerk of Court

s19 Case: 14-144 Document: 28 Page: 5 Filed: 09/19/2014