NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: MODERN FONT APPLICATIONS LLC,

Petitioner

______________________

2021-138

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the District of Utah in No. 2:19-cv-561-

DBB-CMR, Judge David Barlow.

______________________

ON PETITION

______________________

Before PROST, Chief Judge, O’MALLEY and WALLACH, Circuit Judges. 

PROST, Chief Judge.

O R D E R

Modern Font Applications LLC (MFA)’s petition challenges the United States District Court for the District of 

Utah’s March 2, 2021 order requiring MFA to turn over certain documents in discovery. We deny the petition.

MFA brought this suit against Alaska Airlines alleging 

infringement of U.S. Patent No. 9,886,421. Alaska requested discovery of settlement agreements between MFA 

and other parties relating to the patent. MFA rejected

turning over the agreements, claiming they were protected 

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2 IN RE: MODERN FONT APPLICATIONS LLC

under the common interest privilege.* Alaska moved to 

compel production of all settlement agreements as relevant 

to determining a reasonable royalty. The district court

judge, agreeing with the magistrate’s order, ruled that the 

documents were not privileged. MFA now petitions for a 

writ of mandamus challenging the ruling.

Mandamus is a “drastic and extraordinary” remedy 

“reserved for really extraordinary causes.” Cheney v. U.S. 

Dist. Ct. for D.C., 542 U.S. 367, 380 (2004) (internal quotation marks and citation omitted). In seeking a writ of mandamus, MFA must establish a “clear and indisputable” 

right to relief and that it has “no other adequate means to 

attain the relief” it seeks. Id. at 380–81 (internal quotation 

marks and citations omitted). 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.” Id. at 381. MFA has 

not satisfied those requirements for relief. 

To begin, MFA has not established that it has no alternative means to obtain meaningful relief on this matter. In 

accordance with Mohawk Industries, Inc. v. Carpenter, 558 

U.S. 100, 109 (2009) and other Supreme Court precedent, 

we have recognized that mandamus is ordinarily unavailable for immediate review of pretrial discovery rulings because a post-judgment appeal generally is an adequate 

remedy for asserting privilege violations. See Waymo LLC 

* By the common interest privilege, we understand 

MFA to be invoking the general exception to the ordinary 

attorney-client privilege waiver rule when attorneys for 

different clients are pursuing a common legal cause to communicate with each other. See generally In re Regents of 

Univ. of Cal., 101 F.3d 1386, 1390 (Fed. Cir. 1996). MFA 

also relies heavily on the fact that the parties to the agreements also entered into confidentiality agreements.

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IN RE: MODERN FONT APPLICATIONS LLC 3

v. Uber Techs., Inc., 870 F.3d 1350, 1357–58 (Fed. Cir. 

2017). Although we have recognized that mandamus may 

be available to review particularly injurious or novel privilege rulings, id. at 1358, we cannot say that MFA has 

shown those circumstances exist here. 

As to injury, MFA fails to identify any specific or 

unique harm or prejudice that would occur in this case if 

MFA were required to wait to seek vacatur of the ruling 

and remand for a new trial in a post-judgment appeal. Instead, it relies only on the general argument that “[o]nce 

disclosed, the privileged materials could not be unseen by 

Alaska’s counsel (and Alaska itself),” and “later exclusion 

from evidence would not prevent the privileged materials 

from being improperly used against MFA[.]” Reply at 14–

15. Such allegations, however, are generally insufficient to 

establish the need for mandamus review. See Waymo, 870 

F.3d at 1358 (rejecting same general argument). 

Nor has MFA raised a particularly novel issue. In In 

re MSTG, Inc., 675 F.3d 1337, 1348 (Fed. Cir. 2012), this 

court declined to recognize a common law privilege that 

would prevent discovery of litigation settlement negotiations and other communications. That issue had split both 

circuit courts and district courts. Id. at. 1342. While MFA 

argues that MSTG did not expressly address application of 

the attorney-client privilege and common interest doctrine 

to the settlement agreements themselves, that issue is not 

one that involves any apparent disagreement among trial 

courts that might warrant immediate resolution. 

Moreover, MFA shows no clear and indisputable error 

on the part of the district court in rejecting its claim of privilege. In concluding in MSTG that settlement communications were not privileged, we emphasized the fact that

Congress had elected not to protect both settlement agreements and settlement communications from discovery in 

Rule 408 of the Federal Rules of Evidence. See id. at 1344. 

We further explained that “to the extent we need to protect 

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4 IN RE: MODERN FONT APPLICATIONS LLC

the sanctity of settlement discussions and promote the 

compromise and settlement of dispute[s], there are other 

effective methods to limit the scope of discovery to achieve 

those ends,” including granting motions for protective orders to restrict the use of information. Id. at 1346. For 

those same reasons, we cannot say that MFA has established a clear and indisputable right to relief. 

Even putting aside this court’s holding in MSTG, 

MFA’s arguments concerning the attorney-client privilege 

and common interest doctrine are insufficient on their own 

terms to establish mandamus relief. “[T]o invoke the common interest doctrine, a party first must demonstrate the 

elements of [the] privilege[.]” Waymo, 870 F.3d at 1360 (citation omitted). But MFA fails to explain how the agreements themselves constitute “‘communications by a client 

to an attorney made in order to obtain legal assistance’

from the attorney in his capacity as a legal advisor.” In re 

Grand Jury Subpoena Duces Tecum Issued on June 9, 

1982, 697 F.2d 277, 278 (10th Cir.1983) (quoting Fisher v. 

United States, 425 U.S. 391, 403 (1976)). Furthermore, 

MFA has identified no legal authority establishing a clear 

and indisputable right against imposing the ordinary 

waiver principles of sharing alleged privileged communications under the circumstances presented here.

Accordingly,

IT IS ORDERED THAT:

The petition for mandamus is denied.

May 04, 2021

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

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