PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

_______________________

No. 23-2412

_______________________

In re: ABBOTT LABORATORIES; ABBVIE INC.; 

ABBVIE PRODUCTS LLC;

UNIMED PHARMACEUTICALS LLC; BESINS 

HEALTHCARE, INC.,

Petitioners

_______________________

On Petition for a Writ of Mandamus

to the United States District Court

for the Eastern District of Pennsylvania

District Court No. 2-19-cv-03565

District Judge: The Honorable Harvey Bartle, III

__________________________

Argued November 29, 2023

Before: JORDAN, MONTGOMERY-REEVES, and SMITH, 

Circuit Judges

(Filed: February 22, 2024)

Paul D. Clement

Erin E. Murphy

Clement & Murphy
2

706 Duke Street

Alexandria, VA 22314

Elaine J. Goldenberg

Donald B. Verrilli, Jr. [ARGUED]

Sarah Weiner

Munger Tolles & Olson

601 Massachusetts Avenue NW

Suite 500e

Washington, DC 20001

Adam R. Lawton

Munger Tolles & Olson

350 S Grand Avenue

50th Floor

Los Angeles, CA 90071

Rohit K. Singla

Munger Tolles & Olson

560 Mission Street

27th Floor

San Francisco, CA 94105

Counsel for Petitioners Abbott Laboratories, AbbVie 

Inc., AbbVie Products LLC, and Unimed 

Pharmaceuticals LLC

Melinda F. Levitt

Gregory E. Neppl

Foley & Lardner

3000 K Street NW

Suite 600
3

Washington, DC 20007

Counsel for Petitioner Besins Healthcare, Inc.

Samuel E. Bonderoff

Bruce E. Gerstein

Garwin Gerstein & Fisher

88 Pine Street

Wall Street Plaza, 28th Floor

New York, NY 10005

Russell A. Chorush [ARGUED]

Heim Payne & Chorush

609 Main Street

Suite 3200

Houston, TX 77002

David A. Langer

Ellen T. Noteware

David F. Sorensen

Berger Montague

1818 Market Street

Suite 3600

Philadelphia, PA 19103

Counsel for Respondents AmerisourceBergen Corp, 

Amerisourcebergen Drug Corp, King Drug Co. of 

Florence, Inc., Bellco Drug Corp., HD Smith LLC, 

Cardinal Health, Inc., Harvard Drug Group, McKesson 

Corp., J M Smith Corp., agent of D/B/A Smith Drug Co., 

Burlington Drug Co., Inc., North Carolina Mutual 

Wholesale Drug, Dakota Drug, Value Drug, FWK 

Holdings LLC
4

__________________________

OPINION OF THE COURT

__________________________

SMITH, Circuit Judge.

I. INTRODUCTION

The underlying litigation in the matter before us sounds 

in patent and antitrust law. What we are presented with here, 

however, is a petition for mandamus relief after a district judge 

ruled that application of the crime-fraud exception to the 

attorney-client privilege justified an order compelling 

production of certain documents generated by in-house counsel 

for the patent holder. Petitioners are Abbott Laboratories,

Abbvie Inc., Abbvie Products LLC, Unimed Pharmaceuticals 

LLC, and Besins Healthcare, Inc.1 They contend that a writ of 

mandamus relief is the only means available to them to 

1 Abbvie Inc.; Abbvie Products LLC; and Unimed 

Pharmaceuticals, LLC are collectively referred to as “Abbvie.” 

As explained in Petitioners’ corporate disclosure statement: 

“Neither Abbott Laboratories nor AbbVie Inc. has any parent 

corporation. Unimed Pharmaceuticals LLC is a direct, wholly 

owned subsidiary of AbbVie Products LLC, which is a direct, 

wholly owned subsidiary of AbbVie Inc. Besins Healthcare, 

Inc. (“BHI”) is a wholly owned subsidiary of Besins 

Healthcare Ireland Ltd.” Pet. at i.
5

preserve confidentiality, which should extend to documents 

they claim are privileged. Respondents include various drug 

manufacturers who argue that mandamus should not lie

because Petitioners (1) have failed to show that the District 

Court committed a clear and indisputable abuse of discretion;

(2) have another adequate remedy; and (3) will not suffer

irreparable injury. Because Petitioners fail to meet the high bar 

set for granting a petition for writ of mandamus, we will deny 

their petition.

II. FACTUAL BACKGROUND

Petitioners Abbvie and BHI owned a now-expired 

patent (the ’894 patent), protecting AndroGel 1%, a topical 

drug used to treat patients with low testosterone. FTC v. 

AbbVie Inc., 976 F.3d 327, 341-42 (3d Cir. 2020) (“FTC II”).2

The original patent application, which the patent examiner 

rejected, “claimed all penetration enhancers.” Id. at 341. It was 

later amended “to recite at least one of 24 penetration 

enhancers,” among them isopropyl myristate and isostearic 

acid, though not isopropyl palmitate. Id. The claimed 

pharmaceutical composition for the patent that ultimately 

2 “AbbVie acquired Unimed’s interest in the patent as follows: 

in 1999, Unimed was acquired by Solvay; in 2010, Solvay was 

acquired by Abbott; in 2013, Abbott separated into two 

companies—Abbott and AbbVie—with AbbVie assuming all 

of Abbott’s propriet[ar]y pharmaceutical business, including 

its interest in Androgel.” FTC II, 976 F.3d at 341.
6

issued had been reduced to a formulation with only a single

enhancer: isopropyl myristate. Id. at 342. 

The Drug Price Competition and Patent Term 

Restoration Act of 1984, commonly known as the HatchWaxman Act, provides a regulatory scheme for testing and 

approving new drugs. 21 U.S.C. § 355; FTC v. Actavis, Inc., 

570 U.S. 136, 142-44 (2013); see In re Wellbutrin XL Antitrust 

Litig. Indirect Purchaser Class, 868 F.3d 132, 143-44 (3d Cir. 

2017). The Act provides special procedures for approving 

brand-name and generic drugs, as well as “for identifying, and 

resolving, related patent disputes.” Actavis, Inc., 570 U.S. at 

143. Following these procedures, drug companies Perrigo 

Company (“Perrigo”) and Teva Pharmaceuticals USA, Inc. 

(“Teva”) sought FDA approval for generic Androgel 1% 

formulations. FTC II, 976 F.3d at 342-43. Perrigo’s version 

specified a formulation using isostearic acid as its penetration 

enhancer, while Teva specified a formulation using isopropyl 

palmitate (which Petitioners later argued was equivalent to 

isopropyl myristate). Id. at 343. Both companies certified 

under 21 U.S.C. § 355(b)(2) that Petitioners’ ’894 patent was 

invalid or not infringed by their own formulations. Id. at 343-

44, 361. Under 21 U.S.C. § 355(j)(5)(B)(iii), Petitioners then—

as owners of the ’894 patent—had “45 days to decide whether 

to sue.” Id. at 340.

Petitioners sued Perrigo for infringement in the District 

of New Jersey. Id. at 344. They then contacted Perrigo only 

days later to discuss settling the lawsuit, offering to pay Perrigo 

$500,000. Ultimately, Abbott paid Perrigo $2,000,000, with

Perrigo agreeing in exchange to delay marketing its generic 1% 

testosterone gel until January 1, 2015, or until another version 
7

entered the market, whichever occurred first. Id. Abbott also 

sued and settled with Teva, agreeing to license Teva to market 

its generic gel beginning on December 27, 2014. Id. The FDA 

later approved Perrigo’s and Teva’s products, which used

isostearic acid and isopropyl palmitate, respectively. Id. at 345.

III. PROCEDURAL BACKGROUND

The procedural history of this and related litigation is 

lengthy and has begun to resemble the many heads of Hydra. 

On October 31, 2011, Petitioners filed a lawsuit against Perrigo 

(the “Perrigo Lawsuit”) through their outside counsel, Munger, 

Tolles & Olson, LLP (“Munger Tolles”) and Foley & Lardner 

LLP (“Foley Lardner”). Petitioners alleged that “the 

submission of [Perrigo’s new drug application] . . . constitutes 

infringement by Perrigo . . . of the ’894 Patent” and that “any 

commercial manufacture, use, sale, offer for sale, or 

importation of Perrigo’s Generic AndroGel® would infringe 

the ’894 Patent.” App. 272. Munger Tolles and Foley Lardner 

certified that the Perrigo Lawsuit was “not being presented for 

any improper purpose.” Fed. R. Civ. P. 11(b)(1).

In 2014, the Federal Trade Commission (“FTC”) filed 

an antitrust suit in the District Court against Petitioners, 

alleging that Petitioners “maintained an illegal monopoly 

through the filing of sham patent infringement lawsuits against 

two potential competitors,” i.e., Perrigo and Teva. See FTC v. 

AbbVie Inc., 329 F. Supp. 3d 98, 106 (E.D. Pa. 2018) (“FTC 

I”). In early interrogatory responses, Petitioners averred that 

their outside counsel Munger Tolles and Foley Lardner “w[ere] 

responsible for, involved in, or contributed to [the] decisions 

to file the . . . Perrigo [l]itigation.” App. 248. By the time of 
8

trial, Petitioners asserted that “internal counsel for Abbott 

Products” made “[t]he ultimate decision to sue Perrigo in 

2011.” App. 661. In ruling against AbbVie after a bench trial, 

the District Court reasoned that internal counsel “had actual 

knowledge” that the lawsuit was “baseless” and that “they 

acted in bad faith.” FTC I, 329 F. Supp. 3d at 126. The 

lawsuit’s sole purpose, the District Court concluded, “was to 

impose expense and delay [on] Perrigo.” Id. 

We upheld the District Court, leaving undisturbed its

finding that AbbVie had filed an objectively baseless lawsuit 

in bad faith to injure a potential competitor. FTC II, 976 F.3d 

at 371. We explained: “[T]he [District] Court was permitted to 

conclude . . . that in filing an objectively baseless lawsuit 

against Perrigo, the decisionmakers were motivated not to 

assert a patent in good faith, but to impose expense and 

delay . . . .” Id.

After our decision in FTC II, Respondents in the instant 

matter filed suit in 2019 against Petitioners, in the case of King 

Drug Co. of Florence, Inc., et al. v. Abbott Laboratories, et al., 

No. 2:19-cv-03565 (E.D. Pa.) (“the King lawsuit”). They 

alleged antitrust claims under the Sherman Act, arguing that 

patent-infringement lawsuits including the Perrigo suit delayed 

market entry of generic AndroGel 1%. Respondents moved for 

partial summary judgment, arguing that FTC II had preclusive 

effect as to whether the Perrigo lawsuit constituted sham 

litigation. The District Court declined to apply issue preclusion 
9

but held, once again, that the Perrigo litigation was objectively 

baseless.3

After discovery commenced in the King lawsuit, 

Respondents moved to compel production of 211 documents, 

which they argued revealed Petitioners’ in-house counsel’s

views about the baselessness of suing the generic drug 

manufacturers in the Perrigo lawsuit. Respondents contended 

that because both the District Court and this court in FTC II

had already held that the Perrigo litigation was objectively 

baseless, any communication by Petitioners’ in-house counsel 

concerning whether to file that suit constituted a 

communication in furtherance of fraud, and that such 

communication would not be protected by the attorney-client 

privilege due to the crime-fraud exception.

4 Petitioners 

maintained that the attorney-client privilege applies. The 

District Court asked Respondents to prepare and provide a list 

of 100 documents for it to review in camera. Petitioners asked 

3 The parties proceeded to discovery, and one of the issues that 

remained was whether Petitioners’ subjective motivation for 

filing suit was for an improper purpose.

4 Under the crime-fraud exception, communications made 

between an attorney and client that are “in furtherance of future 

illegal conduct” are not protected by attorney-client privilege. 

United States v. Zolin, 491 U.S. 554, 556 (1989); see Haines v. 

Liggett Grp. Inc., 975 F.2d 81, 90 (3d Cir. 1992).
10

the District Court for permission to appeal that ruling under 28 

U.S.C. § 1292(b),5 but their motion was denied. 

After reviewing the challenged documents in camera, 

the District Court ordered Petitioners to produce nineteen 

documents.

6 The District Judge explained that, “it is reasonable 

5 28 U.S.C. § 1292(b) dictates in relevant part:

When a district judge, in making in a civil action 

an order not otherwise appealable under this 

section, shall be of the opinion that such order 

involves a controlling question of law as to 

which there is substantial ground for difference 

of opinion and that an immediate appeal from the 

order may materially advance the ultimate 

termination of the litigation, he shall so state in 

writing in such order. 

6 In the District Court’s March 27, 2023 order, Judge Bartle

determined that the filing of an action “held to be a sham is 

encompassed within the definition of a fraud under the crimefraud exception.” App. 13-14. He also recognized that “it is not 

necessary to decide whether the filing of a sham litigation in 

this Circuit is a common law fraud on the court” because 

“reliance[,] while an essential element of common law fraud[,] 

is not an essential element of fraud for purposes of the crimefraud exception in the Third Circuit.” App. 8-9. 

Petitioners also complain that the District Court 

“rejected the Federal Circuit’s conclusion, made in patent 

cases, that no fraud exists under the [crime-fraud] exception 
11

to infer from their legal research and analysis that [the 

attorneys] knew the filing of the litigation would be a sham,” 

and thus, since the attorneys were “key decisionmakers who 

directed the filing of sham litigation,” “it is reasonable to 

conclude that the attorneys used their own legal research and 

analysis—the documents at issue here—in furtherance of 

fraud.” App. 183-84. 

Petitioners then sought a writ of mandamus, the matter 

now before us. It seeks vacatur of the District Court’s orders 

dated March 27, 2023, and July 20, 2023—the orders which 

had directed Petitioners to produce documents for which they 

claimed privilege, and to which the District Court had 

concluded the crime-fraud exception applied. The District 

Court has stayed its order compelling production of the 

documents pending our decision. 

IV. HISTORY OF THE WRIT OF MANDAMUS

The writ of mandamus has a long history, likely 

reaching back to the 16th century.7 Despite that lineage, courts 

without” misrepresentation of fact or reliance on such a 

misrepresentation, Pet. at 9-10. But the District Court 

appropriately applied Third Circuit law because “[t]he Federal 

Circuit does not have jurisdiction over any appeal in this 

action.” App. 12. 

7 Some scholarly sources indicate that the first reported case 

involving a writ of mandamus arose in 1573 in Middleton’s 

Case, 3 Dyer 332b (1573). See, e.g., Leonard Goodman, 

Mandamus in the Colonies-The Rise of the Superintending 
12

have granted it sparingly. After the first mandamus statute’s 

enactment in 1710, courts were “either reluctant to or [] 

prevented from asserting supervisory authority” with respect to 

writs of mandamus and certiorari. Leonard Goodman, 

Mandamus in the Colonies-The Rise of the Superintending 

Power of American Courts, THE AM. J. OF LEGAL HIST. VOL.

I, 4 at 310 (Oct. 1957). Indeed, writing in 1768, Blackstone 

described mandamus as a “high prerogative writ,” emphasizing

its discretionary nature. 3 William Blackstone, 

COMMENTARIES 110. Over time, courts in England expressed 

reservations about granting mandamus if a party could seek

recourse by pursuing some other remedy. See Audrey Davis, 

Note, A Return to the Traditional Use of the Writ of 

Mandamus, 24 LEWIS & CLARK L. REV. 1527, 1536 (2020) 

(citing R. v. Governor of the Bank of Eng., 99 Eng. Rep. 334, 

334 (1780); T.E. Tomlins, A DIGESTED INDEX TO THE SEVEN 

VOLUMES OF TERM REPORTS IN THE COURT OF KING’S BENCH

127 (1799)). The availability of a remedy in equity also barred 

mandamus. See R. v. Marquis of Stafford, 100 Eng. Rep. 782, 

785 (1790). 

Mandamus figured prominently in early United States 

Supreme Court jurisprudence. The Supreme Court first dealt 

with mandamus in U.S. v. Lawrence, 3 U.S. (3 Dall.) 42 (1795),

and in that case denied the writ. The landmark case of Marbury 

v. Madison, 5 U.S. (1 Cranch) 137 (1803), came before the 

Power of American Courts, THE AM. J. OF LEGAL HIST. VOL.

I, 4 at 309 (Oct. 1957). The King’s Bench issued its more 

foundational mandamus case in 1615. See id. (discussing 

James Bagg’s Case, 11 Coke’s Rep. 93 at 98 (1615)). 
13

Supreme Court on a writ of mandamus, sought by William 

Marbury and three others similarly situated when, after being 

appointed Justices of the Peace in the District of Columbia, 

their commissions were not delivered. There, Chief Justice 

Marshall discussed the writ’s origin and use and cabined its 

appropriateness to those instances when a party has no other 

legal remedy. Id. at 168-69. Since the eighteenth century, the 

Supreme Court has continued to emphasize the “extraordinary” 

nature of mandamus relief. See, e.g., U.S. Alkali Export Ass’n 

v. United States, 325 U.S. 196, 202-03 (1945); Ex parte Fahey, 

332 U.S. 258, 259-60 (1947); Cheney v. U.S. Dist. Court, 542 

U.S. 367, 380 (2004).

V. MANDAMUS JURISDICTION STANDARD OF 

REVIEW

This Court has authority to issue writs of mandamus 

pursuant to the All Writs Act, 28 U.S.C. § 1651(a). In re 

Chambers Dev. Co., Inc., 148 F.3d 214, 223 (3d Cir. 1998).

The writ of mandamus is an “extreme” remedy reserved for 

only the most “extraordinary situations.” Haines, 975 F.2d at

88 (quoting Kerr v. U.S. Dist. Court, 426 U.S. 394, 402 

(1976)); see Will v. United States, 389 U.S. 90, 95 (1967). To 

obtain mandamus relief, Petitioners must show: “(1) a clear 

and indisputable abuse of discretion or error of law, (2) a lack 

of an alternate avenue for adequate relief, and (3) a likelihood 

of irreparable injury.” In re Howmedica Osteonics Corp., 867 

F.3d 390, 401 (3d Cir. 2017) (internal citations and quotation 

marks omitted). When laying out mandamus requirements, the 

Supreme Court explained that petitioners must “demonstrate a 

‘clear abuse of discretion,’ or conduct amounting to 

‘usurpation of [the judicial] power.’” Mallard v. U.S. Dist. Ct. 
14

for S. Dist. of Iowa, 490 U.S. 296, 309 (1989) (internal citations 

omitted). By grouping “clear abuse of discretion” with 

something as egregious as a usurpation of judicial power, the 

Supreme Court conveyed that a clear and indisputable abuse of 

discretion standard presents a high bar. Moreover, even if 

Petitioners here can make the three-pronged showing set forth

above, this Court still has broad discretion in deciding whether 

to grant or deny a mandamus petition. See, e.g., In re McGrawHill Glob. Educ. Holdings, LLC, 909 F.3d 48, 57 (3d Cir. 

2018); Cheney, 542 U.S. at 381.

We will deny the petition for a writ of mandamus, as 

Petitioners fail to clear the high bar this Court requires for 

mandamus relief to be awarded.

VI. ANALYSIS

a. PETITIONERS HAVE IDENTIFIED NO CLEAR AND 

INDISPUTABLE RIGHT TO RELIEF

i. SHAM LITIGATION TRIGGERING THE CRIMEFRAUD EXCEPTION

To satisfy the Supreme Court’s two-part definition of 

sham litigation, (1) “the lawsuit must be objectively baseless 

in the sense that no reasonable litigant could realistically 

expect success on the merits,” and (2) “the baseless lawsuit 

[must] conceal[] an attempt to interfere directly with the 

business relationships of a competitor through the use [of] the 

governmental process—as opposed to the outcome of that 

process—as an anticompetitive weapon.” Pro. Real Est. Invs.,

Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60-61 
15

(1993) (internal citations and quotation marks omitted); see 

Hanover 3201 Realty, LLC v. Vill. Supermarkets, Inc., 806 

F.3d 162, 179 (3d Cir. 2015). It follows, then, that sham 

litigation is a “wrongdoing” that involves a client’s intentional 

“misuse” of the legal process for an “improper purpose.” In re 

Grand Jury, 705 F.3d 133, 151, 157 (3d Cir. 2012) (internal 

citation omitted).

8 And as we have said, albeit outside the 

antitrust context, a client’s intentional “misuse [of] [an] 

attorney’s advice in furtherance of” “wrongdoing” undertaken 

for an “improper purpose,” triggers the crime-fraud exception. 

Id. 

8 Out-of-Circuit cases also support the conclusion that sham 

litigation triggers the crime-fraud exception. See, e.g., United 

States v. Richard Roe, Inc., 168 F.3d 69, 72 (2d Cir. 1999) 

(holding that “bringing baseless litigation intended to delay 

entry into a market by a competitor” may “after a rigorous in 

camera review by a court for relevance, fall within the crimefraud exception”); Chandler v. Phoenix Servs., No. 7:19-cv00014-O, 2020 WL 487503, at*5 (N.D. Tex. Jan. 30, 2020) 

(“Thus, the crime-fraud exception applies to all attorney-client 

communications and work product made in furtherance of the 

Phoenix Defendants’ assertion of the ‘993 Patent through the 

alleged sham patent litigation.”); Peerless Indus., Inc. v. 

Crimson AV LLC, No. 11 C 1768, 2013 WL 6050006, at *4 

(N.D. Ill. Nov. 14, 2013) (“Fraud consisting of the knowing 

pursuit of baseless litigation may bring the crime-fraud 

exception into play.”) (quoting Motorola, Inc. v. Vosi Techs., 

Inc., No. 01 C 4182, 2002 WL 1917256, at *6 (N.D. Ill. Aug.

19, 2002)).
16

The central merits question before us, therefore, is 

whether sham litigation is a type of fraud which may form the

basis for a party to invoke the crime-fraud exception to the 

attorney-client privilege. We have found no binding precedent 

that squarely answers this question, nor have the parties 

pointed us to any. And Petitioners concede as much. While 

acknowledging that “this Court has not directly opined on the 

meaning of ‘fraud’ in the exception,” Petitioners nevertheless 

argue that “this Court’s decisions are all consistent with an 

understanding of fraud that requires deception regarding a 

material fact.” Pet. at 16 (internal citation omitted) (emphasis 

added). This is simply not the stuff of which “binding 

authority” is cast. Without such authority, mandamus 

petitioners “do not come close to demonstrating” that the 

District Court committed a clear error or an abuse of discretion 

in concluding that sham litigation may trigger application of 

the crime-fraud exception. Republic of Venez. v. Philip Morris, 

Inc., 287 F.3d 192, 199 (D.C. Cir. 2002) (concluding 

petitioners failed to show clear error where no binding 

authority existed and sister circuits were split on the issue at 

hand). 9

9 Petitioners, citing out-of-Circuit precedent, argue that 

mandamus relief may be appropriate in the absence of a clear 

error, when a case involves “an issue important to ‘proper 

judicial administration,’” In re Gonzales, 623 F.3d 1242, 1246-

47 (9th Cir. 2010), rev’d on other grounds, 568 U.S. 57 (2013) 

(internal citation omitted), or a “legal question of first 

impression or of extraordinary significance,” In re von Bulow, 

828 F.2d 94, 97-98 (2d Cir. 1987). We have previously 
17

recognized a “line of cases recognizing that mandamus may 

properly be used as a means of immediate appellate review of 

orders compelling the production of documents claimed to be 

protected by privilege.” Bogosian v. Gulf Oil Corp., 738 F.2d 

587, 591, 596 (3d Cir. 1984). There, we considered a disclosure 

order with “no adequate, alternative procedure for review,” and 

recognized that, in such an instance, we “may” consider the 

claimed privilege by exercising our mandamus power. Id. at 

591. But even where we considered the merits of a workproduct doctrine issue and remanded “without formal issuance 

of the writ of mandamus,” we “caution[ed] that mandamus is 

not to be used as an ordinary vehicle to obtain interlocutory 

relief from discovery orders.” Id. Its availability is limited to

“prevent[ing] grave injustice.” Id. 

Under our precedent, while the legal issues a petition for 

mandamus presents may inform whether we exercise our 

discretion to grant mandamus even if Petitioners cannot make 

the three-pronged showing discussed above, see, e.g., In re 

McGraw-Hill Glob. Educ. Holdings, LLC, 909 F.3d at 57, we 

do not find it necessary to exercise such discretion here. At its 

core, our precedent dictates that mandamus should not 

“become a means” for “all potentially erroneous orders,” to be 

corrected. Id. (internal citation omitted). And our case law has 

repeatedly emphasized that “errors of law must at least 

approach[] the magnitude of an unauthorized exercise of 

judicial power, or a failure to use that power when there is a 

duty to do so.” Id. (internal citations and quotation marks 

omitted). There has been no unauthorized exercise of judicial 

power here.
18

Without binding authority to guide it, the District 

Court’s conclusion that sham litigation triggers the crime-fraud 

exception was not a “clear and indisputable abuse of discretion 

or error of law.” In re Howmedica, 867 F.3d at 401. In short, 

there was no usurpation of judicial power. The Supreme Court 

has recognized that the crime-fraud exception applies when 

attorney advice “refers . . . to future wrongdoing.” Zolin, 491 

U.S. at 562-63 (quoting 8 Wigmore § 2298, at 573). And as 

Respondents note, we have broadly understood “wrongdoings”

to include not only crimes but also torts. See United States v. 

Doe, 429 F.3d 450, 454 (3d Cir. 2005); In re Grand Jury 

Proceedings, 604 F.2d 798, 802 (3d Cir. 1979). Further, we 

have recognized that “[a]ll that is necessary is that the client 

misuse or intend to misuse the attorney’s advice in furtherance 

of an improper purpose. When this occurs, the purpose of the 

privilege, to promote the fair administration of justice, has been 

undermined and the privilege no longer applies.” In re Grand 

Jury, 705 F.3d at 157 (internal citation omitted) (emphasis 

added). 

Petitioners argue that the District Court clearly erred in 

holding that sham litigation triggers the crime-fraud exception 

because it relied on an “egregious misreading” of In re 

Chevron, 633 F.3d 153 (3d Cir. 2011). Pet. at 18. Petitioners 

are wrong. As Respondents contend, In re Chevron is easily 

distinguishable from what is before us. 

There, after Chevron’s corporate predecessor was sued 

in Ecuador, an Ecuadorian court appointed “global damages 

expert” Richard Stalin Cabrera Vega (“Cabrera”). 633 F.3d at 

157-58. Cabrera’s team of fourteen experts included Juan 

Cristóbal Villao Yepez (“Villao”), who happened to be
19

employed by the New Jersey environmental firm that plaintiffs

in that suit had hired as a consultant. Id. at 159. After learning 

of Villao’s “dual employment,” Chevron made discovery 

requests and invoked the crime-fraud exception as a means of 

piercing the attorney-client privilege. Id. at 159-60. In 

affirming the District Court’s application of the crime-fraud 

exception, our Court explained that it viewed the dual 

employment as a “conflict of interest.” Id. at 166. We 

elaborated that the “showing of Villao’s dual employment 

[was] sufficient to make a prima facie showing of a fraud that 

satisfies the first element” needed for the crime-fraud 

exception to apply. Id. In the case before us, the District Court

reasoned that “[i]f an expert’s conflict of interest in a foreign 

court can be a fraud, surely the filing of a sham lawsuit in the 

United States District Court for the District of New Jersey can 

be a fraud.” App. 14. This a fortiari comparison was 

reasonable and hardly suggests a misreading of In re Chevron.

Certainly not all frivolous litigation falls within the 

crime-fraud exception. Frivolous litigation may trigger Rule 11 

sanctions,10 but that will not, by itself, allow access to material

otherwise shielded by the attorney-client privilege. Our focus 

is limited to what qualifies as “sham litigation.” Here, it is the 

lawsuit’s baselessness, combined with the client’s subjective 

intent to interfere with administrative and judicial procedures 

10 We have recognized that Rule 11 aims “to discourage 

pleadings that are ‘frivolous, legally unreasonable, or without 

factual foundation, even though the paper was not filed in 

subjective bad faith.’” Lieb v. Topstone Indus., Inc., 788 F.2d 

151, 157 (3d Cir. 1986) (internal citation omitted).
20

associated with patent rights, that triggers the crime-fraud 

exception.

ii. RELIANCE REQUIREMENT

Petitioners next argue that the District Court, 

“committed an additional clear error” by not applying a 

“reliance” requirement. Pet. at 22. This argument also fails. As 

Respondents explain, the crime-fraud exception, as this Court 

has articulated it, applies if “the client was . . . intending to 

commit a fraud or crime, and [] the attorney-client 

communications were in furtherance of that” attempt. Chevron, 

633 F.3d at 166 (quoting In re Grand Jury Investigation, 445 

F.3d 266, 274 (3d Cir. 2006)). In none of our opinions 

addressing the crime-fraud exception have we embraced a

reliance requirement.

We have explained that “where the client consults the 

attorney for the purpose of committing a future [] fraud, the 

crime-fraud exception to the attorney-client privilege applies 

and communications made in furtherance of the anticipated [] 

fraud are not protected from disclosure as recognition of ‘the 

privilege is no longer defensible.’” Id. (quoting In re Grand 

Jury Proceedings, 604 F.2d at 802) (internal quotation marks 

omitted). That understanding stems from the Supreme Court’s 

instruction that “[i]t is the purpose of the crime-fraud exception 

to the attorney-client privilege to assure that the seal of secrecy 

between lawyer and client does not extend to communications 

made for the purpose of getting advice for the commission of 

a fraud or crime.” Zolin, 491 U.S. at 563 (internal quotation 

marks and citations omitted). Moreover, a party who invokes

the crime-fraud exception can satisfy the fraud requirement by 
21

demonstrating nothing more than that “the client 

was . . . intending to commit a fraud.” Pallares v. Kohn (In re 

Chevron Corp.), 650 F.3d 276, 291 (3d Cir. 2011) (internal 

citation omitted); see also Clark v. United States, 289 U.S. 1, 

15 (1933) (“The privilege takes flight if the relation is abused. 

A client who consults an attorney for advice that will serve him 

in the commission of a fraud will have no help from the 

law.”).11

The District Court followed our Court’s case law, 

noting that “the decisions of the Third Circuit . . . have 

described fraud in the crime-fraud exception to include advice 

as to attempted or intended fraud,” and “[i]f the fraud does not 

have to be consummated, there can be no requirement of 

reliance.” App. 8. The District Court did not clearly err in 

holding that “the law of the Third Circuit applies the crimefraud exception without the need for reliance.” Id. 

We will not consider Petitioners’ argument that 

“attempted fraud” requires an “attempt to induce” reliance, Pet. 

at 23. As Respondents explain, this argument was raised for the 

first time in the filing of the Petition. Because the argument 

was not raised in the District Court, Petitioners have forfeited

it. See Newark Morning Ledger Co. v. United States, 539 F.2d 

929, 932 (3d Cir. 1976).

11 Petitioners concede that “[t]his Court has not . . . ruled on 

that [reliance] issue.” Pet. at 23. Thus, as Petitioners recognize, 

there is no binding precedent supporting their argument.

Mandamus relief is therefore inappropriate. 
22

iii. THE ‘IN FURTHERANCE OF’ PRONG

Petitioners argue that the District Court adopted the 

mistaken view that this Court “‘has broadly interpreted the 

scope of communications or work product that implicate the 

crime-fraud exception’ under the ‘in furtherance of’ 

requirement.” Pet. at 27 (quoting App. 184).12 Again, 

Petitioners are seeking to stretch pronouncements in our case 

law beyond their intended reach.

The crime-fraud exception does not extend to

communications that “merely relate to the crime or fraud” or 

“merely opine[] on the lawfulness of a particular course of 

conduct.” In re Grand Jury Subpoena, 745 F.3d 681, 693 (3d 

Cir. 2014); see also In re Grand Jury, 445 F.3d 266, 276-77 

(3d Cir. 2006). But here, the District Court zeroed in on an 

array of documents that provided “a reasonable basis to suspect 

that AbbVie and [BHI] intended to file sham litigation for the 

purpose of preventing or delaying Perrigo from entering the 

testosterone replacement market.” App. 185.

12 Petitioners have not challenged the District Court’s factual 

findings as clearly erroneous. As an appellate court, we must 

show “great deference” to the District Court, United States v. 

Antoon, 933 F.2d 200, 204 (3d Cir. 1991), and “accept the 

factual determination of the fact finder unless that 

determination ‘either (1) is completely devoid of minimum 

evidentiary support displaying some hue of credibility, or (2) 

bears no rational relationship to the supportive evidentiary 

data.’” Haines, 975 F.2d at 92 (internal citations omitted).
23

The District Court identified four documents 

demonstrating that “the attorneys were well-aware that they 

had a 45-day period after receiving Perrigo’s letter to file a 

lawsuit before the 30-month stay expired.” App. 186 (citing 

Exs. 2, 15, 30, 39). They also knew that “[i]f they received the 

30-month stay, Perrigo would not be able to enter the market 

until late March 2014.” Id. Another document, dated over 15 

days before the infringement action against Perrigo was filed, 

revealed in-house counsel “discussing internally their 

settlement proposal, not about what Perrigo might pay them 

but instead what they might pay Perrigo.” App. 187. And the 

District Court recognized that “[i]n two documents, the 

attorneys examined statistics about the typical length for patent 

cases to be resolved in various district courts.” App. 186 (citing 

Exs. 21, 61). The documents show that the attorneys believed 

that New Jersey, where the case was ultimately filed, often 

takes “notably longer than [] other district courts in the 

country” “to resolve patent cases.” Id. Ironically, the in-house 

lawyers appeared to regard judicial delay as an ally.

We have recognized the fact that a client “could gain” 

information from questions an attorney posed as “sufficient . . 

. to conclude that the District Court did not abuse its discretion 

in determining that the advice was used in furtherance of a 

crime or fraud.” In re Grand Jury Subpoena, 745 F.3d at 691. 

This is true even if it is “impossible to know what [the] [c]lient 

thought or how he processed the information gained from [his] 
24

[a]ttorney” so long as the correspondence itself “would lead 

logically” to the client committing a wrongdoing. Id. at 693.13

13 In In re Grand Jury Subpoena, we considered whether the 

crime-fraud exception applied to the testimony of an attorney 

whose corporate client approached him with questions 

regarding obtaining financing from a bank for a particular 

project. 745 F.3d at 685. The client told his attorney that the 

official overseeing the project’s financing had threatened to 

slow the process for approving it. Id. Hoping to facilitate 

approval, the client told his attorney he planned to make a 

payment to the official. Id. After conducting preliminary 

research and reviewing the Foreign Corrupt Practices Act 

(“FCPA”), the attorney asked the client whether the financial 

institution was a government entity or if the official at issue 

worked for the government. Id. Further, the attorney advised 

the client not to make any payment to the official. Id. At that 

point, having conducted only limited research, the attorney had 

not determined whether paying the bank official would be 

illegal. Id. The client did not heed his attorney’s advice. Id. 

Instead, the client conveyed that he would make the payment, 

insisting there would be no FCPA violation. Id. The client and 

attorney then terminated their relationship. Id. The client later 

made payments of more than $3.5 million over a two-year span 

to the bank official’s sister, a person not affiliated with the 

financial institution. Id.

We recognized in that case that the attorney’s questions 

concerning possible government affiliation would have 
25

In the case before us, the pre-filing documents “would 

lead logically” to an inference that in-house counsel filed a 

sham lawsuit to trigger the 30-month stay. Id. The documents 

show in-house counsel’s focus on research related to pursuing 

sham litigation. Thus, the District Court did not abuse its 

discretion in determining that the pre-filing documents were in 

furtherance of a fraud.

14

Additionally, we emphasize that the usual crime-fraud 

scenario is one in which the attorney and client play distinct 

roles in their relationship. As Respondents contend, the only 

actors here are in-house counsel who communicated with and 

advised one another. So the District Court did not clearly err in 

determining that “the attorneys here did more than opine on the 

lawfulness of the conduct.” App. 183. Rather, it correctly 

indicated to the client “that the governmental connection was 

key to violating the FCPA.” Id. at 693. Awareness of that 

connection “would lead logically” to the client’s attempting “to 

avoid the reaches of the FCPA or detection of [an FCPA] 

violation” by making payments to the bank official’s sister 

rather than to the banker himself. Id. 

14 In reaching this conclusion, the District Court did not rely on 

“after the fact” evidence, as Petitioners suggest. The

Documents preceded the filing of the Perrigo Lawsuit, and the 

District Court pointed to the fact that in-house counsel’s 

internal settlement discussions “began over 15 days before the 

infringement action against Perrigo was filed.” App. 187.
26

recognized that the “distinction between attorney and client is 

conflated in this case.” App. 184.

Petitioners take issue with the District Court’s

characterizing the “legal analyses by in-house or outside 

counsel of the merits of potential claims against Perrigo and 

defenses Perrigo might raise” as being ‘in furtherance of’ 

fraud. Pet. at 28-29. They also disagree with the District 

Court’s legal conclusion that emails from in-house counsel 

discussing (1) Perrigo’s certification that the ’894 patent was 

not invalid or infringed and (2) an assessment regarding 

whether they could assert the patent against Perrigo were ‘in 

furtherance of’ fraud. The District Court highlighted that “a 

number of the documents reveal that the attorneys doubted the 

merits of the action against Perrigo,” such as a document that 

relied on the doctrine of equivalents,15 which the District Court 

had previously found to be “objectively baseless.” App. 188-

89. Further, “[i]n other documents, the attorneys delve[d]

extensively into their concerns that the lawsuit against Perrigo 

would result in sanctions under Rule 11.” App. 190 (citing Exs. 

24, 29, 30, 31, 32, 66, 160). And the District Court noted that 

“[t]he attorneys feared that they did not have viable arguments 

15 Under the doctrine of equivalents “a product or process that 

does not literally infringe upon the express terms of a patent 

claim may nonetheless be found to infringe if there is 

‘equivalence’ between the elements of the accused product or 

process and the claimed elements of the patented invention.” 

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 

U.S. 17, 21 (1997) (internal citation omitted).
27

under the disclosure-dedication doctrine.”16 Id. Together, these

legal analyses and emails demonstrate how in-house counsel 

developed the sham litigation.

Petitioners also argue that “the privilege is lost only as to 

communications advising how to commit or conceal a fraud.”

Pet. at 27. Yet our case law does not impose such a limitation. 

We have recognized that “[a]ll that is necessary [to trigger the 

crime-fraud exception] is that the client misuse or intend to 

misuse the attorney’s advice in furtherance of an improper 

purpose.” In re Grand Jury, 705 F.3d at 157. Moreover, we 

agree with Respondents, that a reasonable factfinder could 

determine, based on the documents discussed above, that inhouse counsel, in planning to quickly pay Perrigo to settle, 

were advising themselves on how to commit a wrongdoing by 

engaging in sham litigation.

b. A POST-JUDGMENT APPEAL IS ADEQUATE AND 

AVAILABLE

“To prevail on the merits of a mandamus petition, 

[Petitioners] must show . . . that no other adequate alternative 

remedy exists.” In re Citizens Bank, N.A., 15 F.4th 607, 616 

16 Under the disclosure-dedication doctrine, “when a patent 

drafter discloses but declines to claim subject matter, . . . this 

action dedicates the unclaimed subject matter to the public.” 

Eagle Pharm. Inc. v. Slayback Pharma LLC, 958 F.3d 1171, 

1175 (Fed. Cir. 2020) (quoting Johnson & Johnston Assoc. v. 

R.E. Servs., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc)). 

This doctrine thus “bars application of the doctrine of 

equivalents.” Id. 
28

(3d Cir. 2021) (internal citation omitted). They have failed to 

make such a showing.

The Supreme Court concluded in Mohawk Industries, 

Inc. v. Carpenter that “postjudgment appeals generally suffice 

to protect the rights of litigants and ensure the vitality of the 

attorney-client privilege.” 558 U.S. 100, 109 (2009). That is so 

because “[a]ppellate courts can remedy the improper 

disclosure of privileged material in the same way they remedy 

a host of other erroneous evidentiary rulings: by vacating an 

adverse judgment and remanding for a new trial in which the 

protected material and its fruits are excluded from evidence.”

Id. Respondents apply “Mohawk’s logic” to support their 

contention that Petitioners cannot obtain mandamus relief 

unless they show “why, under the facts of this case, a postjudgment appeal is inadequate.” Answer at 30. We conclude 

that Petitioners have failed to show why a post-judgment 

appeal is insufficient to protect their rights under the facts here.

Petitioners argue that “disobeying the orders and 

accepting sanctions is inadequate because that could trigger a 

form of sanction that is onerous but not immediately 

appealable.” Pet. at 31 (internal citations omitted). But they fail 

to recognize another path that, though burdensome, would 

allow for immediate appeal: disobeying a court order, being 

held in contempt, and then appealing the contempt order. In re 

Search of Elec. Commc’n’s in the Acct. of 

chakafattah@gmail.com at Internet Serv. Provider Google, 

Inc., 802 F.3d 516, 526 (3d Cir. 2015); see Fed. R. Civ. P. 70. 

Here, Petitioners could refuse to disclose the nineteen 

documents at issue and face sanctions such that a contempt 

proceeding could be initiated to ultimately provide the judicial 
29

review they seek. By failing to consider that option, at least in 

this instance, they have failed to show that no adequate 

alternative remedy exists.17

C. PETITIONERS FAIL TO SHOW IRREPARABLE

INJURY

“Mandamus also requires a showing of irreparable 

injury,” In re Citizens Bank, 15 F.4th at 616 n.8, yet Petitioners 

have not demonstrated how the documents at issue in this case, 

in being disclosed, would irreparably harm them. As 

Respondents emphasize, the documents, which now are more 

than a decade old, relate to an expired patent. Several of 

Petitioners’ declarants are no longer employed by Petitioners. 

Further, “protective orders are available to limit the spillover 

effects of disclosing sensitive information.” Mohawk, 558 U.S. 

at 112. The parties agreed to a protective order ensuring that 

the documents at issue could be used only in connection with 

this litigation and could not be publicly disclosed. That 

protective order, as Respondents contend, refutes Petitioners’ 

argument that the orders compelling document production

“threaten[] to expose the losing side in any litigation at all to 

invasive and unwarranted discovery.” Pet. at 32.

VII. CONCLUSION

Because Petitioners fail to show (1) a clear and 

indisputable abuse of discretion or error of law; (2) a lack of an 

17 We do not suggest that provoking a finding of contempt is 

necessary in every case for mandamus relief to be available. 

We simply note that it is one way to obtain judicial review.
30

alternate avenue for adequate relief; and (3) a likelihood of 

irreparable injury, we will deny the petition for a writ of 

mandamus.