United States v. 2006-02-01 | 05-10073 | USA VYE | precedential | opinion |

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
 UNITED STATES OF AMERICA,
Plaintiff-Appellant, No. 05-10073
v. D.C. No.
 CR 02-20145 JWFEI YE, aka Ye Fei; MING ZHONG,
aka Zhong Ming aka Andy Zhong, OPINION
Defendants-Appellees. 
Appeal from the United States District Court
for the Northern District of California
James Ware, District Judge, Presiding
Argued and Submitted
January 9, 2006—San Francisco, California
Filed February 2, 2006
Before: John T. Noonan, A. Wallace Tashima, and
William A. Fletcher, Circuit Judges.
Opinion by Judge Tashima
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COUNSEL
Kyle Waldinger, Assistant United States Attorney, San Fran-
cisco, California, for the plaintiff-appellant.
Paul B. Meltzer, Santa Cruz, California, for defendant-
appellee Fei Ye.
OPINION
TASHIMA, Circuit Judge:
Defendants are charged with possessing stolen trade secrets
in violation of the Economic Espionage Act of 1996 (“EEA”),
18 U.S.C. § 1831 et seq. The district court granted defen-
dants’ motion for pre-trial depositions of several expert wit-
nesses whom the government intends to call at trial. The
government brings this interlocutory appeal under 18 U.S.C.
§ 1835, arguing that the district court erred in granting the
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motion because the order authorizes and directs the disclosure
of trade secrets, and because it is inconsistent with the Federal
Rules of Criminal Procedure and the Jencks Act. In the alter-
native, the government maintains that the district court’s order
is clearly erroneous and warrants mandamus relief. While we
conclude that we do not have appellate jurisdiction under
§ 1835, we find this case appropriate for mandamus relief.
JURISDICTION
We have jurisdiction over an interlocutory appeal under the
EEA when the district court issues “a decision or order . . .
authorizing or directing the disclosure of any trade secret.” 18
U.S.C. § 1835. As discussed below, § 1835 does not provide
us with jurisdiction over this appeal because the government
had already disclosed all of the relevant trade secret materials
prior to the making of the order at issue. We do, however,
have jurisdiction over the government’s petition for a writ of
mandamus under the All Writs Act, 28 U.S.C. § 1651.
BACKGROUND
Defendants Fei Ye and Ming Zhong were arrested by fed-
eral law enforcement agents while attempting to board a flight
to China at the San Francisco International Airport. Federal
agents simultaneously seized various materials from defen-
dants’ personal luggage, homes, and offices, alleged to be
trade secrets stolen from four American technology compa-
nies. Defendants were subsequently charged with possessing
stolen trade secrets with the intent to benefit the People’s
Republic of China.1
1The ten-count indictment included conspiracy to commit economic
espionage, possession of stolen trade secrets, and foreign transportation of
stolen property, in violation of 18 U.S.C. §§ 371, 1831(a)(5), and
1832(a)(5); economic espionage, in violation of 18 U.S.C. § 1831(a)(3);
possession of stolen trade secrets, in violation of 18 U.S.C. § 1832(a)(3);
and foreign transportation of stolen property, in violation of 18 U.S.C.
§ 2314.
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Prior to trial, defendants filed a motion for a bill of particu-
lars, for discovery, and to dismiss the indictment. At the hear-
ing on this motion, the prosecutor explained that “all the trade
secret materials” in the case had already been provided to
defendants pursuant to a protective order months before the
indictment was filed. The prosecutor further noted that these
materials “discuss and explain what the trade secrets are” and
“why they are trade secrets,” and that the materials estimated
“the values of many of these trade secrets.” The district court
denied the motion, reasoning that “the indictment explicitly
identifies the trade secrets involved” for each count, and that
the government had already disclosed more than 8,800 pages
of materials, which “describe the substance of each alleged
trade secret.”
Defendants then filed a motion to depose government wit-
nesses prior to trial. During the hearing on this motion, coun-
sel for Zhong admitted that he was seeking to use the Federal
Rules of Criminal Procedure for discovery purposes:
And [the prosecutor] accuses us of using Rules 15
and 16 to seek discovery.
I don’t know whether [co-defendant’s counsel]
agrees with this, but I do. That’s exactly what we’re
trying to do. We’re trying to find a rule that guaran-
tees us notice in this case and whether it be Rule 15,
Rule 16, or the Court’s inherent power to make this
workable, I think the Court clearly has the ability to
fashion a remedy.
Defense counsel also acknowledged that he wanted the depo-
sitions so that defendants could obtain information on “what
exactly is being alleged to be the trade secret and why it is a
trade secret in advance of trial.” The government opposed the
motion, arguing that the prospective deponents “will be avail-
able at trial,” and that the Federal Rules of Criminal Proce-
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dure do not permit pre-trial depositions for discovery
purposes.
The district court granted defendants’ motion, reasoning
that “the fairness and efficiency of the trial process”
amounted to “exceptional circumstances” under Rule 15.2 The
government’s motion for reconsideration was denied, and the
government now brings this interlocutory appeal/petition for
mandamus.
DISCUSSION
I. Jurisdiction under 18 U.S.C. § 1835
As a threshold matter, defendants contend that we lack
jurisdiction to hear the government’s interlocutory appeal
under § 1835 because the district court’s order does not man-
date the disclosure of any trade secret materials that have not
already been previously disclosed by the government. We
agree.
[1] Section 1835 provides:
In any prosecution or other proceeding under this
chapter, the court shall enter such orders and take
such other action as may be necessary and appropri-
ate to preserve the confidentiality of trade secrets,
consistent with the requirements of the Federal Rules
of Criminal and Civil Procedure, the Federal Rules
of Evidence, and all other applicable laws. An inter-
locutory appeal by the United States shall lie from a
2Rule 15(a)(1) provides in relevant part:
A party may move that a prospective witness be deposed in
order to preserve testimony for trial. The court may grant the
motion because of exceptional circumstances and in the interest
of justice.
Fed. R. Crim. P. 15(a)(1).
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decision or order of a district court authorizing or
directing the disclosure of any trade secret.
18 U.S.C. § 1835. The precise scope of our jurisdiction under
§ 1835 is an issue of first impression.3
“The starting point for our interpretation of a statute is
always its language.” Cmty. for Creative Non-Violence v.
Reid, 490 U.S. 730, 739 (1989). “If the plain language of a
statute renders its meaning reasonably clear, [we] will not
investigate further unless its application leads to unreasonable
or impracticable results.” United States v. Stephens, 424 F.3d
876, 882 (9th Cir. 2005) (internal quotation marks and cita-
tion omitted).
[2] The plain language of the EEA indicates that the gov-
ernment can file an interlocutory appeal pursuant to § 1835
only where a district court’s order actually directs or autho-
rizes the disclosure of a trade secret. See 18 U.S.C. § 1835.
Black’s Law Dictionary defines “disclosure” as “[t]he act or
process of making known something that was previously
unknown.” BLACK’S LAW DICTIONARY 477 (7th ed. 1999); see
also AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LAN-
GUAGE (4th ed. 2000) (defining disclosure as, “[t]o make
known (something heretofore kept secret)”). Here, the district
court’s order did not provide for the disclosure of any trade
secret materials. In its opening brief in this court, the govern-
ment acknowledges that it had already turned over all relevant
trade secret materials and documents:
At the hearing on this motion on October 20, 2003,
3The Third Circuit is the only court to have exercised jurisdiction over
an interlocutory appeal under 18 U.S.C. § 1835. See United States v. Hsu,
155 F.3d 189 (3d Cir. 1998). In Hsu, however, the parties agreed that the
court had jurisdiction because the district court’s order authorized the dis-
closure of trade secrets that had not been previously released. See id. at
193-94.
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the prosecutor noted that “all the trade secret materi-
als” in the case had been provided to the defendants
pursuant to a protective order months before the
indictment was filed, that these materials “discuss
and explain what the trade secrets are” and “why
they are trade secrets,” and that the materials even
estimated “the values of many of these trade
secrets.”
Because the purpose of the district court’s order was only to
clarify exactly which materials the government contends con-
stitute the protected trade secrets, and all relevant materials
had already been turned over, the district court’s order does
not direct or authorize the “disclosure” of trade secrets as
required by the plain language of § 1835. Cf. Hsu, 155 F.3d
at 193-94 (asserting jurisdiction over interlocutory appeal
under § 1835 where district court ordered government to turn
over trade secret materials that had not been previously “dis-
closed” to defendants).
Although we need not go beyond the plain language of
§ 1835, the legislative history of the EEA supports this inter-
pretation. See H.R. REP. NO. 104-788, at 13 (1996), reprinted
in 1996 U.S.C.C.A.N. 4021, 4032. The section-by-section
analysis explains that “[t]he intent of [§ 1835] is to preserve
the confidential nature of the information and, hence, its
value. Without such a provision, owners may be reluctant to
cooperate in prosecutions for fear of further exposing their
trade secrets to public view, thus further devaluing or even
destroying their worth.” Id. Where the government concedes
that it has previously disclosed all of the trade secret materials
pursuant to a protective order, and the ordered depositions are
subject to the same protective order, the underlying rationale
for granting immediate appellate review is absent because
there is no risk of “further exposing trade secrets to public
view.” Id.
[3] The government also argues that this Court has jurisdic-
tion over the interlocutory appeal because the district court’s
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order violates § 1835’s requirement that such orders be con-
sistent with the Federal Rules of Criminal Procedure and
other applicable laws. By its plain language, however, § 1835
grants interlocutory appellate jurisdiction only when a district
court’s order authorizes or directs the disclosure of a trade
secret. See 18 U.S.C. § 1835. As discussed supra, the district
court’s order does not direct the disclosure of a trade secret.
We conclude therefore that we lack jurisdiction over the gov-
ernment’s interlocutory appeal under § 1835. Accordingly,
the government’s appeal must be dismissed.
II. Mandamus relief under 28 U.S.C. § 1651
The government alternatively petitions for a writ of manda-
mus pursuant to the All Writs Act, 28 U.S.C. § 1651. See Mil-
ler v. Gammie, 335 F.3d 889, 895 (9th Cir. 2003) (en banc)
(treating notice of appeal as a petition for a writ of manda-
mus). The Supreme Court has explained that only “excep-
tional circumstances amounting to a judicial usurpation of
power will justify the invocation of this extraordinary reme-
dy.” Will v. United States, 389 U.S. 90, 95 (1967) (internal
quotation marks and citation omitted). “Nevertheless, review
of a discovery order through the exceptional remedy of man-
damus may be appropriate in the proper circumstances.”
Admiral Ins. Co. v. U.S. Dist. Court, 881 F.2d 1486, 1490
(9th Cir. 1989); see, e.g., United States v. U.S. Dist. Court
(DeLorean), 717 F.2d 478, 481 (9th Cir. 1983) (issuing writ
where district court ordered pretrial discovery in violation of
Federal Rules of Criminal Procedure). The petitioner must
show that its right to issuance of the writ is clear and indispu-
table. Bauman v. U.S. Dist. Court, 557 F.2d 650, 656 (9th Cir.
1977) (citing Kerr v. U.S. Dist. Court, 426 U.S. 394, 403
(1976)).
[4] We apply a five-factor test to determine whether man-
damus relief is warranted: (1) whether the petitioner has no
other adequate means to attain the relief he or she desires; (2)
whether the petitioner will be damaged or prejudiced in a way
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that is not correctable on appeal; (3) whether the district
court’s order is clearly erroneous as a matter of law; (4)
whether the district court’s order is an oft-repeated error, or
manifests a persistent disregard of the federal rules; and (5)
whether the district court’s order raises new and important
problems, or issues of law of first impression. United States
v. Amlani, 169 F.3d 1189, 1193-94 (9th Cir. 1999) (citing
Bauman, 557 F.2d at 654-55). A petitioner need not establish
all five factors, see Admiral Ins. Co., 881 F.2d at 1491, and
we will weigh the factors together based on the facts of the
individual case. SG Cowen Sec. Corp. v. U.S. Dist. Court, 189
F.3d 909, 913 (9th Cir. 1999) (citation omitted).
1. Does the government have other adequate means to
attain relief?
Discovery orders are generally interlocutory and non-
appealable under 28 U.S.C. § 1291. Admiral Ins. Co., 881
F.2d at 1490. Appellate review under 28 U.S.C. § 1292(b) is
also unavailable because the district court did not certify the
issue for appellate review.
Defendants maintain, however, that mandamus relief is
inappropriate because the government could refuse to comply
with the district court’s discovery order and appeal the result-
ing sanction. This argument finds support in the basic princi-
ple that “while discovery orders themselves are not generally
final for purposes of section 1291, parties who face such an
order have the option of making the decision final simply by
refusing to comply, and appealing the resulting sanction.”
United States v. Fernandez, 231 F.3d 1240, 1245 (9th Cir.
2000) (internal quotation marks and citations omitted); United
States v. Ryan, 402 U.S. 530, 533 (1971) (“[O]ne who seeks
to resist the production of desired information [must choose]
between compliance with a trial court’s order to produce prior
to any review of that order, and resistance to that order with
the concomitant possibility of an adjudication of contempt if
his claims are rejected on appeal.” (citation omitted)).
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We have explicitly rejected this argument, however, where
“discovery is directed at third-parties who could not be
expected” to incur a contempt citation. SG Cowen, 189 F.3d
at 913-14 (citing In re Grand Jury Subpoena 92-1(SJ), 31
F.3d 826, 829 (9th Cir. 1994)). While we recognized that a
petitioner “could refuse to comply with the discovery orders
directed at it[,] and then appeal from the contempt order,” we
reasoned that third-party witnesses were unlikely to do so. Id.
(emphasis added). Because most of the district court’s discov-
ery orders in SG Cowen were directed at third-parties, we
concluded that the defendant had no alternative remedy for
purposes of the first Bauman factor. Id.; DeLorean, 717 F.2d
at 481 (granting mandamus relief from a district court’s dis-
covery order without requiring the government to first violate
the order and pursue a direct appeal under § 1291).
[5] While defendants cite to Fernandez for support, Fer-
nandez only provides an example of a situation where the dis-
trict court sanctioned the government for failing to comply
with a discovery order, thereby producing an appealable final
order. Fernandez, 231 F.3d at 1245. It does not, however,
hold that a party must incur a sanction, such as contempt,
before it may seek mandamus relief. See id. Moreover, Fer-
nandez can also be distinguished from the case at bar on the
grounds that the government itself was the subject of the dis-
covery order, and therefore, could have refused to comply and
thus incurred sanctions. By contrast, the discovery order in
this case is directed at third-party witnesses who may choose
to comply with the district court’s discovery order rather than
risk a contempt citation, thereby leaving the government with
no alternative grounds for relief. See SG Cowen, 189 F.3d at
913-14. Accordingly, the first factor weighs in favor of grant-
ing the government’s petition.
2. Will the government be damaged in a way not
correctable on appeal?
[6] Defendants argue that the discovery order will not result
in damage to the government because it will not cause any
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trade secrets to be disclosed. The potential disclosure of trade
secrets, however, is not the only damage resulting from the
district court’s order. We have previously held that “a peti-
tioner is damaged or prejudiced if his claim will be moot on
appeal.” SG Cowen, 189 F.3d at 914. Because “[c]ompliance
with a discovery order moots an appeal of that order,” the
government would therefore suffer damage. Id. (citing Med-
hekar v. U.S. Dist. Court, 99 F.3d 325, 326-27 (9th Cir.
1996)).
[7] Moreover, any error would also not be correctable on
appeal because, “[i]f defendants are acquitted, the government
will be barred by the double jeopardy clause from raising the
issue by way of appeal.” United States v. U.S. Dist. Court
(Kantor), 858 F.2d 534, 537 (9th Cir. 1988) (citation omitted).
The issue would “be equally unreviewable in case of convic-
tion because the government would not have been prejudiced
by the claimed error.” Id. (citation omitted). Therefore, the
second factor also weighs in favor of granting the govern-
ment’s petition.
3. Was the district court’s order clearly erroneous?
An order is clearly erroneous for purposes of a mandamus
petition if “we are left with the definite and firm conviction
that a mistake has been committed.” Wash. Pub. Utils. Group
v. U.S. Dist. Court, 843 F.2d 319, 325 (9th Cir. 1987) (inter-
nal quotation marks and citation omitted); In re Cement Anti-
trust Litig., 688 F.2d 1297, 1305-07 (9th Cir. 1982). Rule 15,
which governs the taking of depositions in criminal cases,
provides in pertinent part that “[a] party may move that a pro-
spective witness be deposed in order to preserve testimony for
trial,” and that “[t]he court may grant the motion because of
exceptional circumstances and in the interests of justice.” Fed.
R. Crim. P. 15(a)(1). Unlike in civil cases, however, Rule 15
depositions are not allowed merely for discovery purposes.
United States v. Rich, 580 F.2d 929, 933-34 (9th Cir. 1978).
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[8] We have previously clarified that Rule 15 “contem-
plates a party taking the deposition of only his own witness,”
and “only if the witness may be unable to attend trial.” Id. at
934; United States v. Cutler, 806 F.2d 933, 936 (9th Cir.
1986). Here, the district court’s order violates the well-
established principles governing Rule 15 depositions because
the prospective deponents are adverse witnesses; they are
available to testify at trial; and the defendants seek discovery,
not preservation of testimony. Although the district court’s
order acknowledges that Rule 15 does not permit depositions
for discovery purposes, the court inexplicably proceeded to
authorize pre-trial depositions for that very purpose.
[9] The only justification that can be gleaned from the dis-
covery order is that “[t]he witnesses would be less inconve-
nienced if allowed to state [their] opinions orally as opposed
to being required to write them out,” and that it would be
more efficient “to extract the details of any expert opinion[,]
or lack thereof,” before trial. The district court also justified
its order as ensuring “fairness and efficiency of the trial pro-
cess.” While the district court’s belief that it would be more
convenient and efficient to allow pretrial depositions may be
well-founded, Rule 15 makes no exception for convenience
and efficiency. See Rich, 580 F.2d at 933-34; Culter, 806 F.2d
at 935-36.4 Moreover, the district court cites no case law to
support its interpretation of Rule 15, and ignores the extensive
body of law that directly contradicts its reasoning. Accord-
ingly, the district court’s order was clearly erroneous.
4Although the district court’s order does not purport to rely upon Fed.
R. Crim. P. 16 to justify its pre-trial deposition order, defendants have
referred to Rule 16 as justifying the deposition. It is clear, however, that
Rule 16 also does not authorize such an order. See, e.g., In re United
States, 878 F.2d 153, 156 (5th Cir. 1989) (“Nor can the deposition be
authorized under Rule 16, Fed.R.Crim.P. That rule does not mention depo-
sitions, which are plainly to be governed by Rule 15.”).
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4. Is the error an oft-repeated error, or does it manifest
a persistent disregard of the federal rules?
[10] Because the district court’s discovery order is a clear
violation of the well-established legal principles underlying
Federal Rules of Criminal Procedure, it is likely not an “oft-
repeated” error. Moreover, the government has not argued or
presented any evidence to the contrary. Therefore, this factor
weighs against the government’s petition.
5. Does the district court’s order raise a new and
important problem, or an issue of first impression?
[11] The district court reasoned that its order was necessary
to ensure the “fairness and efficiency of the trial process,” and
to “establish pretrial procedures for effectively controlling the
dissemination of the trade secrets before they are presented in
the context of a public jury trial.” However, no circuit has rec-
ognized any such exception to the Federal Rules of Criminal
Procedure. Therefore, the district court’s order raises the new
and important question of whether the EEA empowers a dis-
trict court to order depositions for discovery purposes under
Rule 15’s “exceptional circumstances and in the interest of
justice” provision in order to ensure “fairness and efficiency”
and “effectively control[ ] the dissemination” of important
trade secrets. Accordingly, this factor weighs in favor of
granting the government’s petition.
[12] In sum, four of the five Bauman factors weigh in favor
of granting the government’s petition.
CONCLUSION
After weighing all five factors, we conclude that they lean
strongly in favor of granting mandamus relief. The district
court’s order was “wholly unauthorized” and “constitutes a
clear and very substantial departure from the fundamental
principles governing criminal pretrial and trial procedures in
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federal court.” In re United States, 878 F.2d at 159. The gov-
ernment has demonstrated that it has no alternative means of
relief and will suffer harm that is not correctable on appeal.
See SG Cowen, 189 F.3d at 913-14. Finally, the district
court’s order raises the new and important question of
whether the EEA empowers a court to authorize discovery
depositions under Rule 15 in order to ensure fairness and effi-
ciency and effectively control the dissemination of important
trade secrets.
[13] Accordingly, the government’s petition for a writ of
mandamus is granted and the district court is directed to
rescind its order of November 4, 2004, granting defendant Fei
Ye’s motion to depose the government’s expert witnesses
prior to trial.
Appeal DISMISSED; petition for a writ of mandamus
GRANTED.
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