Federal Circuit disposition — 2011-m972-6-22-11-1-pdf

NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

IN RE IPCOM GMBH & CO., KG,
Petitioner.

Miscellaneous Docket No. 972

On Petition for Writ of Mandamus to the United
States District Court for District of District of Columbia
in case no. 08-CV-1897, Judge Rosemary M. Collyer.

## ON PETITION

Before GAJARSA, MAYER, and PROST, Circuit Judges.
PER CURIAM.

## ORDER

This is a petition for a writ of mandamus from a dis-
trict court order rejecting IPCom GmbH & Co.'s ("IPCom")
contention that it should not be required to turn over
documents held on its behalf by its German counsel.
Because IPCom has not satisfied the high burden for
mandamus relief, we deny the petition.

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I.

This petition grows out of a declaratory judgment ac-
tion concerning IPCom's global telephony patent portfolio.
IPCom acquired these patents from another German
company, Robert Bosch GmbH ("Bosch"). The portfolio
includes U.S. and Japanese patents, along with the Ger-
man patents to which the Japanese and U.S. patents
claim priority. The Frohwitter firm assisted both sides in
the transaction and became the custodian of the docu-
mentation related to the prosecution of these patents.

Several years after IPCom acquired these patents,
HTC Corporation and HTC America, Inc. (collectively,
"HTC") filed a declaratory judgment action against
IPCom, alleging that the patents in the portfolio were
invalid or not infringed. HTC served IPCom with re-
quests for production of documents relating to IPCom's
evaluation, valuation, and purchase of the Bosch portfolio
of patents and patent applications. As explained in the
District Court's order, HTC's requests included the follow-
ing sets of documents in the Frohwitter firm's custody: (1)
Invention Disclosure and Notification statements from
Bosch's employees pertaining to the German patent
applications to which the U.S. patents at issue here claim
priority; (2) correspondence between Bosch's in-house
German counsel and its Japanese patent counsel regard-
ing its Japanese patent applications; and (3) correspon-
dence between Bosch's in-house German counsel and its
U.S. patent counsel regarding its U.S. patent applica-
tions.

IPCom refused to produce documents in response to
these requests, asserting attorney-client privilege. HTC
moved to compel discovery, arguing that any privilege
was waived when Bosch sold the portfolio to IPCom.
Applying United States privilege law, the United States

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District Court for the District of Columbia granted HTC's
motion to compel. The court held that Bosch had sold
these documents and the patents to IPCom, and in doing
so, had waived any attorney-client privilege.

II.

A party seeking a writ of mandamus bears the burden
of proving that it has no other means of attaining the
relief desired, Mallard v. U.S. District Court, 490 U.S.
296, 309 (1989), and that the right to issuance of the writ
is "clear and undisputable." Allied Chem. Corp. v.
Daiflon, Inc., 449 U.S. 33, 35 (1980). In appropriate
cases, a writ of mandamus may issue to "prevent the
wrongful exposure of privileged communications." In re
Regents of the Univ. of Cal., 101 F.3d 1386, 1387 (Fed.
Cir. 1996).

### A. German Invention Disclosure Statements and Ger- man-Japanese Communications

IPCom argues that the district court erred in applying
United States rather than German law in deciding
whether these documents were discoverable. For German
law to apply, IPCom would first have to establish a con-
flict exists between German and United States law. See
Hartford Fire Ins. Co. v. California, 509 U.S. 764, 798
(1993) (limiting the application of international comity
doctrine to cases in which "there is in fact a true conflict
between domestic and foreign law"). While "[i]t is well
known that the laws of some foreign countries present
conflicts with . . . United States discovery demands,"
Cochran Consulting, Inc. v. Uwatec USA, Inc., 102 F.3d
1224, 1226 (Fed. Cir. 1996), despite bearing the burden of
proof, IPCom has not clearly identified how or why the
application of German law here would yield a different
outcome. See generally In re Lindsey, 148 F.3d 1100, 1106
(D.C. Cir. 1998) (the party asserting attorney-client

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privilege bears the burden of proving that the privilege
exists). In fact, IPCom has presented no evidence on this
issue, admitting that "the issue of a possible waiver under
German law was never ... briefed by any of the parties
below." (emphasis added).

Moreover, IPCom cannot use German discovery laws
to shield itself from producing documents that can be used
to attack the validity or enforceability of its patents. If an
inventor wants the protections afforded under the U.S.
patent laws, that inventor must comply with all applica-
ble rules and regulations to secure and maintain those
rights. Notably, that includes the duty of candor and
disclosure requirements during patent prosecution. To
the extent that IPCom could lose its U.S. patent rights for
failure to satisfy these obligations based on an assertion
(if proven) of inequitable conduct, we agree that IPCom
should not be able to shield itself from such a result by
protecting otherwise discoverable documents from disclo-
sure under the guise of international comity. See also
Int'l Nutrition Co. v. Horphag Research Ltd., 257 F.3d
1324, 1329 (Fed. Cir. 2001) (stating that comity may not
be extended when, as here, "doing so would be contrary to
the policies or prejudicial to the interests of the United
States.")

Finally, IPCom notes that the Frohwitter firm is obli-
gated under German ethics laws to maintain these com-
munications as confidential and may face criminal
liability for disclosure. Although "fear of criminal prose-
cution constitutes a weighty excuse for non-production . . .
[and this is] not weakened because the laws preventing
compliance are those of a foreign sovereign," an excuse
from non-production must be predicated upon a lack of
"any fault of' the party. Société Internationale Pour
Participations Industrielles et Commerciales, S.A. v.
Rogers, 357 U.S. 197, 211-12 (1958). The district court

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considered and rejected IPCom's argument, suggesting
the firm was at least partially at fault. Based on our
review of the papers and the trial court's findings, we
cannot say that IPCom has met its burden on mandamus.

### B. German-US Communications

IPCom challenges the district court's holding that
there was no waiver of attorney-client privilege under the
"common interest" doctrine. Although the disclosure of
attorney-client confidences to a third party waives privi-
lege, the common interest doctrine allows for such privi-
leges to remain intact "when the third party is a lawyer
whose client shares an overlapping 'common interest' with
the primary client." In re Lindsey, 158 F.3d 1263, 1282
(D.C. Cir. 1998). The district court here found that there
was no common interest between Bosch and IPCom
because "Bosch sold the Patents and all documents relat-
ing to the Patents to IPCom; Bosch did not share this
information as part of a joint legal claim or defense." This
court discerns no error that satisfies the high bar for
mandamus review in the district court's conclusion re-
garding this issue.

Accordingly,
IT IS ORDERED THAT:

The petition is denied.

FOR THE COURT

JUN 22 2011

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Michael A. Oblon, Esq.
Mitchell G. Stockwell, Esq.

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
JUN 22 2011

JAN HORBALY
CLERK

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A. James Isbester, Esq.
Clerk, United States District Court for the District of
Columbia

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