In re: AFFYMETRIX, INC., LIFE TECHNOLOGIES CORPORATION v. U.S. Dist. Court for the S. Dist. of Iowa, 490 U.S. 296, 309 1989

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: AFFYMETRIX, INC., LIFE TECHNOLOGIES
CORPORATION,
Petitioners
______________________
2019-104
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Southern District of Califor-
nia in No. 3:17-cv-01394-H-NLS, Judge Marilyn L. Huff.
______________________
ON PETITION AND ON MOTION
______________________
Before L OURIE, WALLACH , and CHEN, Circuit Judges.
WALLACH , Circuit Judge.
O R D E R
Affymetrix, Inc. and Life Technologies Corporation
(collectively, “Affymetrix”) petition this court for a writ of
mandamus to direct the United States District Court for
the Southern District of California to vacate its October 9,
2018 order compelling the production of documents Affy-
metrix considers privileged. Becton, Dickinson and
Company et al. (collectively, “BD”) oppose. We may
consider the petition pursuant to 28 U.S.C. § 1295(a)(1)
Case: 19-104 Document: 34 Page: 1 Filed: 11/29/2018

-- 1 of 4 --

IN RE: AFFYMETRIX, INC. 2
and 28 U.S.C. § 1651(a). We deny the petition and there-
fore deny Affymetrix’s motion to stay production.
BD sued Affymetrix in the Southern District of Cali-
fornia, alleging that Affymetrix’s “Super Bright” dyes
product infringes BD’s patents.* Affymetrix worked with
third-party AAT Bioquest to design and manufacture the
dyes pursuant to a supply and license agreement. As
relevant here, BD sought discovery of various email
communications between Affymetrix’s employees, Affy-
metrix’s in-house counsel, and AAT’s leadership after the
effective date of the agreement. The district court ordered
production of those documents by October 23, 2018. In
doing so, the district court rejected Affymetrix’s assertion
that the common interest privilege applied even though
AAT was not represented by counsel at the time of the
communications. Affymetrix then filed this petition and
moved to stay production of the documents. On October
29, 2018, this court temporarily stayed the production
order pending consideration of Affymetrix’s mandamus
petition and stay motion.
“The remedy of mandamus is available only in ex-
traordinary situations to correct a clear abuse of discre-
tion or usurpation of judicial power.” In re MSTG, Inc.,
675 F.3d 1337, 1341 (Fed. Cir. 2012). A party seeking a
writ bears the heavy burden of demonstrating to the court
that it has no “adequate alternative means” to obtain the
desired relief, Mallard v. U.S. Dist. Court for the S. Dist.
of Iowa, 490 U.S. 296, 309 (1989), and that the right to
issuance of the writ is “clear and indisputable,” Will v.
Calvert Fire Ins. Co., 437 U.S. 655, 666 (1978) (internal
quotation marks omitted). And even when those two
requirements are met, the court must still be satisfied
that the issuance of “the writ is appropriate under the
circumstances.” Cheney v. U.S. Dist. Court for the Dist. of
* The dyes are fluorescent dyes used in flow cytome-
try, a technique for analyzing biological cells.
Case: 19-104 Document: 34 Page: 2 Filed: 11/29/2018

-- 2 of 4 --

IN RE: AFFYMETRIX, INC. 3
Columbia, 542 U.S. 367, 381 (2004). We cannot say that
exacting standard has been met by Affymetrix.
Affymetrix has not made a sufficient showing that it
lacks adequate alternative means to obtain the desired
relief. The Supreme Court has explained that “postjudg-
ment appeals generally suffice to protect the rights of
litigants and ensure the vitality of the attorney-client
privilege” because an appellate court can vacate and
remand “for a new trial in which the protected material
and its fruits are excluded from evidence.” Mohawk
Indus., Inc. v. Carpenter, 558 U.S. 100, 109 (2009); see
also Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350,
1358–59 (Fed. Cir. 2017) (denying mandamus review of
order compelling production of allegedly privileged docu-
ments because petitioner could appeal after final judg-
ment). Affymetrix fails to specify why such review would
not suffice in this case or why applying the final judgment
rule here would be particularly injurious.
Affymetrix has also failed to show a “clear and indis-
putable” right to relief. Calvert Fire Ins. Co., 437 U.S. at
666 (internal quotation marks omitted). Ninth Circuit
law applies when determining whether the district court
erred in its privilege determination. See Waymo, 870 F.3d
at 1359. Affymetrix, however, admits that no Ninth
Circuit decision has held that the common interest doc-
trine is applicable when one of the parties is not repre-
sented by counsel. The district court meanwhile noted
that the Ninth Circuit has said that the common interest
rule “is an exception to ordinary waiver rules designed to
allow attorneys for different clients pursuing a common
legal strategy to communicate with each other,” In re Pac.
Pictures Corp., 679 F.3d 1121, 1129 (9th Cir. 2012), and
identified a number of other district court cases from the
Ninth Circuit that have held that all parties must be
represented by counsel for the common interest doctrine
to apply.
Case: 19-104 Document: 34 Page: 3 Filed: 11/29/2018

-- 3 of 4 --

IN RE: AFFYMETRIX, INC. 4
Accordingly,
I T I S O RDERED T HAT :
(1) The petition for a writ of mandamus is denied.
(2) The stay motion is denied as moot. The tempo-
rary stay put in place by the court’s October 29, 2018
order is lifted. Affymetrix shall produce the documents
within three days of the date of filing of this order.
F OR THE COURT
Nov. 29, 2018 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s32
Case: 19-104 Document: 34 Page: 4 Filed: 11/29/2018

-- 4 of 4 --