Federal Circuit disposition — 23-103

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: NIMITZ TECHNOLOGIES LLC,
Petitioner
______________________
2023-103
______________________
On Petition for Writ of Mandamus to the United
States District Court for the District of Delaware in Nos.
1:21-cv-01247-CFC, 1:21-cv-01362-CFC, 1:21-cv-01855-
CFC, and 1:22-cv-00413-CFC, Chief Judge Colm F. Con-
nolly.
______________________
ON PETITION
______________________
Before L OURIE, R EYNA , and T ARANTO, Circuit Judges.
P ER CURIAM .
O R D E R
Nimitz Technologies LLC (“Nimitz”) petitions for a
writ of mandamus directing the United States District
Court for the District of Delaware to vacate its November
10, 2022, order directing Nimitz to turn over certain
documents for the district court’s inspection and to order
an end to “the district court’s judicial investigation of”
Nimitz. Pet. at 27. We deny the petition.
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IN RE: NIMITZ TECHNOLOGIES LLC 2
I
A
Two standing orders of the district court, dating from
April 2022, form the backdrop of the court’s Novem-
ber 10, 2022, order.
One standing order requires that, in all cases as-
signed to Chief Judge Connolly “where a party is a non-
governmental joint venture, limited liability corporation,
partnership, or limited liability partnership, . . . the party
must include in its disclosure statement filed pursuant to
Federal Rule of Civil Procedure 7.1 the name of every
owner, member, and partner of the party, proceeding up
the chain of ownership until the name of every individual
and corporation with a direct or indirect interest in the
party has been identified.” Appx352.
A separate standing order requires that, in all cases
assigned to Chief Judge Connolly “where a party has
made arrangements to receive from a person or entity
that is not a party (a ‘Third-Party Funder’) funding for
some or all of the party’s attorney fees and/or expenses to
litigate this action on a non-recourse basis in exchange for
(1) a financial interest that is contingent upon the results
of the litigation or (2) a non-monetary result that is not in
the nature of a personal loan, bank loan, or insurance,”
“the party receiving such funding shall file a state-
ment . . . containing . . . a. [t]he identity . . . of the Third-
Party Funder(s); b. [w]hether any Third-Party Funder’s
approval is necessary for litigation or settlement decisions
in the action, and if the answer is in the affirmative, the
nature of the terms and conditions relating to that ap-
proval; and c. [a] brief description of the nature of the
financial interest of the Third-Party Funder(s).”
Appx353–54.
B
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IN RE: NIMITZ TECHNOLOGIES LLC 3
In May 2022, in the cases that are the subject of the
mandamus petition before us, the district court ordered
Nimitz to certify compliance with the above-described
standing orders. After Nimitz failed to timely respond,
the district court ordered Nimitz to show cause why it
should not be held in contempt. Two days later, Nimitz
filed an amended disclosure statement identifying Mark
Hall as the sole owner and LLC member of Nimitz and a
statement representing that Nimitz “has not entered into
any arrangement with a Third-Party Funder, as defined
in the Court’s Standing Order Regarding Third-Party
Litigation Funding Arrangements.” Appx357.
The district court thereafter became aware of infor-
mation, initially from an exhibit in a separate case before
it, indicating that an entity called IP Edge LLC was
arranging assignments of patents to different LLCs that
were plaintiffs in actions filed in the District Court for
Delaware and that Mr. Hall seemed, from the email
address given to the PTO, to have a connection with IP
Edge. ECF No. 42-1 at 15–16, 28–29. The district court
ordered Mr. Hall and Nimitz’s counsel, George Pazuniak,
to appear at a hearing. See Appx9. At that hearing,
which took place on November 4, 2022, Nimitz’s relation-
ship with an entity called Mavexar (among other topics)
was explored. Afterwards, on November 10, 2022, the
court ordered the production of various documents, in-
cluding communications and correspondence between (1)
Mr. Hall, Mavexar, and IP Edge and (2) Mr. Pazuniak,
Mavexar, and IP Edge, relating to, among other things,
the formation of Nimitz, Nimitz’s assets, Nimitz’s poten-
tial scope of liability resulting from the acquisition of the
patent, the settlement or potential settlement of the
cases, and the prior evidentiary hearing. The court also
asked for monthly bank statements held by Nimitz.
This petition followed, and we stayed production of
the documents pending further action by this court. The
district court subsequently issued a memorandum that,
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IN RE: NIMITZ TECHNOLOGIES LLC 4
among other things, stated the concerns of the Novem-
ber 10, 2022, order:
The records sought are all manifestly relevant to
addressing the concerns I raised during the November
4 hearing. Lest there be any doubt, those concerns
are: Did counsel comply with the Rules of Profession-
al Conduct? Did counsel and Nimitz comply with the
orders of this Court? Are there real parties in interest
other than Nimitz, such as Mavexar and IP Edge, that
have been hidden from the Court and the defendants?
Have those real parties in interest perpetrated a
fraud on the court by fraudulently conveying to a shell
LLC the [patent-in-suit] and filing a fictitious patent
assignment with the [United States Patent and
Trademark Office] designed to shield those parties
from the potential liability they would otherwise face
in asserting the . . . patent in litigation?
ECF No. 42-1 at 77–78.
II
“As the writ [of mandamus] is one of the most potent
weapons in the judicial arsenal, three conditions must be
satisfied before it may issue”: the petitioner must show
(1) there is “no other adequate means to attain the relief
he desires,” (2) the “right to issuance of the writ is clear
and indisputable,” and (3) “the writ is appropriate under
the circumstances.” Cheney v. U.S. Dist. Ct. for D.C., 542
U.S. 367, 380–81 (2004) (internal quotation marks and
citations omitted). Nimitz’s petition has not shown enti-
tlement to the “drastic and extraordinary remedy” of a
writ of mandamus. Id. at 380 (internal quotation marks
and citation omitted).
Nimitz contends that the district court’s Novem-
ber 10, 2022, order would force it to turn over “highly
confidential litigation-related information, including
materials protected by the attorney client privilege and
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IN RE: NIMITZ TECHNOLOGIES LLC 5
work-product immunity.” Pet. at 1. The district court,
however, has made clear that its order “does not require
Nimitz to docket these records or otherwise make them
public” and is “free to submit and to publicly file at the
time of its production of the records in question an asser-
tion that the records are covered by the attorney-client
privilege and/or work product doctrine and a request that
for that reason (and perhaps other reasons) the Court
maintain the records under seal.” ECF No. 42-1 at 77.
Under such circumstances, Nimitz has not shown that
mandamus is its only recourse to protect privileged mate-
rials. Nor has Nimitz shown a clear right to preclude in
camera inspection under these circumstances.
Nimitz makes clear that it is “not ask[ing] th[is] Court
to reverse either Standing Order.” Reply at 14. And it is
clear that a direct challenge to those standing orders at
this juncture would be premature, as Nimitz has not yet
been found to violate those orders and will have alterna-
tive adequate means to raise such challenges if, and
when, such violations are found to occur. While Nimitz
asks the court to terminate the district court’s inquiry
under the standing orders, it has not shown a “clear and
indisputable” right to such relief. Cheney, 542 U.S. at 381
(citation omitted).
The district court identified four concerns as the basis
for its information demand. All are related to potential
legal issues in the case, subject to the “principle of party
presentation,” United States v. Sineneng-Smith, 140 S. Ct.
1575, 1579 (2020) (discussing the principle and its limits),
or to aspects of proper practice before the court, over
which district courts have a range of authority preserved
by the Federal Rules of Civil Procedure, see Fed. R. Civ. P.
83(b); Chambers v. NASCO, Inc., 501 U.S. 32 (1991). The
district court did not seek information simply in order to
serve an interest in public awareness, independent of the
adjudicatory and court-functioning interests reflected in
the stated concerns. In denying mandamus, we express
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IN RE: NIMITZ TECHNOLOGIES LLC 6
no view on whether there has been any violation of the
particular legal standards that correspond to the concerns
recited by the district court or, if so, what remedies (e.g.,
against Nimitz, its counsel, or others) would be appropri-
ate.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied, and the stay is lifted.
December 8, 2022
Date
F OR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
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