Discovery

IPCOM GmbH acquired a global telephony patent portfolio from another German company, Robert Bosch GmbH (Bosch). Several years later, HTC Corporation and HTC America, Inc. (HTC) filed a declaratory judgment action against IPCOM alleging the patents were invalid or not infringed. HTC served IPCOM with requests for production of documents relating to IPCOM’s evaluation, valuation, and purchase of the Bosch portfolio.

IPCOM refused, asserting attorney-client privilege.

HTC moved to compel discovery, arguing any privilege was waived at the time of purchase.

The district court applied U.S. law in granting HTC’s motion. IPCOM then petitioned the U.S. Court of Appeals, Federal Circuit, for a writ of mandamus from the order. Because IPCOM failed to satisfy the “high burden for mandamus relief,” the Federal Circuit denies the petition.

Under U.S. law, a party seeking a writ of mandamus bears the burden of proving 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 Cat, 10, 1 F.3d 1386 (Fed. Cir. 1996).

On appeal IPCOM argues the district court erred in applying U.S. law rather than German law. However, the Court notes that for German law to apply, IPCOM “would first have to establish a conflict exists between German and U.S. law.” [Slip op. 3] The Court continues:

“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...