  United States Court of Appeals
      for the Federal Circuit
              __________________________

                    WI-LAN, INC.,
                      Plaintiff,
                         and
   KILPATRICK TOWNSEND & STOCKTON LLP
    (FORMERLY KNOWN AS TOWNSEND AND
         TOWNSEND AND CREW LLP),
           Sanctioned Party-Appellant,
                           v.
           LG ELECTRONICS, INC. AND
           LG ELECTRONICS USA, INC.,
               Defendants-Appellees.
              __________________________

                      2011-1626
              __________________________

   Appeal from the United States District Court for the
Northern District of California in case no. 10-MC-80254,
Judge Jeremy Fogel.
              __________________________

                 Decided: July 13, 2012
              __________________________

   DAVID E. SIPIORA, Kilpatrick Townsend & Stockton
LLP, of Denver, Colorado, argued for sanctioned party-
appellant. With him on the brief were MATTHEW C.
HOLOHAN; and RICHARD S. MEYER, of Washington, DC;
WI-LAN   v. LG ELECTRONICS                                 2


and ADAM H. CHARNES and RICHARD D. DIETZ, of Winston-
Salem, North Carolina.

    JAMES J. LUKAS, JR, Greenberg Traurig LLP, of Chi-
cago, Illinois, argued for defendant-appellee. With him on
the brief were RICHARD D. HARRIS and MATTHEW J.
LEVINSTEIN.
                 __________________________

 Before MOORE, CLEVENGER, and REYNA, Circuit Judges.
 Opinion for the court filed by Circuit Judge CLEVENGER.
    Opinion dubitante filed by Circuit Judge REYNA.
CLEVENGER, Circuit Judge.
    The law firm of Kilpatrick Townsend & Stockton LLP
(“Kilpatrick Townsend”) appeals contempt sanctions
entered in connection with a subpoena served on it in the
Northern District of California. Wi-LAN, Inc. v. LG
Elecs., Inc., No. 10-mc-80254 [hereinafter Wi-LAN], 2011
WL 3648531 (N.D. Cal. Aug. 18, 2011). Kilpatrick Town-
send acknowledges that it did not comply with the court’s
order to produce certain communications between
Kilpatrick Townsend and its client, Wi-LAN, Inc. (“Wi-
LAN”). Kilpatrick Townsend contends that the order to
produce these communications was based on legal error
by the district court and failed to properly apply Wi-LAN’s
attorney-client privilege against production. Kilpatrick
Townsend urges that its failure to comply was its only
ethical course of action.
    Because the district court did not apply the proper
analysis to the privilege question, we vacate its produc-
tion order and remand. We also vacate the contempt
sanctions; on remand the district court may revisit
whether Kilpatrick Townsend’s failure to comply was
contempt.
3                                  WI-LAN   v. LG ELECTRONICS


                             I
    This case arises from a patent dispute between Wi-
LAN and accused infringers LG Electronics, Inc. and LG
Electronics USA, Inc. (collectively, “LG”). Wi-LAN holds
certain patent rights that it claims read on the “V-chip”
technology for ratings-based blocking of television pro-
grams.
    In 2006, LG took a license from Wi-LAN’s predeces-
sor-in-interest. LG subsequently took the position that it
owed no royalties on the license because its televisions did
not practice Wi-LAN’s technology. Wi-LAN disagreed.
    In January of 2010, Wi-LAN forwarded to LG a letter
written by outside counsel Daniel Furniss of the law firm
Townsend and Townsend and Crew LLP (“Townsend”),
referred to herein as “the Townsend letter.” The letter
bore a date of December 21, 2009. It named William
Middleton, Wi-LAN’s general counsel and senior vice
president,     as    addressee.        It   was   marked
“CONFIDENTIAL” on every page. And it contained
detailed analysis of Wi-LAN’s patent rights as applied to
LG’s technology, ultimately opining that LG was practic-
ing Wi-LAN’s technology and so owed royalties on the
license. There is no dispute that Wi-LAN’s disclosure of
the letter to LG was intentional. Apparently, Wi-LAN
hoped that the letter’s reasoning would convince LG to
revise its position and begin paying royalties.
    The letter did not convince LG. On January 19, 2010,
Wi-LAN sued for patent infringement in the Southern
District of New York. It identified Townsend as litigation
counsel on its complaint.
   Once fact discovery was underway, LG served a sub-
poena on Townsend’s offices in Palo Alto, California, for
documents and testimony relating to the subject matter of
WI-LAN   v. LG ELECTRONICS                               4


the Townsend letter. LG’s view, which it maintains in
this appeal, was that any privilege Wi-LAN might have
had over that material was absolutely waived by its
voluntary disclosure of the Townsend letter.
    Townsend had then changed its name to Kilpatrick
Townsend, and it disagreed. It moved the district court
for the Northern District of California to quash the sub-
poena. Kilpatrick Townsend argued that the Townsend
letter was disclosed during settlement negotiations and
that Wi-LAN had expressly disclaimed use of the letter
for any purpose in the New York litigation. In those
circumstances, Kilpatrick Townsend contended that in
fairness, any waiver of the attorney-client privilege
should be limited to the Townsend letter itself. Kilpatrick
Townsend also pointed to Federal Rule of Evidence
502(a), which restricts the scope of an express waiver of
the attorney-client privilege “in a Federal or State pro-
ceeding” to the matter disclosed unless fairness requires
more extensive disclosure. Kilpatrick Townsend argued
that Rule 502(a) should apply “in the context” of a federal
proceeding, and that the Townsend letter should be seen
as having been disclosed in such a context. Mot. Quash,
Wi-LAN (N.D. Cal. Oct. 26, 2010), Dkt. #1, J.A. 102. The
magistrate judge rejected Kilpatrick Townsend’s argu-
ments. Mag. Order, Wi-LAN, 2011 WL 500072, at *3–4
(N.D. Cal. Feb. 8, 2011).
    Kilpatrick Townsend unsuccessfully asked the district
court for relief from the magistrate’s order, again arguing
that any waiver should be limited to the Townsend letter
and that “[f]airness does not compel a subject-matter
waiver.” Mot. for Relief, Wi-LAN, at 5 (N.D. Cal. Feb. 22,
2011), Dkt. #24, J.A. 264, 268; see also Wi-LAN, 2011 WL
841271 (N.D. Cal. Mar. 8, 2011) (denying motion).
Kilpatrick Townsend remained intransigent. It took the
position that, privilege notwithstanding, LG’s subpoena
5                                  WI-LAN   v. LG ELECTRONICS


was drawn so narrowly as to reach only a small universe
of material. This position was rejected both by the magis-
trate and the district court.
    Kilpatrick Townsend next filed a defective motion for
certification of an interlocutory appeal, which the magis-
trate judge rejected on jurisdictional grounds. See Wi-
LAN, 2011 WL 3648531, at *2 & n.5 (N.D. Cal. Aug. 18,
2011) (discussing denial of this motion).
    At this point it had been several months since service
of the subpoena, and Kilpatrick Townsend had yet to fully
comply with the district court’s discovery orders. The
magistrate judge ordered Kilpatrick Townsend to appear
before the district court and show cause why it should not
be held in contempt. The district court considered the
case, found Kilpatrick Townsend in contempt, and entered
sanctions in the amount of LG’s costs and fees. Id. at *3.
    Kilpatrick Townsend timely appealed. This court has
jurisdiction to review a district court’s contempt order in
an ancillary proceeding to a patent infringement case. 28
U.S.C. § 1295(a)(1); Micro Motion Inc. v. Exac Corp., 876
F.2d 1574, 1577–78 (Fed. Cir. 1989).
                             II
    The applicability of attorney-client privilege in a case
such as this, in which subject matter jurisdiction extends
from the underlying presence of a federal patent law
question, is determined by federal common law. Fed. R.
Evid. 501. In an appeal from a district court’s handling of
a subpoena, where the issues concerned are not unique to
patent law, this court applies the law of the regional
circuit of the court under whose authority the subpoena
was issued. Truswal Sys. Corp. v. Hydro-Air Eng’g, Inc.,
813 F.2d 1207, 1209 (Fed. Cir. 1987). For this appeal,
WI-LAN   v. LG ELECTRONICS                                6


then, we must look to Ninth Circuit law in reviewing the
district court’s rulings.
    The Ninth Circuit reviews trial court rulings as to the
scope of attorney-client privilege de novo. United States v.
Graf, 610 F.3d 1148, 1157 (9th Cir. 2010). It reviews
contempt proceedings and the grant or denial of motions
to quash for abuse of discretion. In re Cal. Pub. Utils.
Comm’n, 892 F.2d 778, 780 (9th Cir. 1989); In re Grand
Jury Proceedings, 33 F.3d 1060, 1061 (9th Cir. 1994). To
the extent the Ninth Circuit has not spoken definitively
on any legal issue raised by this appeal, we must predict
how it would decide such a question. Heat & Control, Inc.
v. Hester Indus., Inc., 785 F.2d 1017, 1026 (Fed. Cir.
1986).
                             III
     This appeal requires us to assess the consequences of
Wi-LAN’s disclosure of the Townsend letter to its rival
LG. We have no difficulty concluding that this disclosure
implicated Wi-LAN’s attorney-client privilege. Though
Kilpatrick Townsend suggests that the Townsend letter
was always intended to be disclosed, and so was never
really confidential (and so never really privileged), the
available evidence demonstrates otherwise. The Town-
send letter is marked “CONFIDENTIAL” on every page.
It is addressed from an attorney to his client and contains
detailed legal opinions. Kilpatrick Townsend has not
offered evidence (as opposed to attorney argument) to
justify departing from the obvious conclusion that the
letter was at least initially confidential. We therefore
agree with the district court that Wi-LAN’s disclosure of
the letter waived both that confidentiality and Wi-LAN’s
attorney-client privilege, at least as to the letter itself.
    The question presented by this appeal thus concerns
not whether Wi-LAN waived its privilege, but how far the
7                                  WI-LAN   v. LG ELECTRONICS


waiver extended. Kilpatrick Townsend argues that under
a fairness balancing test the scope of waiver should be
narrow, essentially limited to the Townsend letter itself
and reaching no other communication between Wi-LAN
and Kilpatrick Townsend. LG, on the other hand, be-
lieves the waiver should be broad, exposing to discovery a
wide swath of attorney-client communications, both pre-
and post-dating the Townsend letter, relating to the
subject matter addressed therein. Kilpatrick Townsend
does not argue here, as it did below, that Federal Rule of
Evidence 502 should govern the scope of waiver here, on
the theory that disclosures “in the context of” a federal
proceeding qualify for the benefit of the rule.
    It is well-established that when a client discloses to
another person the content of a privileged attorney com-
munication, the resulting privilege waiver may extend
beyond the communication itself to other related matter.
Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d
18, 24–25 (9th Cir. 1981). LG suggests that this is both
the beginning and the end of the inquiry. It says Wi-LAN
waived privilege as to the Townsend letter, so it ipso facto
waived privilege as to all other communications on the
same subject matter. Kilpatrick Townsend, on the other
hand, argues that basic considerations of fairness pre-
clude a broad waiver in this case. It claims that LG is
unable to articulate any prejudice it would suffer by
assertion of privilege to matters beyond the four corners
of the letter, and so there is no equitable reason to extend
the waiver beyond the letter. Kilpatrick Townsend argues
that by rejecting its attempt to incorporate such a fairness
inquiry into assessing the scope of waiver, the district
court legally erred.
    Kilpatrick Townsend’s plea for fairness balancing in
this appeal resonates with certain trends in federal privi-
lege law. The parties do not dispute that modern law
WI-LAN   v. LG ELECTRONICS                                8


requires fairness balancing for certain varieties of privi-
lege waiver.
    The most prominent such requirement derives, as al-
ready mentioned, from Federal Rule of Evidence 502(a).
Enacted in 2008, the rule limited the effect of waiver by
strongly endorsing fairness balancing. See Fed. R. Evid.
502(a)(1) (extending waiver to undisclosed materials only
where the disclosed and undisclosed matter “ought in
fairness to be considered together”); see also Edward J.
Imwinkelried, The New Wigmore § 6.12.7 & nn.579–86
(2010 ed.) (discussing Rule 502 and noting that, prior to
its adoption, “the prevailing view extended the waiver
farther”).
     Although we have no occasion to decide if Rule 502(a)
governs the scope of waiver resulting from the pre-
litigation disclosure in this case, the rule illuminates the
policy question presented by this appeal. If a party who
expressly waives privilege during litigation receives the
protection of a fairness balancing test, as per Rule 502(a),
should the same protection be made available to a person
whose waiver occurred pre-litigation? The parties to this
appeal present opposing positions. Kilpatrick Townsend
argues that fairness balancing should always be available
to one who expressly waives privilege pre-litigation. LG,
on the other hand, argues that fairness balancing must
never be available in those circumstances. According to
LG, an extrajudicial waiver of the attorney-client privi-
lege must always extend beyond the precise matter dis-
closed, regardless of the circumstances in which the
waiver occurs and even when the waiver inures in no
benefit whatsoever to the party waiving the privilege.
    The parties do agree that the Ninth Circuit has not
spoken squarely on this issue, i.e., whether fairness
balancing is either required or proscribed in this case.
9                                  WI-LAN   v. LG ELECTRONICS


Our task is to analyze the Ninth Circuit’s law and deter-
mine what that court would hold, were the question
presented to it. Heat & Control, 785 F.2d at 1026. We
conclude that the Ninth Circuit would find fairness bal-
ancing to be required. That court has favorably recog-
nized the strong precedent of fairness balancing in the
last twenty-five years. Equally importantly, we find
nothing in the Ninth Circuit’s law to demonstrate that it
has adopted a rule simultaneously requiring district
courts to apply fairness balancing to privilege waivers
made during litigation, but blocking them from applying
it to extrajudicial waivers.
    In order to understand the law of the Ninth Circuit, it
is necessary to begin with a case that the Ninth Circuit
has several times cited with approval, though never
adopted in its entirety. It is the Second Circuit case
Auersperg ex rel. von Bulow v. von Bulow (In re von Bu-
low), 828 F.2d 94 (2d Cir. 1987). The facts were as fol-
lows. After Claus von Bulow was acquitted of assault, his
attorney Alan Dershowitz wrote the well-known book
Reversal of Fortune. With Mr. von Bulow’s permission,
the book recounted portions of conversations the two men
had in connection with the criminal proceedings. In
subsequent civil litigation there was an attempt to dis-
cover the undisclosed portions of each conversation, on
the theory that any privilege had been waived. The
Second Circuit declined to extend such a waiver, holding
that Mr. von Bulow’s express waiver of his privilege (i.e.,
his consent to publication of the book) had not prejudiced
his opponent, and that there was therefore “no reason in
logic or equity to broaden the waiver beyond those mat-
ters actually revealed.” von Bulow, 828 F.2d at 103.
   LG acknowledges von Bulow but contends that it
should not control this case. First, it seeks to distinguish
von Bulow as a case of implied waiver, not express
WI-LAN   v. LG ELECTRONICS                              10


waiver. We disagree. The doctrine of implied waiver is
invoked when a party makes the content of his attorney’s
advice relevant to some claim or defense in the case.
Even if the party does not expressly disclose the advice
received, but only alludes to it, the privilege can be
deemed waived by implication. See, e.g., Bittaker v.
Woodford, 331 F.3d 715, 719 (9th Cir. 2003) (en banc);
Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th
Cir. 1992) (“Where a party raises a claim which in fair-
ness requires disclosure of the protected communication,
the privilege may be implicitly waived.”). In von Bulow it
is clear that Mr. von Bulow had not attempted to make
his attorney’s advice part of any claim or defense. von
Bulow, 828 F.2d at 103 (noting that the disclosures were
made “extrajudicially and without prejudice to the oppos-
ing party”). He voluntarily consented to publication of the
book—an express waiver of his attorney-client privilege.
Von Bulow cannot be distinguished as a case of implied
waiver.
    Second, LG would have us interpret Ninth Circuit law
to bar application of von Bulow to this appeal. We dis-
agree. As discussed below, the Ninth Circuit has several
times cited von Bulow with approval. And we find noth-
ing in any of those cases to suggest that that court,
though it approved of some aspects of von Bulow, never-
theless maintained a rule barring district courts from
applying von Bulow’s central holding, fairness balancing,
to cases of extrajudicial waiver.
    Chevron Corp. v. Pennzoil Co., 974 F.2d 1156 (9th Cir.
1992), is illuminating. In that case, Pennzoil was charged
with having waived its attorney-client privilege by two
distinct acts, on theories of both express and implied
waiver. The first act came before the litigation began:
Pennzoil disclosed to an outside auditor legal memoranda
addressing tax issues related, but subsidiary, to those in
11                               WI-LAN   v. LG ELECTRONICS


the subsequent litigation. There was no dispute that
Pennzoil had expressly waived privilege over these memo-
randa, and the district court limited the scope of the
waiver just to the documents actually provided to the
auditors. But Chevron contended on appeal that the
resulting waiver was broader in scope, stripping Penn-
zoil’s privilege over attorney communications not only
specifically addressing the “subsidiary” tax issues of the
memoranda, but also removing privilege over communica-
tions addressing broader, related tax issues. The Ninth
Circuit rejected that argument, and affirmed the limited
scope of waiver set by the district court. Citing von Bu-
low, it held:
       Pennzoil was not required, as a result of
       the limited disclosure, to provide Chevron
       with every document or communication
       that touched on the more general tax de-
       ferral question. See In re von Bulow, 828
       F.2d 94, 102–03 (2d Cir. 1987) (disclosure
       of privileged communications did not
       waive privilege beyond “matters actually
       revealed”).
Chevron, 974 F.2d at 1162. In other words, the Ninth
Circuit adopted von Bulow’s fairness inquiry in analyzing
express waiver, and affirmed the limited scope of the
waiver resulting from the extrajudicial disclosure of the
privileged matter.
    Chevron went on to analyze implied waiver. As part
of its defense at trial, Pennzoil had urged that certain
statements in corporate filings were made on advice of
counsel, and the statements should therefore be held
reasonable, but it asserted privilege against Chevron’s
attempt to discover the details of this advice. Even
though Chevron occurred before enactment of Rule of
WI-LAN   v. LG ELECTRONICS                               12


Evidence 502(a)(1), the Ninth Circuit analyzed the scope
of the waiver through a fairness lens. The Ninth Circuit
thus held that Pennzoil could not use privilege “both as a
sword and a shield.” Id. It therefore ordered Pennzoil to
produce those communications on which it was relying for
this defense, and reversed the district court’s holding to
the contrary. Id. at 1163. Because this second aspect of
Chevron concerns an implied waiver, in which a litigant
deliberately injects the contents of his attorney’s advice
into litigation, it does not govern this appeal. Wi-LAN
has not made the advice of its attorney the focus of any
claim or defense. Its waiver was not implied but express.
But in any event, Chevron reveals application by the
Ninth Circuit of fairness considerations to both express
extrajudicial and in-court implied waivers of the attorney-
client privilege.
    The Ninth Circuit again relied on von Bulow in
United States v. Mendelsohn, 896 F.2d 1183 (9th Cir.
1990). Martin Mendelsohn was charged with conspiracy
in connection with the interstate transportation of book-
making paraphernalia. During the government’s pre-
indictment investigation, Mr. Mendelsohn told Detective
Felix, an undercover policeman, that Mr. Mendelsohn’s
attorney had opined that sale of the paraphernalia was
legal. Mr. Mendelsohn subsequently told the policeman
that his attorney “did not know” what would happen if it
was sold across state lines. As it happened, Mr. Mendel-
sohn’s statements to the policeman were false: the attor-
ney had told him sale across state lines was unlawful.
    The district court held that Mr. Mendelsohn’s extra-
judicial statement to Detective Felix constituted a limited
waiver of the attorney-client privilege. On appeal, Mr.
Mendelsohn argued that there had been no waiver of the
privilege at all because he did not truthfully disclose what
his attorney had told him. The Ninth Circuit agreed with
13                                 WI-LAN   v. LG ELECTRONICS


the district court that a waiver had occurred, but noted
that “[t]he district court was careful to confine the attor-
ney’s testimony to the subject of Mendelsohn’s limited
waiver.” Mendelsohn, 896 F.2d at 1189. The Ninth
Circuit saw Mendelsohn as different from the kind of case
in which a court was asked to expand a limited extrajudi-
cial waiver to a much larger field, and cited von Bulow as
that kind of case. Describing von Bulow as an “extrajudi-
cial disclosure of privileged communications” that did not
“waive privilege beyond ‘matters actually revealed,’” the
Ninth Circuit emphasized that “[t]he district court did not
err with regard to the waiver.” Id.
    LG would have us read Mendelsohn as a case strongly
in its favor, as it can point to the language in the Ninth
Circuit opinion that the waiver was limited to “the subject
of Mendelsohn’s limited waiver,” and can argue that the
waiver approved by the Ninth Circuit went beyond the
words stated by Mr. Mendelsohn to Detective Felix to the
general subject matter of the words stated. We think
such a reading of Mendelsohn is strained, given the
context in which the Ninth Circuit placed the appeal. The
government was not asking the Ninth Circuit to extend
the waiver beyond the matter actually disclosed, and the
Ninth Circuit’s opinion is careful to emphasize the nar-
rowness of the waiver and to connect the facts of the case
to the holding in von Bulow. The clearly better reading of
the Ninth Circuit opinion is that it understood the district
court to have correctly limited the extrajudicial waiver to
the matter actually disclosed. Finally, nothing in the
Mendelsohn opinion suggests that the Ninth Circuit in
that case enforced the rule LG seeks here, that an extra-
judicial waiver always extends beyond the matter actually
disclosed.
    The Ninth Circuit’s most recent discussion of von Bu-
low is in the en banc case Bittaker v. Woodford, 331 F.3d
WI-LAN   v. LG ELECTRONICS                               14


715 (9th Cir. 2003) (en banc). Lawrence Bittaker, a
prisoner on California’s death row, filed a habeas petition
claiming ineffective assistance of counsel. The govern-
ment argued that, by raising the issue and by expressly
discussing certain aspects of the representation he re-
ceived, Mr. Bittaker waived attorney-client privilege to
such an extent that the government could not only learn
the details of Mr. Bittaker’s communications with his
attorney, but could also disseminate them to outside
agencies.
    The Ninth Circuit acknowledged that there had been
a waiver of privilege, but rejected the government’s plea
to distribute the information beyond the litigation. 331
F.3d at 721. It decided the case on implied waiver
grounds. But, apparently in response to the government’s
arguments concerning express waiver, the court offered
the following footnote:
              Although we do not decide this case
         under the express waiver doctrine, we
         note that the law in this area is not as set-
         tled as the state would have us believe.
         See, e.g., Diversified Indus., Inc. v. Mere-
         dith, 572 F.2d 596, 604 n.1, 611 (8th Cir.
         1977) (holding that voluntary disclosure of
         information to the SEC resulted only in a
         limited waiver and that the information
         remained privileged in subsequent private
         litigation); In re von Bulow, 828 F.2d 94,
         103 (2d Cir. 1987) (“[W]here . . . disclo-
         sures of privileged information are made
         extrajudicially and without prejudice to
         the opposing party, there exists no reason
         in logic or equity to broaden the waiver
         beyond those matters actually revealed.”);
         Christopher B. Mueller & Laird C.
15                                   WI-LAN   v. LG ELECTRONICS


        Kirkpatrick, Evidence: Practice Under the
        Rules § 5:28, at 541 (2d ed. 1999) (noting
        that “[t]he trend of modern cases” is to-
        ward finding only limited waivers).
Id. at 720 n.5 (alterations 9th Cir.’s, citations edited).
    LG points out, rightly, that this footnote is dictum.
But in light of our duty to predict how the Ninth Circuit
would resolve this appeal, it is persuasive dictum. It
indicates that the logical path we have laid out herein,
the path leading through von Bulow’s fairness inquiry, is
headed in the right direction.
    In deciding whether Ninth Circuit law bars or man-
dates fairness considerations when determining the scope
of an express extrajudicial waiver of the attorney-client
privilege, we note that the Ninth Circuit is not averse to
looking to other circuits for guidance on new issues of law.
Am. Vantage Cos., Inc. v. Table Mountain Rancheria, 292
F.3d 1091, 1098 (9th Cir. 2002) (“[A]lthough we are by no
means compelled to follow the decisions of other circuits,
there is virtue in uniformity of federal law as construed
by the federal circuits.”) (internal quote marks omitted).
We thus think the Ninth Circuit would appreciate the
heavy weight of current authority that comes down on the
side of employing fairness considerations to decide the
scope of waivers. E.g., United States v. XYZ Corp. (In re
Keeper of the Records), 348 F.3d 16, 24 (1st Cir. 2003); von
Bulow, 828 F.2d at 103; Conkling v. Turner, 883 F.2d 431,
434 (5th Cir. 1989); In re Grand Jury Proceedings Oct. 12,
1995, 78 F.3d 251, 256 (6th Cir. 1996); Cox v. Adm’r U.S.
Steel & Carnegie, 17 F.3d 1386, 1417–18 (11th Cir. 1994),
modified, 30 F.3d 1347 (11th Cir. 1994); United States v.
White, 887 F.2d 267, 271 (D.C. Cir. 1989); see also Paul R.
Rice, 2 Attorney-Client Privilege in the United States
§ 9:81 & n.2 (2011 ed.) (citing fairness as the driving
WI-LAN   v. LG ELECTRONICS                               16


consideration in assessing scope of waiver); Imwinkelried,
supra, § 6.12.7 n.613 (with accompanying text) (arguing
that fairness considerations would mitigate for limited
waiver in extrajudicial disclosure situations). We think
the Ninth Circuit would align itself with the substantial
weight of authority.
    As between the two directions put forward by the par-
ties—one requiring fairness balancing for extrajudicial
discloses, the other barring it—we conclude that the
Ninth Circuit’s cases support the former far better than
the latter. The Ninth Circuit has repeatedly endorsed
fairness balancing in a variety of circumstances; more to
the point it has never set forth, either expressly or inher-
ently, any rule barring fairness’s application to extrajudi-
cial disclosures. Nor do the Ninth Circuit’s cases suggest
any policy reason why the fairness protections available
for express disclosures in litigation should be unavailable
to those who waive privilege pre-litigation. Such a rule,
which LG promotes in this appeal, seems to us bad policy,
and we decline to adopt it on the Ninth Circuit’s behalf.
     For the foregoing reasons, we conclude that the dis-
trict court erred by rejecting considerations of fairness—
i.e., whether LG would be unfairly prejudiced by Wi-
LAN’s assertion of privilege against discovery into attor-
ney-client communications beyond the four corners of the
Townsend letter—when assessing the scope of waiver
here. None of the orders considering scope of waiver in
this case applied such a test. However, we decline the
parties’ invitation to evaluate fairness ourselves in the
first instance. We therefore vacate the magistrate and
district court’s orders concerning the scope of Wi-LAN’s
waiver and remand for further proceedings.
   We also vacate the district court’s entry of contempt
sanctions against Kilpatrick Townsend but note the
17                                  WI-LAN   v. LG ELECTRONICS


district court’s discretion to revisit the issue on remand.
As a general matter the Ninth Circuit defers to a trial
court’s finding of contempt. Cal. Pub. Utils. Comm’n, 892
F.2d at 780. Even in this appeal, where we agree with
Kilpatrick Townsend that the district court committed
legal error in its application of privilege doctrine, that is
not the same as excusing failure to comply with a judicial
order. In some cases one who disputes a subpoena’s
lawful scope has no alternative but to invite a contempt
citation in order to obtain appellate review. Here, how-
ever, Kilpatrick Townsend had options that it did not
pursue. Nevertheless, it is not for this court to determine
whether and to what extent Kilpatrick Townsend should
pay a penalty for its failure to either properly move the
district court for certification of an interlocutory appeal or
to seek mandamus review from this court when faced with
an unlawful production order.
                 VACATED AND REMANDED
                           COSTS
     No costs.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

                     WI-LAN, INC.,
                       Plaintiff,

                           and
   KILPATRICK TOWNSEND & STOCKTON LLP
    (FORMERLY KNOWN AS TOWNSEND AND
         TOWNSEND AND CREW LLP),
           Sanctioned Party-Appellant,

                             v.
            LG ELECTRONICS, INC. AND
            LG ELECTRONICS USA, INC.,
                Defendants-Appellees.
               __________________________

                       2011-1626
               __________________________

   Appeal from the United States District Court for the
Northern District of California in case no. 10-MC-80254,
Judge Jeremy Fogel.
              __________________________

 Before MOORE, CLEVENGER, and REYNA, Circuit Judges.
REYNA, Circuit Judge, dubitante.

    The majority embarks on a winding course as it ex-
plores Ninth and other regional circuit case law, and
evidentiary rules. At the start of its journey, the majority
WI-LAN   v. LG ELECTRONICS                                2


recognizes, “The parties do agree that the Ninth Circuit
has not spoken squarely on this issue, i.e., whether fair-
ness balancing is either required or proscribed in this
case.” Maj. Op. at 8.

    Still, the majority discerns a trend in the law and on
that basis takes a guess that the Ninth Circuit, if its hand
were at the helm, would hold that there must be a fair-
ness balancing in the context of express extrajudicial
waivers. 1

    I examine the trend and find in it no gates that lead
to secure blue water. Indeed, I find that even a route
that lies opposite the route charted by the majority is as
good a route as any.

    Thus, while instinct tells me the majority could be
correct, I am concerned that our heading is not based on
an accurate bearing. As I cannot prove or disprove our
result, I go along with the majority—but with doubt.




   1    See Maj. Op. at 8-9. Citing numerous cases from
other circuits, the majority opines that “the Ninth Circuit
would appreciate the heavy weight of current authority
that comes down on the side of employing fairness consid-
erations to decide the scope of waivers.” Id. at 15-16.
