NOTE: This order is nonprecedential

United States Court of Appeals
for the Federal Circuit

IN RE LAWSON SOFTWARE, INC.,
Petitioner. ~

Misce1laneous Docket No. 118

On Petition for Writ of Mandamus to the United States
District C0urt for the Eastern District of Virginia in case
no. 09-CV-620, Senior Judge Robert E. Payne.

ON PETITION

Before PROST, MAYER and REYNA, Circuit Judges.
PROST, Circuit Judge.

ORDER

LaWs0n Software, Inc., submits a petition for a writ of
mandamus directing the United States District Court for
the Eastern District of Virginia to vacate its order requir-
ing Lawson to produce certain documents Lawson asserts
are protected by the work product immunity and attor-
ney-client privilege ePlus Inc. opposes Lawson rep1ies.

IN RE LAWSON SOFTWARE 2

The petition arises out of a contempt proceeding, itself
triggered by a motion by ePlus alleging that Lawson’s
attempt to design around the patent violated the perma-
nent injunction entered by the district court following a
jury verdict of patent infringement against Lawson. The
parties engaged in copious discovery regarding the new
design. Lawson withheld certain documents on the basis
of attorney-client privilege and!or the work product doc-
trine, and subsequently sought to “claw back” a handful of
documents that Lawson argued were inadvertently pro-
duced. ePlus asked the district court to order Lawson to
produce many of the withheld documents, and to find that
privilege had been waived as to the subject matter of
Lawson’s development of the design-around

Mandamus requires the petitioner to establish: (1)
there are no alternative means of obtaining the relief
desired, Mallord v. U.S. Dist. Court, 490  296, 309
(1989), and (2) the right to the relief sought is "clear and
undisputable.” Allied Chem. Corp. u. Daiflon, Inc., 449
U.S. 33, 35 (1980). Even if these two requirements are
satisfied, the issuing court further "must be satisfied that
the writ is appropriate under the circumstances.” C'heney
v. U.S. Dist. Court, 542 U.S. 367, 381 (2004).

On the papers submitted, Lawson fails to show a clear
and indisputable right to relief. Moreover, issues of
attorney-client privilege can generally be reviewed effec-
tively on appeal from final judgment. See Mohawk In-
dus., Inc. o. Carpenter, 130 S.Ct. 599, 606-07 (2009). In
Mohawk, the Supreme Court held that disclosure orders
cannot be immediately appealed under the collateral
order doctrine, which provides that some prejudgment
orders that are “collateral to” the merits can be reviewed
immediately if they are "too important" to delay. Id. at
603 (oiting C'ohen v. Beneficial Industrial Loan Corp., 337
U.S. 541, 546 (1949)). But the Court went on to describe

3 lN RE LAWSON SOFTWARE

mandamus review, together with certified interlocutory
appeals, as “useful ‘safety valve [s]’ for promptly correcting
serious errors.” Id. at 608 (quoting Digital Equipment
Corp. u. Desktop Direct, In,c., 511 U.S. 863, 883 (1994)).
Mandamus review of attorney work product issues is
likewise limited. Cf. Hernandez v. Tanninen, 604 F.3d
1095, 1098-99 (9th Cir. 2010) (applying Mohawk’s reason-
ing eliminating collateral order jurisdiction on appeals of
disclosure orders adverse to the attorney-client privilege
to work product).

Lawson does not explain why its concerns cannot be
addressed on appeal from final judgment, but rather
confines its argument to asserting, as a general matter,
that the privilege or immunity is irrevocably lost if the
information is revealed. See Pet. at 14. But this is not
sufficient under Mohawk: `

In our estimation, postjudgment appeals
generally suffice to protect the rights of liti-
gants and assure the vitality of the attorney-
client privilege. Appellate courts can remedy
the improper disclosure of privileged mate-
rial in the same way they remedy a host of
other erroneous evidentiary rulings: by va-
cating an adverse judgment and remanding
for a new trial in which the protected mate-
rial and its fruits are excluded from evi-
dence.

130 S.Ct. at 606-07. Of course, the same rationale applies
where the remedy might be a remand for a new contempt
hearing rather than a new trial, if the appeal is taken
from a final contempt judgment. Cf. T£Vo Inc. o.
EchoStar Corp., 656 F.3d 869, 881-82 (Fed. Cir. 2011) (en
banc) (if there are "more than colorable differences”
between newly-accused and adjudged infringing products,

IN RE LAWSON SOFTWARE 4

contempt is inappropriate and a new infringement trial is
required).

Accordingly,
lT IS ORDERED THATZ

(1) Lawson’s petition for a writ of mandamus is de-
nied.

(2) Any pending motions are moot.

FOR THE COURT

 1 6  /s/ Jan Horbaly
Date J an Horbaly

Clerk .

cc: Donald R. Dunner, Esq.
Scott L. Robertson, Esq.
Clerk, United States District Court for the Eastern
District of Virginia

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AUG 102012

JAN HBRBAI.Y
CLEHK

