Case: 14-144    Document: 28     Page: 1   Filed: 09/19/2014




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

       IN RE TAIWAN UNION TECHNOLOGY
                 CORPORATION,
                     Petitioner.
               ______________________

                        2014-144
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the District of Arizona in No.
2:12-cv-01361-SLG, Judge Sharon L. Gleason.
                 ______________________

                     ON PETITION
                 ______________________
 Before O’MALLEY, WALLACH, and HUGHES, Circuit Judges.
O’MALLEY, Circuit Judge.
                        ORDER
    This petition for a writ of mandamus has its origins in
related suits brought by Isola USA Corporation (“Isola”)
against Park Electrochemical Corporation et al. (“Park”)
and Taiwan Union Technology Corporation (“TUC”).
After Isola settled with Park, TUC moved to compel Park
to produce confidential materials TUC believed could
demonstrate Isola’s patents are invalid. The district court
granted the motion but only to the extent that Park was
compelled to turn over all materials it produced to Isola in
discovery. See Isola USA Corp. v. Taiwan Union Tech.
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2                     IN RE TAIWAN UNION TECHNOLOGY CORP.




Corp., 2:12-cv-01361-SLG (D. Ariz. May 23, 2014) (Docket
Entry No. 115) (hereinafter “Discovery Order”). Not
satisfied with that relief, TUC now seeks an order from
this court compelling additional information relevant to
its invalidity defense. Park opposes the petition and
moves for sanctions. For the following reasons, we deny
the petition and motion.
                       BACKGROUND
    Isola is the owner of U.S. Patent Nos. 6,509,414;
7,897,258; and 8,022,140 (collectively, the “Patents-In-
Suit”), which are directed toward a resin composition that
can be used to manufacture prepregs and laminates. All
three of the Patents-In-Suit share a claimed priority date
of at least October 29, 1996. On June 25, 2012, Isola filed
two complaints in the United States District Court for the
District of Arizona, charging TUC and Park with in-
fringement of the Patents-In-Suit. Isola’s charges against
Park centered on Park’s N4000-13 line of products, an
epoxy resin system designed for use in printed circuit
materials. Eight months after the action was initiated,
Park and Isola settled their dispute.
    In March 2014, TUC subpoenaed Park, seeking in-
formation concerning: (1) the ingredients and/or materials
used to prepare each resin composition in the manufac-
ture of Park’s N4000-13 prior to September 24, 1996; (2)
the recipe and/or process used to prepare each resin
composition used in the manufacture of the N4000-13
prior to September 24, 1996; (3) the specific amounts or
ratios of each ingredient and/or material used to prepare
the resin composition used in the manufacture of the
N4000-13 prior to September 24, 1996; and (4) any mar-
keting, sales and/or offer for sales of the N4000-13 prior to
September 24, 1996. After Park objected on the grounds
that the information requested constituted or contained
trade secret and other highly sensitive competitive infor-
mation, TUC filed a motion to compel.
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 IN RE TAIWAN UNION TECHNOLOGY CORP.                     3



    On May 23, 2014, the district court issued an order
granting-in-part and denying-in-part TUC’s motion to
compel. As is relevant here, the district court concluded
that TUC had demonstrated a “substantial need” to
obtain information from Park regarding the N4000-13
prior to September 1996, reasoning that “if N4000-13 was
a prior art as defined under the applicable patent law,
then TUC may be entitled to assert that fact as a defense
in this case against its product.” Discovery Order at 2-3.
The court added that “information on the ingredients
within the ‘varnish’ for N4000-13 as it existed prior to the
1996 priority date for the Patents-In-Suit could be highly
relevant to TUC, and that information would appear to be
not otherwise discoverable to TUC from other sources.”
Id.
     Although the district court was persuaded that TUC
was entitled to more information than Park had already
turned over to TUC, it refused to grant the full scope of
TUC’s request. Instead, the court ruled that it was ap-
propriate to limit discovery to “whatever Park previously
provided to Isola that relates to the prior a[r]t issue
during the course of the Park/Isola litigation.” Id. at 3.
In rejecting TUC’s request for wholesale discovery of the
N4000-13 product, the district court stated that “Park, as
a non-party to this litigation, should not be put to the
time and expense of sorting through the documents and
communications between Park and Isola, except as neces-
sary.” Id. at 4. “Rather, to the extent such discovery is
allowed,” the court went on to explain, “that responsibility
should fall to Isola, excepting only those relevant docu-
ments that Park provided to Isola subject to the protective
order in the Isola/Park litigation.” Id.
    TUC moved for reconsideration in the district court
and for a legible copy of one of the documents turned over
by Park. The court denied the motion on July 8, 2014
except to direct Park to provide a fully legible version of
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4                      IN RE TAIWAN UNION TECHNOLOGY CORP.




the document. TUC filed this petition. We have jurisdic-
tion to consider the matter under 28 U.S.C. § 1651(a).
                        DISCUSSION
    “The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Court, 426 U.S. 394, 402 (1976). Accordingly, “three
conditions must be satisfied before it may issue.” Cheney
v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The peti-
tioner must show a “‘clear and indisputable’” right to
relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The
petitioner must “lack adequate alternative means to
obtain the relief” it seeks. Mallard v. U.S. Dist. Court,
490 U.S. 296, 309 (1989); Cheney, 542 U.S. at 380; Kerr,
426 U.S. at 403. And “even if the first two prerequisites
have been met, the issuing court, in the exercise of its
discretion, must be satisfied that the writ is appropriate
under the circumstances.” Cheney, 542 U.S. at 381.
    While we do not agree with Park that the petition is
frivolous, we do agree that TUC has not carried its burden
in seeking mandamus relief. A party adversely affected
by an order denying a motion to compel may ordinarily
obtain meaningful review on appeal after final judgment.
See, e.g., In re Subpoena Served on Cal. Pub. Utilities
Comm’n, 813 F.2d 1473, 1480 (9th Cir. 1987) (dismissing
interlocutory appeal on the ground that the order to
quash the subpoena could be appealed after final judg-
ment). Although mandamus relief provides a “safety
valve” in “extraordinary circumstances” to promptly
correct “serious errors” or “manifest injustice,” postjudg-
ment appeals remain “generally suffic[ient] to protect the
rights of litigants[.]” Mohawk Indus., Inc. v. Carpenter,
558 U.S. 100, 109-111 (2009) (internal citations omitted).
    We    are unable to say that this is one of those rare
“safety   valve” cases. Id. at 111. TUC contends that “it
should    not have to wait until after final judgment to
compel    Park to produce” these documents. TUC’s Reply
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 IN RE TAIWAN UNION TECHNOLOGY CORP.                          5



at 5. But mandamus relief is not available simply to
relieve TUC of the burden of having to go through trial.
Cf. In re Roche Molecular Sys., Inc., 516 F.3d 1003, 1004
(Fed. Cir. 2008) (petitioner’s “hardship [and] inconven-
ience” in going through trial did not provide a basis for
mandamus). TUC further contends that there is a risk
that it would have no remedy if Park were to engage in
spoliation. But this assertion appears to amount to
nothing more than speculation. Indeed, Park assures the
court in its opposition and motion that TUC’s fear of
document destruction is unfounded. Thus, we conclude
that TUC has not presented extraordinary circumstances
warranting mandamus relief.
      Accordingly,
      IT IS ORDERED THAT:
      (1) TUC’s petition for a writ of mandamus is denied.
      (2) Park’s motion for sanctions is denied.


                                      FOR THE COURT

                                      /s/ Daniel E. O’Toole
                                      Daniel E. O’Toole
                                      Clerk of Court


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