Home Legal Advice Discovery of Prior Settlement Agreements and Common Interest Privilege

Discovery of Prior Settlement Agreements and Common Interest Privilege


by Dennis Crouch

In re Modern Font Applications LLC (Fed. Cir. 2021)

The Federal Circuit denied MFA’s petition for mandamus on a discovery dispute, and Chief Judge Prost however wrote an attention-grabbing brief opinion explaining the panel’s reasoning.  In the case, MFA has asserted its U.S. Patent No. 9,886,421 that covers  a technique of displaying “non-standard fonts” in your handheld system when accessing a network-document.

Alaska Airlines is the defendant on this case and submitted a discovery request of MFA’s prior settlement agreements. In civil litigation discovery  requests are typically guided by three pillars: privilege, relevance, and proportionality.

FRCP 26(b)(1) Parties could get hold of discovery relating to any nonprivileged matter that’s applicable to any celebration’s declare or protection and proportional to the wants of the case.

Prior settlement agreements are typically fairly applicable to for any damages calculations, however MFA refused to adjust to the request based mostly upon privilege.  Although the prior agreements had been shared between litigating events, with the settlement agreement the events turned unified (at the least with regard to the agreement) and the result’s “common interest privilege.”

The Justice of the Peace choose ordered disclosure, confirmed by the district court docket, and now the Federal Circuit has refused to behave on the mandamus petition (aside from denying it).  Most appeals are taken after last judgment in a case. Mandamus is a shortcut to get a right away choice from an appellate court docket on an interlocutory challenge (corresponding to discovery disclosure), however is barely hardly ever granted.  The court docket notes that it’ll solely grant mandamus in circumstances involving a “clear and indisputable right to relief [where there are] no other adequate means to attain the relief.” Slip op., quoting Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004).  Even what place these components are met, the district court docket additionally has discretion to make the choice whether or not granting the writ is “appropriate under the circumstances.” Id.

In its opinion, the court docket didn’t totally make the choice the concern of frequent interest privilege within the settlement context, however famous that the Federal Circuit has beforehand declined to acknowledge the type of privilege. See In re MSTG, Inc., 675 F.3d 1337 (Fed. Cir. 2012) (holding that pre-settlement communications weren’t privileged). The court docket went on to notice that even when frequent interest privilege had been adopted on this context, the events should nonetheless show that the withheld paperwork are “communications by a client to an attorney made in order to obtain legal assistance from the attorney in his capacity as a legal advisor.”

The end result right here is smart and in addition begs the query — why is MFA making an attempt to cover its prior settlement agreements?


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