Fed Circ orders docs disclosure in favour of Alaska Airlines
In a win for Alaska Airlines, an app design company that accused the airline of infringement has been ordered to disclose details of previous settlements by the US Court of Appeals for the Federal Circuit.
The court handed down the decision yesterday, Tuesday, May 4, upholding an order imposed by the US District Court for the District of Utah in March.
The dispute dates back to 2019 when Modern Font Applications (MFA) sued the airline alleging that it had infringed its patent, US number 9,886,421, titled “Allowing operating system success to non-standard fonts in a network document”.
According to the complaint, the patent covers “apparatuses and methods for delivery and rendering of nonstandard or external fonts within a network system”. MFA accused the airline of providing infringing font packages to enable its customers to use hand-held devices while using its services.
‘Common interest privilege’
In July 2020, Alaska requested discovery of settlement agreements between MFA and other parties relating to the patent. MFA rejected turning over the agreements, claiming they were protected under the “common interest privilege”.
The airline then requested that the federal court in Utah compel MFA to provide information regarding existing licenses to the patent-in-suit and related information. The airline argued that these documents, including settlements, reflect the value of the technology claimed in the patent-in-suit and “thus are highly probative of the potential damages at issue”.
It further argued that MFA’s negotiations with actual and potential licensees may reflect admissions by MFA and other evidence “probative of the amount of a reasonable royalty and the scope and invalidity of the patent-in-suit”.
The documents were relevant and proportional, contended the airline. The court agreed and requested that MFA hand them over. MFA then submitted a petition for writ of mandamus to the Federal Circuit, arguing that the lower court had erred because the documents were privileged.
The court of appeals this week denied the petition finding that the documents weren’t privileged and that there was no clear error in the lower court’s decision.
A drastic remedy
The court noted that mandamus is a “drastic and extraordinary” remedy “reserved for really extraordinary causes.” In seeking a writ of mandamus, MFA must establish a “clear and indisputable” right to relief and that it has “no other adequate means” to get the relief it seeks, said the court.
It added that “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.” MFA had failed to satisfy those requirements for relief, ruled the Federal Circuit.
The court concluded that MFA failed to “identify any specific or unique harm or prejudice that would occur in this case” if it were required to wait to seek vacatur of the ruling and remand for a new trial in a post-judgment appeal.
MFA also neglected to raise a “particularly novel” issue, and showed “no clear and indisputable error on the part of the district court in rejecting its claim of privilege”.
The court also found that MFA’s arguments concerning the attorney-client privilege and common interest doctrine were insufficient to establish mandamus relief.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
