REVISED - December 18, 2000
UNITED STATES COURT OF APPEALS
For the Fifth Circuit
___________________________
No. 99-11219
___________________________
A-MARK AUCTION GALLERIES, INC.,
d.b.a. Superior Stamp & Coin, and STACKS, LLC,
Plaintiffs-Appellees / Cross-Appellants,
VERSUS
AMERICAN NUMISMATIC ASSOCIATION, et al.,
Defendants,
VERSUS
HERITAGE CAPITAL CORPORATION
and HERITAGE NUMISMATIC AUCTIONS, INC.,
Defendants-Appellants / Cross-Appellees.
Appeals from the United States District Court
for the Northern District of Texas
December 6, 2000
Before DAVIS, EMILIO M.. GARZA, Circuit Judges, and POGUE, Judge*.
W. EUGENE DAVIS, Circuit Judge:
Heritage Capital Corporation and Heritage Numismatic Auctions, Inc. (collectively
*
Judge of the U.S. Court of International Trade, sitting by designation.
“Heritage”) appeal from a discovery order entered by the District Court in the Northern District of
Texas relating to a case pending between the other parties to this appeal in the United States District
Court for the District of Colorado. As the nonfinal discovery order is not a final decision under 28
U.S.C. § 1291 and does not fall within the collateral order exception of Cohen v. Beneficial
Industrial Loan Corp., 337 U.S. 541, 69 S.Ct. 1221, 93 L.Ed. 1528 (1949), we dismiss the appeal
for lack of jurisdiction.
I.
Appellees, A-Mark Auction Galleries, Inc. and Stack’s, LLC (together “A-Mark”) are large
dealers of coins who, among other activities, conduct coin auctions. In 1998, A-Mark sued the
American Numismatic Association (the “ANA”) in the United States District Court for the District
of Colorado alleging claims of negligent misrepresentation, fraud and violation of the Colorado
consumer protection statute. Essentially, A-Mark complains of the process the ANA used to select
auctioneers for the auctions held at ANA conventions and of the unadvertised benefits, including
exclusive use of ANA mailing lists, referrals and endorsements, conferred on the winning bidder. A-
Mark’s action against ANA is currently pending in the United States District Court for the District
of Colorado.
In connection with its action against the ANA, A-Mark served subpoenas duces tecum on
Heritage at its home office in Dallas, Texas, seeking the production of certain documents. Heritage
had been the winning bidder for the right to conduct auctions at ANA conventions and so presumably
had received the improper benefits conferred by the ANA. However, Heritage is not a party to the
Colorado action. The documents A-Mark sought related to agreements between Heritage and the
ANA, benefits received from those agreements with the ANA, sales and consignment information,
financial information, referrals from the ANA, advertisements placed with the ANA, and how
Heritage used the ANA mailing lists to procure sales. Heritage produced some documents in
response to the subpoenas, but asserted that most of the documents requested by A-Mark contained
trade secrets. Heritage accordingly refused to make any further response to the subpoenas served
on it.
A-Mark responded to this refusal by filing an action in the United States District Court for
the Northern District of Texas to compel compliance with the subpoenas. The district court referred
the discovery dispute to a magistrate judge. The magistrate judge made brief findings regarding the
relevancy and necessity of the discovery requested by A-Mark as well as the confidentiality interests
of Heritage. He t hen granted A-Mark’s demand in part by making reference to certain numbered
requests for documents. He granted production of these documents on the condition that they only
be used for the prosecution and defense of the Colorado action. He also allowed Heritage to mark
documents produced in response to certain requests as “Highly Confidential” and ordered that those
documents only be disclosed to A-Mark’s counsel and to outside experts retained by A-Mark.
Heritage objected to the magistrate judge’s order. The district court, after reviewing the law
applicable to the discovery of documents alleged to contain trade secrets, affirmed the order of the
magistrate judge in its entirety. Heritage now appeals** the district court’s order.
II.
A.
As a threshold matter, we must determine whether this court has jurisdiction to review the
discovery order Heritage appeals. Subject to certain exceptions, this court only has jurisdiction over
“final decisions” of the district court. 28 U.S.C. § 1291. Discovery orders generally do not “end[]
the litigation on the merits and leave[] nothing for the court to do but execute the judgment.” Catlin
**
Though labeled as a Cross-Appellant, A-Mark does not appeal the judgment of the District Court.
v. United States, 324 U.S. 229, 233, 65 S.Ct. 631, 633, 89 L.Ed. 911 (1945). Thus, discovery orders
do not constitute final decisions under § 1291 and are not immediately appealable. Church of
Scientology v. United States, 506 U.S. 9, 18, n. 11 (1992).
Heritage contends that the discovery order appealed from is a final order because it finally
resolves its discovery obligation, which was the only issue presented to the district court. Heritage
argues that garden variety discovery cases we have decided on review of district courts within this
circuit do not control today’s case. This is so, according to Heritage, because the order in this case
is not interlocutory and the concerns applicable to interlocutory appeals, i.e. piecemeal appeals and
delay, do not apply to judgments in ancillary proceedings, like this one, that resolve all issues between
the parties that are before a particular court. We disagree.
We follow the well reasoned opinion in MDK, Inc. v. Mike’s Train House, Inc., 27 F.3d 116,
119 (4th. Cir. 1994), in which the Fourth Circuit addressed a situation almost identical to the facts
in this case. In that case, the main case was pending in district court in the Sixth Circuit; the
discovery dispute, involving access to claimed trade secrets, was litigated in district court in the
Fourth Circuit; and that district court issued an order granting the requested discovery with certain
protections and limitations. The Fourth Circuit dismissed the appeal of the discovery order for want
of jurisdiction.
Addressing the argument that the case did not present the routine discovery dispute between
two parties to a court proceeding, the court concluded that the appeal of the discovery order before
it could not be considered apart from the course of the main litigation. Id. at 121. Although
discussed in the context of the independent question requirement of the Cohen collateral order
doctrine, the court’s comments are equally applicable to Heritage’s argument that the discovery order
in this case is a separate final order under § 1291. The MDK court stated:
While the district court’s order compelling discovery may seem a self-contained piece
of litigation when viewed in isolation, that view fails to capture the full scope of these
proceedings. The discovery order in question is but one of several discovery requests
Mike’s has made in order to secure the information necessary to prosecute its claim
of monopolization against Lionel. Resolving the issue of whether Mike’s will be able
to secure this information from MDK perforce impacts the manner in which the
Michigan trial will be conducted. Likewise, the time required to resolve an appeal of
the North Carolina decision can only delay resolution of the Michigan litigation.
Thus, this appeal cannot be considered apart from the course of the main litigation.
Id. at 121. We agree. It is clear to us that the issues relating to the discovery order Heritage
complains of must be examined in the larger context which includes the main case pending in
Colorado. When viewed in this manner, we see no reason to deviate from the law set forth above.
Those well-settled rules dictate that the discovery order issued by the Northern District of Texas is
not a final order appealable under 28 U.S.C. § 1291.
Furthermore, we dismiss the suggestion by Heritage that Periodical Publishers Service
Bureau, Inc. v. Keys, 981 F.2d 215 (5th Cir. 1993), reaches this issue. That case involved the appeal
of a discovery dispute from one district court relating to a main case pending in another district court,
but both district courts involved were located within the Fifth Circuit. In the introductory paragraph
of the opinion, the court notes that “as far as the ‘discovery’ district court (N.D.Tex.) is concerned,
it has entered its final order in this case.” Id. at 216. That statement is far from a holding that the
order was an appealable final order. In fact, the Periodical Publishers panel concluded that the
discovery order before it was not immediately appealable as a final order, in part because discovery
orders are not generally considered final orders within the meaning of 28 U.S.C. § 1291. Id. at 217.
B.
Nor is the discovery order an appealable collateral order under Cohen v. Beneficial Indus.
Loan Corp., 337 U.S. 541 (1949). In this circuit, an order may be appealed under the Cohen
exception if the appellant demonstrates that the order (1) conclusively determines the disputed
question, (2) resolves an important issue completely separate from the merits of the action, and (3)
is effectively unreviewable on appeal from a final judgment. Acoustic Systems, Inc. v. Wenger Corp.,
207 F.3d. 287, 290 (5th Cir. 2000), citing Coopers & Lybrand v. Livesay, 437 U.S. 463, 468-69, 98
S.Ct. 2454, 57 L.Ed.2d 351 (1978). We start from the well-settled rule in this circuit that discovery
orders may not be appealed under the Cohen exception. Texaco Inc. v. Lo uisiana Land and
Exploration Co., 995 F.2d 43, 44 (1993); Honig v. E.I. duPont de Nemours & Co., 404 F.2d 410
(5th Cir. 1968); Periodical Publishers Service Bureau, Inc. v. Keys, 981 F.2d 215 (5th Cir. 1993).
Although we recognize that as to the discovery issues presented to the Northern District of Texas,
the discovery order at issue is conclusive, as discussed above, it does not resolve important issues
separate from the merits.
In addition, the discovery order is subject to review outside this appeal. In addressing this
issue the MDK court stated:
Here, MDK cannot claim that it could never obtain review absent the appeal at bar.
Courts have long recognized that a party sufficiently exercised over a discovery order
may resist that order, be cited for contempt, and then challenge the propriety of the
discovery order in the course of appealing the contempt citation. [citations omitted]
Indeed, the Supreme Court has pointed to this path to appellate review as a reason
why discovery orders are not appealable under Cohen. Firestone Tire & Rubber Co.
v. Risford, 449 U.S. 368, 377, 101 S.Ct. 669, 675, 66 L.Ed 2d 571 (1981).
MDK, Inc., 27 F.3d at 121. We agree with the Fourth Circuit that this is the most acceptable solution
to this difficult problem. And this hurdle to appellate review has been sanctioned by the Supreme
Court. In these circumstances, we conclude that the Cohen requirements for appellate review of a
collateral order are not met and we do not have jurisdiction over Heritage’s appeal on that basis.***
***
We specifically reserve for another day and another case the issue whether a decision
denying discovery to a party seeking it would be appealable in circumstances such as those present
in this case. See In Re Cusumano, 162 F. 3d 708 (1st Cir. 1998).
III.
Because this court lacks jurisdiction over this appeal, it is hereby DISMISSED.