Case: 22-125 Document: 14 Page: 1 Filed: 03/22/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: FRAUNHOFER-GESELLSCHAFT ZUR
FORDERUNG DER ANGEWANDTEN FORSCHUNG
E.V.,
Petitioner
______________________
2022-125
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of Delaware in No. 1:17-cv-
00184-JFB-SRF, Magistrate Judge Sherry R. Fallon.
______________________
ON PETITION
______________________
Before DYK, LINN, and TARANTO, Circuit Judges.
DYK, Circuit Judge.
ORDER
Fraunhofer-Gesellschaft zur Förderung der an-
gewandten Forschung E.V. (“Fraunhofer”) petitions this
court for a writ of mandamus challenging a discovery order
regarding the depositions of non-party foreign witnesses.
Sirius XM Radio Inc. (“SXM”) opposes. For the reasons set
forth below, the petition is denied.
Case: 22-125 Document: 14 Page: 2 Filed: 03/22/2022
2 IN RE: FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG
BACKGROUND
The background facts of the underlying case have been
reviewed in Fraunhofer-Gesellschaft zur Förderung der an-
gewandten Forschung E.V. v. Sirius XM Radio Inc., 940
F.3d 1372 (Fed. Cir. 2019). Briefly, Fraunhofer sued SXM
for alleged infringement of four patents in the United
States District Court for the District of Delaware, which
dismissed the case under Federal Rule of Civil Proce-
dure 12(b)(6) and denied Fraunhofer’s motion for leave to
amend. We vacated that judgment, reversed the denial of
leave to amend, and remanded for further proceedings. Id.
at 1383.
On remand, a discovery dispute arose regarding SXM’s
attempts to depose five named inventors of the asserted pa-
tents who have, so far, declined to voluntarily appear for
deposition. From the parties’ briefing, it appears undis-
puted that these individuals are foreign nationals residing
in Germany, are not current employees or any sort of man-
aging agent of Fraunhofer, and have not been designated
by Fraunhofer to testify on its behalf. Based on language
in their inventor assignment agreements with Fraunhofer,
specifying that these individuals would, among other
things, “testify in any interference or in any other legal pro-
ceeding, when requested,” and “generally [ ] do everything
possible to aid [Fraunhofer] to obtain and enforce proper
patent protection on and for said invention in the United
States,” Appx99; Resp. at 6, SXM moved to compel Fraun-
hofer to produce these named inventors for deposition.
In November 2020, the magistrate judge ordered that
“Plaintiff shall make the inventor witnesses available for
deposition in accordance with their obligations to testify in
any legal proceedings regarding the patent, as set forth in
the inventor assignment agreements.” Appx1 (Oral Order,
Nov. 23, 2020) (the “Magistrate Order”). On December 7,
2020, Fraunhofer filed timely objections with the district
court judge seeking review of the Magistrate Order.
Case: 22-125 Document: 14 Page: 3 Filed: 03/22/2022
IN RE: FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG 3
Appx86–97. SXM filed a response in opposition on Decem-
ber 21, 2020. Appx98–109. The district court judge has not
yet ruled on Fraunhofer’s objections. Nonetheless, under
the local rules, the magistrate judge’s nondispositive order
governs the proceedings until the district court judge has
completed review of any objections. Standing Order for Ob-
jections Filed under Fed. R. Civ. P. 72 (D. Del. Oct. 8, 2013).
Fraunhofer in the meantime contacted the five individ-
uals through German counsel and provided the Magistrate
Order and the assignment agreements. Pet. at 12; Resp. at
12. After they refused to attend a deposition and further
communications between the parties failed to resolve the
dispute, on January 20, 2022, SXM requested that Fraun-
hofer be compelled to produce these fact witnesses for dep-
osition before the case could proceed to expert discovery.
On January 27, 2022, Fraunhofer filed the instant petition
for writ of mandamus seeking to challenge the Magistrate
Order. The same day, the magistrate judge ordered the
discovery dispute be held in abeyance for 60 days or until
resolution of this petition.
We have jurisdiction pursuant to the All Writs Act, 28
U.S.C. § 1651(a), and 28 U.S.C. § 1295(a)(1).
DISCUSSION
“[A]ll courts established by Act of Congress may issue
all writs necessary or appropriate in aid of their respective
jurisdictions and agreeable to the usages and principles of
law,” 28 U.S.C. § 1651(a), but “the writ of mandamus is an
extraordinary remedy[ ] to be reserved for extraordinary
situations,” Waymo LLC v. Uber Techs., Inc., 870 F.3d
1350, 1357 (Fed. Cir. 2017) (quoting Gulfstream Aerospace
Corp. v. Mayacamas Corp., 485 U.S. 271, 289 (1988)) (al-
teration in original). As such, “it may be used to overturn
a district court order only when there has been a clear
abuse of discretion or usurpation of judicial authority in
the grant or denial of the order.” Connaught Lab’ys, Inc. v.
Case: 22-125 Document: 14 Page: 4 Filed: 03/22/2022
4 IN RE: FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG
SmithKline Beecham P.L.C., 165 F.3d 1368, 1370 (Fed. Cir.
1999) (internal quotation marks and citation omitted).
To obtain mandamus, the petitioner bears the heavy
burden of showing: (1) there is “no other adequate means
to attain the relief he desires;” (2) “his right to issuance of
the writ is clear and indisputable;” and (3) “the writ is ap-
propriate under the circumstances,” a matter of discretion
for the issuing court. Waymo, 870 F.3d at 1357 (quoting
Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81
(2004)). “Failure to establish any of these three prerequi-
sites may suffice to deny a petition.” Waymo, 870 F.3d at
1357. *
At this stage of the proceedings, we conclude that
Fraunhofer has not shown the absence of other adequate
means to attain its desired relief. Fraunhofer fears that
the Magistrate Order requires it to sue the named inven-
tors in Germany in order to compel their attendance at dep-
osition based on the assignment agreements. But the
authority, scope, and effect of the Magistrate Order, as well
as Fraunhofer’s (non)compliance and appropriateness of
sanctions (if any), are all unresolved disputes that are
pending either before the magistrate judge or the district
court judge. Fraunhofer has not shown that either, let
alone both, of these alternative avenues of relief is inade-
quate.
* Given the parties’ application of Federal Circuit
law to this dispute, we will assume, without deciding, that
Federal Circuit law applies. See In re Spalding Sports
Worldwide, Inc., 203 F.3d 800, 803 (Fed. Cir. 2000) (“Fed-
eral Circuit law applies when deciding whether particular
written or other materials are discoverable in a patent
case, because they relate to an issue of substantive patent
law.”).
Case: 22-125 Document: 14 Page: 5 Filed: 03/22/2022
IN RE: FRAUNHOFER-GESELLSCHAFT ZUR FORDERUNG 5
Fraunhofer argues that the district court judge’s delay
in resolving its objections demonstrates the futility of these
alternative avenues, but, significantly, these timeliness
concerns have not been raised with the district court judge.
Resp. at 15; Reply at 11. We are confident that, should the
parties raise the issue, the district court judge will
promptly address the long-pending objections. Fed. R. Civ.
P. 72(a) (“The district judge in the case must consider
timely objections and modify or set aside any part of the
order that is clearly erroneous or is contrary to law.”).
Moreover, as noted above, the pending disputes before the
magistrate judge could also moot Fraunhofer’s concerns.
Of course, our decision should not be interpreted to mean
that Fraunhofer will, in fact, attain the relief it seeks, but
rather that these are currently available alternatives for
adequate relief.
Based on the present circumstances of this case, we
conclude that the exceptional remedy of mandamus is not
available.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
March 22, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court