Abbott Laboratories v.

PRECEDENTIAL

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_______________________

No. 23-2412
_______________________

In re: ABBOTT LABORATORIES; ABBVIE INC.;
ABBVIE PRODUCTS LLC;
UNIMED PHARMACEUTICALS LLC; BESINS
HEALTHCARE, INC.,
Petitioners
_______________________

On Petition for a Writ of Mandamus
to the United States District Court
for the Eastern District of Pennsylvania
District Court No. 2-19-cv-03565
District Judge: The Honorable Harvey Bartle, III
__________________________

Argued November 29, 2023

Before: JORDAN, MONTGOMERY-REEVES, and SMITH,
Circuit Judges

(Filed: February 22, 2024)

Paul D. Clement
Erin E. Murphy
Clement & Murphy
706 Duke Street
Alexandria, VA 22314

Elaine J. Goldenberg
Donald B. Verrilli, Jr. [ARGUED]
Sarah Weiner
Munger Tolles & Olson
601 Massachusetts Avenue NW
Suite 500e
Washington, DC 20001

Adam R. Lawton
Munger Tolles & Olson
350 S Grand Avenue
50th Floor
Los Angeles, CA 90071

Rohit K. Singla
Munger Tolles & Olson
560 Mission Street
27th Floor
San Francisco, CA 94105
Counsel for Petitioners Abbott Laboratories, AbbVie
Inc., AbbVie Products LLC, and Unimed
Pharmaceuticals LLC

Melinda F. Levitt
Gregory E. Neppl
Foley & Lardner
3000 K Street NW
Suite 600
2
Washington, DC 20007
Counsel for Petitioner Besins Healthcare, Inc.

Samuel E. Bonderoff
Bruce E. Gerstein
Garwin Gerstein & Fisher
88 Pine Street
Wall Street Plaza, 28th Floor
New York, NY 10005

Russell A. Chorush [ARGUED]
Heim Payne & Chorush
609 Main Street
Suite 3200
Houston, TX 77002

David A. Langer
Ellen T. Noteware
David F. Sorensen
Berger Montague
1818 Market Street
Suite 3600
Philadelphia, PA 19103
Counsel for Respondents AmerisourceBergen Corp,
Amerisourcebergen Drug Corp, King Drug Co. of
Florence, Inc., Bellco Drug Corp., HD Smith LLC,
Cardinal Health, Inc., Harvard Drug Group, McKesson
Corp., J M Smith Corp., agent of D/B/A Smith Drug Co.,
Burlington Drug Co., Inc., North Carolina Mutual
Wholesale Drug, Dakota Drug, Value Drug, FWK
Holdings LLC
3
 __________________________

OPINION OF THE COURT
__________________________

SMITH, Circuit Judge.

I. INTRODUCTION

The underlying litigation in the matter before us sounds
in patent and antitrust law. What we are presented with here,
however, is a petition for mandamus relief after a district judge
ruled that application of the crime-fraud exception to the
attorney-client privilege justified an order compelling
production of certain documents generated by in-house counsel
for the patent holder. Petitioners are Abbott Laboratories,
Abbvie Inc., Abbvie Products LLC, Unimed Pharmaceuticals
LLC, and Besins Healthcare, Inc. 1 They contend that a writ of
mandamus relief is the only means available to them to

1
Abbvie Inc.; Abbvie Products LLC; and Unimed
Pharmaceuticals, LLC are collectively referred to as “Abbvie.”
As explained in Petitioners’ corporate disclosure statement:
“Neither Abbott Laboratories nor AbbVie Inc. has any parent
corporation. Unimed Pharmaceuticals LLC is a direct, wholly
owned subsidiary of AbbVie Products LLC, which is a direct,
wholly owned subsidiary of AbbVie Inc. Besins Healthcare,
Inc. (“BHI”) is a wholly owned subsidiary of Besins
Healthcare Ireland Ltd.” Pet. at i.
4
preserve confidentiality, which should extend to documents
they claim are privileged. Respondents include various drug
manufacturers who argue that mandamus should not lie
because Petitioners (1) have failed to show that the District
Court committed a clear and indisputable abuse of discretion;
(2) have another adequate remedy; and (3) will not suffer
irreparable injury. Because Petitioners fail to meet the high bar
set for granting a petition for writ of mandamus, we will deny
their petition.

II. FACTUAL BACKGROUND

Petitioners Abbvie and BHI owned a now-expired
patent (the ’894 patent), protecting AndroGel 1%, a topical
drug used to treat patients with low testosterone. FTC v.
AbbVie Inc., 976 F.3d 327, 341-42 (3d Cir. 2020) (“FTC II”). 2
The original patent application, which the patent examiner
rejected, “claimed all penetration enhancers.” Id. at 341. It was
later amended “to recite at least one of 24 penetration
enhancers,” among them isopropyl myristate and isostearic
acid, though not isopropyl palmitate. Id. The claimed
pharmaceutical composition for the patent that ultimately

2
“AbbVie acquired Unimed’s interest in the patent as follows:
in 1999, Unimed was acquired by Solvay; in 2010, Solvay was
acquired by Abbott; in 2013, Abbott separated into two
companies—Abbott and AbbVie—with AbbVie assuming all
of Abbott’s propriet[ar]y pharmaceutical business, including
its interest in Androgel.” FTC II, 976 F.3d at 341.

5
issued had been reduced to a formulation with only a single
enhancer: isopropyl myristate. Id. at 342.

The Drug Price Competition and Patent Term
Restoration Act of 1984, commonly known as the Hatch-
Waxman Act, provides a regulatory scheme for testing and
approving new drugs. 21 U.S.C. § 355; FTC v. Actavis, Inc.,
570 U.S. 136, 142-44 (2013); see In re Wellbutrin XL Antitrust
Litig. Indirect Purchaser Class, 868 F.3d 132, 143-44 (3d Cir.
2017). The Act provides special procedures for approving
brand-name and generic drugs, as well as “for identifying, and
resolving, related patent disputes.” Actavis, Inc., 570 U.S. at
143. Following these procedures, drug companies Perrigo
Company (“Perrigo”) and Teva Pharmaceuticals USA, Inc.
(“Teva”) sought FDA approval for generic Androgel 1%
formulations. FTC II, 976 F.3d at 342-43. Perrigo’s version
specified a formulation using isostearic acid as its penetration
enhancer, while Teva specified a formulation using isopropyl
palmitate (which Petitioners later argued was equivalent to
isopropyl myristate). Id. at 343. Both companies certified
under 21 U.S.C. § 355(b)(2) that Petitioners’ ’894 patent was
invalid or not infringed by their own formulations. Id. at 343-
44, 361. Under 21 U.S.C. § 355(j)(5)(B)(iii), Petitioners then—
as owners of the ’894 patent—had “45 days to decide whether
to sue.” Id. at 340.

Petitioners sued Perrigo for infringement in the District
of New Jersey. Id. at 344. They then contacted Perrigo only
days later to discuss settling the lawsuit, offering to pay Perrigo
$500,000. Ultimately, Abbott paid Perrigo $2,000,000, with
Perrigo agreeing in exchange to delay marketing its generic 1%
testosterone gel until January 1, 2015, or until another version
6
entered the market, whichever occurred first. Id. Abbott also
sued and settled with Teva, agreeing to license Teva to market
its generic gel beginning on December 27, 2014. Id. The FDA
later approved Perrigo’s and Teva’s products, which used
isostearic acid and isopropyl palmitate, respectively. Id. at 345.

III. PROCEDURAL BACKGROUND

The procedural history of this and related litigation is
lengthy and has begun to resemble the many heads of Hydra.
On October 31, 2011, Petitioners filed a lawsuit against Perrigo
(the “Perrigo Lawsuit”) through their outside counsel, Munger,
Tolles & Olson, LLP (“Munger Tolles”) and Foley & Lardner
LLP (“Foley Lardner”). Petitioners alleged that “the
submission of [Perrigo’s new drug application] . . . constitutes
infringement by Perrigo . . . of the ’894 Patent” and that “any
commercial manufacture, use, sale, offer for sale, or
importation of Perrigo’s Generic AndroGel® would infringe
the ’894 Patent.” App. 272. Munger Tolles and Foley Lardner
certified that the Perrigo Lawsuit was “not being presented for
any improper purpose.” Fed. R. Civ. P. 11(b)(1).

In 2014, the Federal Trade Commission (“FTC”) filed
an antitrust suit in the District Court against Petitioners,
alleging that Petitioners “maintained an illegal monopoly
through the filing of sham patent infringement lawsuits against
two potential competitors,” i.e., Perrigo and Teva. See FTC v.
AbbVie Inc., 329 F. Supp. 3d 98, 106 (E.D. Pa. 2018) (“FTC
I”). In early interrogatory responses, Petitioners averred that
their outside counsel Munger Tolles and Foley Lardner “w[ere]
responsible for, involved in, or contributed to [the] decisions
to file the . . . Perrigo [l]itigation.” App. 248. By the time of
7
trial, Petitioners asserted that “internal counsel for Abbott
Products” made “[t]he ultimate decision to sue Perrigo in
2011.” App. 661. In ruling against AbbVie after a bench trial,
the District Court reasoned that internal counsel “had actual
knowledge” that the lawsuit was “baseless” and that “they
acted in bad faith.” FTC I, 329 F. Supp. 3d at 126. The
lawsuit’s sole purpose, the District Court concluded, “was to
impose expense and delay [on] Perrigo.” Id.

We upheld the District Court, leaving undisturbed its
finding that AbbVie had filed an objectively baseless lawsuit
in bad faith to injure a potential competitor. FTC II, 976 F.3d
at 371. We explained: “[T]he [District] Court was permitted to
conclude . . . that in filing an objectively baseless lawsuit
against Perrigo, the decisionmakers were motivated not to
assert a patent in good faith, but to impose expense and
delay . . . .” Id.

After our decision in FTC II, Respondents in the instant
matter filed suit in 2019 against Petitioners, in the case of King
Drug Co. of Florence, Inc., et al. v. Abbott Laboratories, et al.,
No. 2:19-cv-03565 (E.D. Pa.) (“the King lawsuit”). They
alleged antitrust claims under the Sherman Act, arguing that
patent-infringement lawsuits including the Perrigo suit delayed
market entry of generic AndroGel 1%. Respondents moved for
partial summary judgment, arguing that FTC II had preclusive
effect as to whether the Perrigo lawsuit constituted sham
litigation. The District Court declined to apply issue preclusion

8
but held, once again, that the Perrigo litigation was objectively
baseless. 3

After discovery commenced in the King lawsuit,
Respondents moved to compel production of 211 documents,
which they argued revealed Petitioners’ in-house counsel’s
views about the baselessness of suing the generic drug
manufacturers in the Perrigo lawsuit. Respondents contended
that because both the District Court and this court in FTC II
had already held that the Perrigo litigation was objectively
baseless, any communication by Petitioners’ in-house counsel
concerning whether to file that suit constituted a
communication in furtherance of fraud, and that such
communication would not be protected by the attorney-client
privilege due to the crime-fraud exception. 4 Petitioners
maintained that the attorney-client privilege applies. The
District Court asked Respondents to prepare and provide a list
of 100 documents for it to review in camera. Petitioners asked

3
The parties proceeded to discovery, and one of the issues that
remained was whether Petitioners’ subjective motivation for
filing suit was for an improper purpose.
4
Under the crime-fraud exception, communications made
between an attorney and client that are “in furtherance of future
illegal conduct” are not protected by attorney-client privilege.
United States v. Zolin, 491 U.S. 554, 556 (1989); see Haines v.
Liggett Grp. Inc., 975 F.2d 81, 90 (3d Cir. 1992).

9
the District Court for permission to appeal that ruling under 28
U.S.C. § 1292(b), 5 but their motion was denied.

After reviewing the challenged documents in camera,
the District Court ordered Petitioners to produce nineteen
documents. 6 The District Judge explained that, “it is reasonable

5
28 U.S.C. § 1292(b) dictates in relevant part:

When a district judge, in making in a civil action
an order not otherwise appealable under this
section, shall be of the opinion that such order
involves a controlling question of law as to
which there is substantial ground for difference
of opinion and that an immediate appeal from the
order may materially advance the ultimate
termination of the litigation, he shall so state in
writing in such order.
6
In the District Court’s March 27, 2023 order, Judge Bartle
determined that the filing of an action “held to be a sham is
encompassed within the definition of a fraud under the crime-
fraud exception.” App. 13-14. He also recognized that “it is not
necessary to decide whether the filing of a sham litigation in
this Circuit is a common law fraud on the court” because
“reliance[,] while an essential element of common law fraud[,]
is not an essential element of fraud for purposes of the crime-
fraud exception in the Third Circuit.” App. 8-9.
Petitioners also complain that the District Court
“rejected the Federal Circuit’s conclusion, made in patent
cases, that no fraud exists under the [crime-fraud] exception
10
to infer from their legal research and analysis that [the
attorneys] knew the filing of the litigation would be a sham,”
and thus, since the attorneys were “key decisionmakers who
directed the filing of sham litigation,” “it is reasonable to
conclude that the attorneys used their own legal research and
analysis—the documents at issue here—in furtherance of
fraud.” App. 183-84.

Petitioners then sought a writ of mandamus, the matter
now before us. It seeks vacatur of the District Court’s orders
dated March 27, 2023, and July 20, 2023—the orders which
had directed Petitioners to produce documents for which they
claimed privilege, and to which the District Court had
concluded the crime-fraud exception applied. The District
Court has stayed its order compelling production of the
documents pending our decision.

IV. HISTORY OF THE WRIT OF MANDAMUS

The writ of mandamus has a long history, likely
reaching back to the 16th century. 7 Despite that lineage, courts

without” misrepresentation of fact or reliance on such a
misrepresentation, Pet. at 9-10. But the District Court
appropriately applied Third Circuit law because “[t]he Federal
Circuit does not have jurisdiction over any appeal in this
action.” App. 12.
7
Some scholarly sources indicate that the first reported case
involving a writ of mandamus arose in 1573 in Middleton’s
Case, 3 Dyer 332b (1573). See, e.g., Leonard Goodman,
Mandamus in the Colonies-The Rise of the Superintending
11
have granted it sparingly. After the first mandamus statute’s
enactment in 1710, courts were “either reluctant to or []
prevented from asserting supervisory authority” with respect to
writs of mandamus and certiorari. Leonard Goodman,
Mandamus in the Colonies-The Rise of the Superintending
Power of American Courts, THE AM. J. OF LEGAL HIST. VOL.
I, 4 at 310 (Oct. 1957). Indeed, writing in 1768, Blackstone
described mandamus as a “high prerogative writ,” emphasizing
its discretionary nature. 3 William Blackstone,
COMMENTARIES 110. Over time, courts in England expressed
reservations about granting mandamus if a party could seek
recourse by pursuing some other remedy. See Audrey Davis,
Note, A Return to the Traditional Use of the Writ of
Mandamus, 24 LEWIS & CLARK L. REV. 1527, 1536 (2020)
(citing R. v. Governor of the Bank of Eng., 99 Eng. Rep. 334,
334 (1780); T.E. Tomlins, A DIGESTED INDEX TO THE SEVEN
VOLUMES OF TERM REPORTS IN THE COURT OF KING’S BENCH
127 (1799)). The availability of a remedy in equity also barred
mandamus. See R. v. Marquis of Stafford, 100 Eng. Rep. 782,
785 (1790).

Mandamus figured prominently in early United States
Supreme Court jurisprudence. The Supreme Court first dealt
with mandamus in U.S. v. Lawrence, 3 U.S. (3 Dall.) 42 (1795),
and in that case denied the writ. The landmark case of Marbury
v. Madison, 5 U.S. (1 Cranch) 137 (1803), came before the

Power of American Courts, THE AM. J. OF LEGAL HIST. VOL.
I, 4 at 309 (Oct. 1957). The King’s Bench issued its more
foundational mandamus case in 1615. See id. (discussing
James Bagg’s Case, 11 Coke’s Rep. 93 at 98 (1615)).
12
Supreme Court on a writ of mandamus, sought by William
Marbury and three others similarly situated when, after being
appointed Justices of the Peace in the District of Columbia,
their commissions were not delivered. There, Chief Justice
Marshall discussed the writ’s origin and use and cabined its
appropriateness to those instances when a party has no other
legal remedy. Id. at 168-69. Since the eighteenth century, the
Supreme Court has continued to emphasize the “extraordinary”
nature of mandamus relief. See, e.g., U.S. Alkali Export Ass’n
v. United States, 325 U.S. 196, 202-03 (1945); Ex parte Fahey,
332 U.S. 258, 259-60 (1947); Cheney v. U.S. Dist. Court, 542
U.S. 367, 380 (2004).

V. MANDAMUS JURISDICTION STANDARD OF
REVIEW

This Court has authority to issue writs of mandamus
pursuant to the All Writs Act, 28 U.S.C. § 1651(a). In re
Chambers Dev. Co., Inc., 148 F.3d 214, 223 (3d Cir. 1998).
The writ of mandamus is an “extreme” remedy reserved for
only the most “extraordinary situations.” Haines, 975 F.2d at
88 (quoting Kerr v. U.S. Dist. Court, 426 U.S. 394, 402
(1976)); see Will v. United States, 389 U.S. 90, 95 (1967). To
obtain mandamus relief, Petitioners must show: “(1) a clear
and indisputable abuse of discretion or error of law, (2) a lack
of an alternate avenue for adequate relief, and (3) a likelihood
of irreparable injury.” In re Howmedica Osteonics Corp., 867
F.3d 390, 401 (3d Cir. 2017) (internal citations and quotation
marks omitted). When laying out mandamus requirements, the
Supreme Court explained that petitioners must “demonstrate a
‘clear abuse of discretion,’ or conduct amounting to
‘usurpation of [the judicial] power.’” Mallard v. U.S. Dist. Ct.
13
for S. Dist. of Iowa, 490 U.S. 296, 309 (1989) (internal citations
omitted). By grouping “clear abuse of discretion” with
something as egregious as a usurpation of judicial power, the
Supreme Court conveyed that a clear and indisputable abuse of
discretion standard presents a high bar. Moreover, even if
Petitioners here can make the three-pronged showing set forth
above, this Court still has broad discretion in deciding whether
to grant or deny a mandamus petition. See, e.g., In re McGraw-
Hill Glob. Educ. Holdings, LLC, 909 F.3d 48, 57 (3d Cir.
2018); Cheney, 542 U.S. at 381.

We will deny the petition for a writ of mandamus, as
Petitioners fail to clear the high bar this Court requires for
mandamus relief to be awarded.

VI. ANALYSIS

a. PETITIONERS HAVE IDENTIFIED NO CLEAR AND
INDISPUTABLE RIGHT TO RELIEF

i. SHAM LITIGATION TRIGGERING THE CRIME-
FRAUD EXCEPTION

To satisfy the Supreme Court’s two-part definition of
sham litigation, (1) “the lawsuit must be objectively baseless
in the sense that no reasonable litigant could realistically
expect success on the merits,” and (2) “the baseless lawsuit
[must] conceal[] an attempt to interfere directly with the
business relationships of a competitor through the use [of] the
governmental process—as opposed to the outcome of that
process—as an anticompetitive weapon.” Pro. Real Est. Invs.,
Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60-61
14
(1993) (internal citations and quotation marks omitted); see
Hanover 3201 Realty, LLC v. Vill. Supermarkets, Inc., 806
F.3d 162, 179 (3d Cir. 2015). It follows, then, that sham
litigation is a “wrongdoing” that involves a client’s intentional
“misuse” of the legal process for an “improper purpose.” In re
Grand Jury, 705 F.3d 133, 151, 157 (3d Cir. 2012) (internal
citation omitted). 8 And as we have said, albeit outside the
antitrust context, a client’s intentional “misuse [of] [an]
attorney’s advice in furtherance of” “wrongdoing” undertaken
for an “improper purpose,” triggers the crime-fraud exception.
Id.

8
Out-of-Circuit cases also support the conclusion that sham
litigation triggers the crime-fraud exception. See, e.g., United
States v. Richard Roe, Inc., 168 F.3d 69, 72 (2d Cir. 1999)
(holding that “bringing baseless litigation intended to delay
entry into a market by a competitor” may “after a rigorous in
camera review by a court for relevance, fall within the crime-
fraud exception”); Chandler v. Phoenix Servs., No. 7:19-cv-
00014-O, 2020 WL 487503, at*5 (N.D. Tex. Jan. 30, 2020)
(“Thus, the crime-fraud exception applies to all attorney-client
communications and work product made in furtherance of the
Phoenix Defendants’ assertion of the ‘993 Patent through the
alleged sham patent litigation.”); Peerless Indus., Inc. v.
Crimson AV LLC, No. 11 C 1768, 2013 WL 6050006, at *4
(N.D. Ill. Nov. 14, 2013) (“Fraud consisting of the knowing
pursuit of baseless litigation may bring the crime-fraud
exception into play.”) (quoting Motorola, Inc. v. Vosi Techs.,
Inc., No. 01 C 4182, 2002 WL 1917256, at *6 (N.D. Ill. Aug.
19, 2002)).
15
 The central merits question before us, therefore, is
whether sham litigation is a type of fraud which may form the
basis for a party to invoke the crime-fraud exception to the
attorney-client privilege. We have found no binding precedent
that squarely answers this question, nor have the parties
pointed us to any. And Petitioners concede as much. While
acknowledging that “this Court has not directly opined on the
meaning of ‘fraud’ in the exception,” Petitioners nevertheless
argue that “this Court’s decisions are all consistent with an
understanding of fraud that requires deception regarding a
material fact.” Pet. at 16 (internal citation omitted) (emphasis
added). This is simply not the stuff of which “binding
authority” is cast. Without such authority, mandamus
petitioners “do not come close to demonstrating” that the
District Court committed a clear error or an abuse of discretion
in concluding that sham litigation may trigger application of
the crime-fraud exception. Republic of Venez. v. Philip Morris,
Inc., 287 F.3d 192, 199 (D.C. Cir. 2002) (concluding
petitioners failed to show clear error where no binding
authority existed and sister circuits were split on the issue at
hand). 9

9
Petitioners, citing out-of-Circuit precedent, argue that
mandamus relief may be appropriate in the absence of a clear
error, when a case involves “an issue important to ‘proper
judicial administration,’” In re Gonzales, 623 F.3d 1242, 1246-
47 (9th Cir. 2010), rev’d on other grounds, 568 U.S. 57 (2013)
(internal citation omitted), or a “legal question of first
impression or of extraordinary significance,” In re von Bulow,
828 F.2d 94, 97-98 (2d Cir. 1987). We have previously
16
recognized a “line of cases recognizing that mandamus may
properly be used as a means of immediate appellate review of
orders compelling the production of documents claimed to be
protected by privilege.” Bogosian v. Gulf Oil Corp., 738 F.2d
587, 591, 596 (3d Cir. 1984). There, we considered a disclosure
order with “no adequate, alternative procedure for review,” and
recognized that, in such an instance, we “may” consider the
claimed privilege by exercising our mandamus power. Id. at
591. But even where we considered the merits of a work-
product doctrine issue and remanded “without formal issuance
of the writ of mandamus,” we “caution[ed] that mandamus is
not to be used as an ordinary vehicle to obtain interlocutory
relief from discovery orders.” Id. Its availability is limited to
“prevent[ing] grave injustice.” Id.
Under our precedent, while the legal issues a petition for
mandamus presents may inform whether we exercise our
discretion to grant mandamus even if Petitioners cannot make
the three-pronged showing discussed above, see, e.g., In re
McGraw-Hill Glob. Educ. Holdings, LLC, 909 F.3d at 57, we
do not find it necessary to exercise such discretion here. At its
core, our precedent dictates that mandamus should not
“become a means” for “all potentially erroneous orders,” to be
corrected. Id. (internal citation omitted). And our case law has
repeatedly emphasized that “errors of law must at least
approach[] the magnitude of an unauthorized exercise of
judicial power, or a failure to use that power when there is a
duty to do so.” Id. (internal citations and quotation marks
omitted). There has been no unauthorized exercise of judicial
power here.
17
 Without binding authority to guide it, the District
Court’s conclusion that sham litigation triggers the crime-fraud
exception was not a “clear and indisputable abuse of discretion
or error of law.” In re Howmedica, 867 F.3d at 401. In short,
there was no usurpation of judicial power. The Supreme Court
has recognized that the crime-fraud exception applies when
attorney advice “refers . . . to future wrongdoing.” Zolin, 491
U.S. at 562-63 (quoting 8 Wigmore § 2298, at 573). And as
Respondents note, we have broadly understood “wrongdoings”
to include not only crimes but also torts. See United States v.
Doe, 429 F.3d 450, 454 (3d Cir. 2005); In re Grand Jury
Proceedings, 604 F.2d 798, 802 (3d Cir. 1979). Further, we
have recognized that “[a]ll that is necessary is that the client
misuse or intend to misuse the attorney’s advice in furtherance
of an improper purpose. When this occurs, the purpose of the
privilege, to promote the fair administration of justice, has been
undermined and the privilege no longer applies.” In re Grand
Jury, 705 F.3d at 157 (internal citation omitted) (emphasis
added).

Petitioners argue that the District Court clearly erred in
holding that sham litigation triggers the crime-fraud exception
because it relied on an “egregious misreading” of In re
Chevron, 633 F.3d 153 (3d Cir. 2011). Pet. at 18. Petitioners
are wrong. As Respondents contend, In re Chevron is easily
distinguishable from what is before us.

There, after Chevron’s corporate predecessor was sued
in Ecuador, an Ecuadorian court appointed “global damages
expert” Richard Stalin Cabrera Vega (“Cabrera”). 633 F.3d at
157-58. Cabrera’s team of fourteen experts included Juan
Cristóbal Villao Yepez (“Villao”), who happened to be
18
employed by the New Jersey environmental firm that plaintiffs
in that suit had hired as a consultant. Id. at 159. After learning
of Villao’s “dual employment,” Chevron made discovery
requests and invoked the crime-fraud exception as a means of
piercing the attorney-client privilege. Id. at 159-60. In
affirming the District Court’s application of the crime-fraud
exception, our Court explained that it viewed the dual
employment as a “conflict of interest.” Id. at 166. We
elaborated that the “showing of Villao’s dual employment
[was] sufficient to make a prima facie showing of a fraud that
satisfies the first element” needed for the crime-fraud
exception to apply. Id. In the case before us, the District Court
reasoned that “[i]f an expert’s conflict of interest in a foreign
court can be a fraud, surely the filing of a sham lawsuit in the
United States District Court for the District of New Jersey can
be a fraud.” App. 14. This a fortiari comparison was
reasonable and hardly suggests a misreading of In re Chevron.

Certainly not all frivolous litigation falls within the
crime-fraud exception. Frivolous litigation may trigger Rule 11
sanctions, 10 but that will not, by itself, allow access to material
otherwise shielded by the attorney-client privilege. Our focus
is limited to what qualifies as “sham litigation.” Here, it is the
lawsuit’s baselessness, combined with the client’s subjective
intent to interfere with administrative and judicial procedures

10
We have recognized that Rule 11 aims “to discourage
pleadings that are ‘frivolous, legally unreasonable, or without
factual foundation, even though the paper was not filed in
subjective bad faith.’” Lieb v. Topstone Indus., Inc., 788 F.2d
151, 157 (3d Cir. 1986) (internal citation omitted).
19
associated with patent rights, that triggers the crime-fraud
exception.

ii. RELIANCE REQUIREMENT

Petitioners next argue that the District Court,
“committed an additional clear error” by not applying a
“reliance” requirement. Pet. at 22. This argument also fails. As
Respondents explain, the crime-fraud exception, as this Court
has articulated it, applies if “the client was . . . intending to
commit a fraud or crime, and [] the attorney-client
communications were in furtherance of that” attempt. Chevron,
633 F.3d at 166 (quoting In re Grand Jury Investigation, 445
F.3d 266, 274 (3d Cir. 2006)). In none of our opinions
addressing the crime-fraud exception have we embraced a
reliance requirement.

We have explained that “where the client consults the
attorney for the purpose of committing a future [] fraud, the
crime-fraud exception to the attorney-client privilege applies
and communications made in furtherance of the anticipated []
fraud are not protected from disclosure as recognition of ‘the
privilege is no longer defensible.’” Id. (quoting In re Grand
Jury Proceedings, 604 F.2d at 802) (internal quotation marks
omitted). That understanding stems from the Supreme Court’s
instruction that “[i]t is the purpose of the crime-fraud exception
to the attorney-client privilege to assure that the seal of secrecy
between lawyer and client does not extend to communications
made for the purpose of getting advice for the commission of
a fraud or crime.” Zolin, 491 U.S. at 563 (internal quotation
marks and citations omitted). Moreover, a party who invokes
the crime-fraud exception can satisfy the fraud requirement by
20
demonstrating nothing more than that “the client
was . . . intending to commit a fraud.” Pallares v. Kohn (In re
Chevron Corp.), 650 F.3d 276, 291 (3d Cir. 2011) (internal
citation omitted); see also Clark v. United States, 289 U.S. 1,
15 (1933) (“The privilege takes flight if the relation is abused.
A client who consults an attorney for advice that will serve him
in the commission of a fraud will have no help from the
law.”). 11

The District Court followed our Court’s case law,
noting that “the decisions of the Third Circuit . . . have
described fraud in the crime-fraud exception to include advice
as to attempted or intended fraud,” and “[i]f the fraud does not
have to be consummated, there can be no requirement of
reliance.” App. 8. The District Court did not clearly err in
holding that “the law of the Third Circuit applies the crime-
fraud exception without the need for reliance.” Id.

We will not consider Petitioners’ argument that
“attempted fraud” requires an “attempt to induce” reliance, Pet.
at 23. As Respondents explain, this argument was raised for the
first time in the filing of the Petition. Because the argument
was not raised in the District Court, Petitioners have forfeited
it. See Newark Morning Ledger Co. v. United States, 539 F.2d
929, 932 (3d Cir. 1976).

11
Petitioners concede that “[t]his Court has not . . . ruled on
that [reliance] issue.” Pet. at 23. Thus, as Petitioners recognize,
there is no binding precedent supporting their argument.
Mandamus relief is therefore inappropriate.

21
 iii. THE ‘IN FURTHERANCE OF’ PRONG

Petitioners argue that the District Court adopted the
mistaken view that this Court “‘has broadly interpreted the
scope of communications or work product that implicate the
crime-fraud exception’ under the ‘in furtherance of’
requirement.” Pet. at 27 (quoting App. 184). 12 Again,
Petitioners are seeking to stretch pronouncements in our case
law beyond their intended reach.

The crime-fraud exception does not extend to
communications that “merely relate to the crime or fraud” or
“merely opine[] on the lawfulness of a particular course of
conduct.” In re Grand Jury Subpoena, 745 F.3d 681, 693 (3d
Cir. 2014); see also In re Grand Jury, 445 F.3d 266, 276-77
(3d Cir. 2006). But here, the District Court zeroed in on an
array of documents that provided “a reasonable basis to suspect
that AbbVie and [BHI] intended to file sham litigation for the
purpose of preventing or delaying Perrigo from entering the
testosterone replacement market.” App. 185.

12
Petitioners have not challenged the District Court’s factual
findings as clearly erroneous. As an appellate court, we must
show “great deference” to the District Court, United States v.
Antoon, 933 F.2d 200, 204 (3d Cir. 1991), and “accept the
factual determination of the fact finder unless that
determination ‘either (1) is completely devoid of minimum
evidentiary support displaying some hue of credibility, or (2)
bears no rational relationship to the supportive evidentiary
data.’” Haines, 975 F.2d at 92 (internal citations omitted).

22
 The District Court identified four documents
demonstrating that “the attorneys were well-aware that they
had a 45-day period after receiving Perrigo’s letter to file a
lawsuit before the 30-month stay expired.” App. 186 (citing
Exs. 2, 15, 30, 39). They also knew that “[i]f they received the
30-month stay, Perrigo would not be able to enter the market
until late March 2014.” Id. Another document, dated over 15
days before the infringement action against Perrigo was filed,
revealed in-house counsel “discussing internally their
settlement proposal, not about what Perrigo might pay them
but instead what they might pay Perrigo.” App. 187. And the
District Court recognized that “[i]n two documents, the
attorneys examined statistics about the typical length for patent
cases to be resolved in various district courts.” App. 186 (citing
Exs. 21, 61). The documents show that the attorneys believed
that New Jersey, where the case was ultimately filed, often
takes “notably longer than [] other district courts in the
country” “to resolve patent cases.” Id. Ironically, the in-house
lawyers appeared to regard judicial delay as an ally.

We have recognized the fact that a client “could gain”
information from questions an attorney posed as “sufficient . .
. to conclude that the District Court did not abuse its discretion
in determining that the advice was used in furtherance of a
crime or fraud.” In re Grand Jury Subpoena, 745 F.3d at 691.
This is true even if it is “impossible to know what [the] [c]lient
thought or how he processed the information gained from [his]

23
[a]ttorney” so long as the correspondence itself “would lead
logically” to the client committing a wrongdoing. Id. at 693. 13

13
In In re Grand Jury Subpoena, we considered whether the
crime-fraud exception applied to the testimony of an attorney
whose corporate client approached him with questions
regarding obtaining financing from a bank for a particular
project. 745 F.3d at 685. The client told his attorney that the
official overseeing the project’s financing had threatened to
slow the process for approving it. Id. Hoping to facilitate
approval, the client told his attorney he planned to make a
payment to the official. Id. After conducting preliminary
research and reviewing the Foreign Corrupt Practices Act
(“FCPA”), the attorney asked the client whether the financial
institution was a government entity or if the official at issue
worked for the government. Id. Further, the attorney advised
the client not to make any payment to the official. Id. At that
point, having conducted only limited research, the attorney had
not determined whether paying the bank official would be
illegal. Id. The client did not heed his attorney’s advice. Id.
Instead, the client conveyed that he would make the payment,
insisting there would be no FCPA violation. Id. The client and
attorney then terminated their relationship. Id. The client later
made payments of more than $3.5 million over a two-year span
to the bank official’s sister, a person not affiliated with the
financial institution. Id.
We recognized in that case that the attorney’s questions
concerning possible government affiliation would have
24
 In the case before us, the pre-filing documents “would
lead logically” to an inference that in-house counsel filed a
sham lawsuit to trigger the 30-month stay. Id. The documents
show in-house counsel’s focus on research related to pursuing
sham litigation. Thus, the District Court did not abuse its
discretion in determining that the pre-filing documents were in
furtherance of a fraud. 14

Additionally, we emphasize that the usual crime-fraud
scenario is one in which the attorney and client play distinct
roles in their relationship. As Respondents contend, the only
actors here are in-house counsel who communicated with and
advised one another. So the District Court did not clearly err in
determining that “the attorneys here did more than opine on the
lawfulness of the conduct.” App. 183. Rather, it correctly

indicated to the client “that the governmental connection was
key to violating the FCPA.” Id. at 693. Awareness of that
connection “would lead logically” to the client’s attempting “to
avoid the reaches of the FCPA or detection of [an FCPA]
violation” by making payments to the bank official’s sister
rather than to the banker himself. Id.
14
In reaching this conclusion, the District Court did not rely on
“after the fact” evidence, as Petitioners suggest. The
Documents preceded the filing of the Perrigo Lawsuit, and the
District Court pointed to the fact that in-house counsel’s
internal settlement discussions “began over 15 days before the
infringement action against Perrigo was filed.” App. 187.

25
recognized that the “distinction between attorney and client is
conflated in this case.” App. 184.

Petitioners take issue with the District Court’s
characterizing the “legal analyses by in-house or outside
counsel of the merits of potential claims against Perrigo and
defenses Perrigo might raise” as being ‘in furtherance of’
fraud. Pet. at 28-29. They also disagree with the District
Court’s legal conclusion that emails from in-house counsel
discussing (1) Perrigo’s certification that the ’894 patent was
not invalid or infringed and (2) an assessment regarding
whether they could assert the patent against Perrigo were ‘in
furtherance of’ fraud. The District Court highlighted that “a
number of the documents reveal that the attorneys doubted the
merits of the action against Perrigo,” such as a document that
relied on the doctrine of equivalents, 15 which the District Court
had previously found to be “objectively baseless.” App. 188-
89. Further, “[i]n other documents, the attorneys delve[d]
extensively into their concerns that the lawsuit against Perrigo
would result in sanctions under Rule 11.” App. 190 (citing Exs.
24, 29, 30, 31, 32, 66, 160). And the District Court noted that
“[t]he attorneys feared that they did not have viable arguments

15
Under the doctrine of equivalents “a product or process that
does not literally infringe upon the express terms of a patent
claim may nonetheless be found to infringe if there is
‘equivalence’ between the elements of the accused product or
process and the claimed elements of the patented invention.”
Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520
U.S. 17, 21 (1997) (internal citation omitted).

26
under the disclosure-dedication doctrine.” 16 Id. Together, these
legal analyses and emails demonstrate how in-house counsel
developed the sham litigation.

Petitioners also argue that “the privilege is lost only as to
communications advising how to commit or conceal a fraud.”
Pet. at 27. Yet our case law does not impose such a limitation.
We have recognized that “[a]ll that is necessary [to trigger the
crime-fraud exception] is that the client misuse or intend to
misuse the attorney’s advice in furtherance of an improper
purpose.” In re Grand Jury, 705 F.3d at 157. Moreover, we
agree with Respondents, that a reasonable factfinder could
determine, based on the documents discussed above, that in-
house counsel, in planning to quickly pay Perrigo to settle,
were advising themselves on how to commit a wrongdoing by
engaging in sham litigation.

b. A POST-JUDGMENT APPEAL IS ADEQUATE AND
AVAILABLE

“To prevail on the merits of a mandamus petition,
[Petitioners] must show . . . that no other adequate alternative
remedy exists.” In re Citizens Bank, N.A., 15 F.4th 607, 616

16
Under the disclosure-dedication doctrine, “when a patent
drafter discloses but declines to claim subject matter, . . . this
action dedicates the unclaimed subject matter to the public.”
Eagle Pharm. Inc. v. Slayback Pharma LLC, 958 F.3d 1171,
1175 (Fed. Cir. 2020) (quoting Johnson & Johnston Assoc. v.
R.E. Servs., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc)).
This doctrine thus “bars application of the doctrine of
equivalents.” Id.
27
(3d Cir. 2021) (internal citation omitted). They have failed to
make such a showing.

The Supreme Court concluded in Mohawk Industries,
Inc. v. Carpenter that “postjudgment appeals generally suffice
to protect the rights of litigants and ensure the vitality of the
attorney-client privilege.” 558 U.S. 100, 109 (2009). That is so
because “[a]ppellate courts can remedy the improper
disclosure of privileged material in the same way they remedy
a host of other erroneous evidentiary rulings: by vacating an
adverse judgment and remanding for a new trial in which the
protected material and its fruits are excluded from evidence.”
Id. Respondents apply “Mohawk’s logic” to support their
contention that Petitioners cannot obtain mandamus relief
unless they show “why, under the facts of this case, a post-
judgment appeal is inadequate.” Answer at 30. We conclude
that Petitioners have failed to show why a post-judgment
appeal is insufficient to protect their rights under the facts here.

Petitioners argue that “disobeying the orders and
accepting sanctions is inadequate because that could trigger a
form of sanction that is onerous but not immediately
appealable.” Pet. at 31 (internal citations omitted). But they fail
to recognize another path that, though burdensome, would
allow for immediate appeal: disobeying a court order, being
held in contempt, and then appealing the contempt order. In re
Search of Elec. Commc’n’s in the Acct. of
chakafattah@gmail.com at Internet Serv. Provider Google,
Inc., 802 F.3d 516, 526 (3d Cir. 2015); see Fed. R. Civ. P. 70.
Here, Petitioners could refuse to disclose the nineteen
documents at issue and face sanctions such that a contempt
proceeding could be initiated to ultimately provide the judicial
28
review they seek. By failing to consider that option, at least in
this instance, they have failed to show that no adequate
alternative remedy exists. 17

C. PETITIONERS FAIL TO SHOW IRREPARABLE
INJURY

“Mandamus also requires a showing of irreparable
injury,” In re Citizens Bank, 15 F.4th at 616 n.8, yet Petitioners
have not demonstrated how the documents at issue in this case,
in being disclosed, would irreparably harm them. As
Respondents emphasize, the documents, which now are more
than a decade old, relate to an expired patent. Several of
Petitioners’ declarants are no longer employed by Petitioners.
Further, “protective orders are available to limit the spillover
effects of disclosing sensitive information.” Mohawk, 558 U.S.
at 112. The parties agreed to a protective order ensuring that
the documents at issue could be used only in connection with
this litigation and could not be publicly disclosed. That
protective order, as Respondents contend, refutes Petitioners’
argument that the orders compelling document production
“threaten[] to expose the losing side in any litigation at all to
invasive and unwarranted discovery.” Pet. at 32.

VII. CONCLUSION

Because Petitioners fail to show (1) a clear and
indisputable abuse of discretion or error of law; (2) a lack of an

17
We do not suggest that provoking a finding of contempt is
necessary in every case for mandamus relief to be available.
We simply note that it is one way to obtain judicial review.
29
alternate avenue for adequate relief; and (3) a likelihood of
irreparable injury, we will deny the petition for a writ of
mandamus.

30