Case: 20-135 Document: 55 Page: 1 Filed: 11/09/2020
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: APPLE INC.,
Petitioner
______________________
2020-135
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:19-
cv-00532-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
MELANIE L. BOSTWICK, Orrick, Herrington & Sutcliffe
LLP, Washington, DC, argued for petitioner. Also repre-
sented by ABIGAIL COLELLA, New York, NY; MELANIE
HALLUMS, Wheeling, WV; JOHN GUARAGNA, DLA Piper US
LLP, Austin, TX.
CHRISTIAN JOHN HURT, The Davis Firm, P.C.,
Longview, TX, argued for respondent Uniloc 2017 LLC.
Also represented by WILLIAM DAVIS.
______________________
Before PROST, Chief Judge, MOORE and HUGHES, Circuit
Judges.
Order for the court filed by Chief Judge PROST.
Dissent filed by Circuit Judge MOORE.
PROST, Chief Judge.
ORDER
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2 IN RE: APPLE INC.
Apple Inc. petitions this court for a writ of mandamus
directing the United States District Court for the Western
District of Texas (“WDTX”) to transfer the underlying pa-
tent infringement suit to the United States District Court
for the Northern District of California (“NDCA”) pursuant
to 28 U.S.C. § 1404(a). Uniloc 2017 LLC opposes. Uniloc
also moves to file a sur-reply brief and to supplement the
record.
We grant Uniloc’s motions to file a sur-reply and to sup-
plement the record. For the reasons below, we grant Ap-
ple’s petition.
BACKGROUND
In September 2019, Uniloc sued Apple in the Waco Di-
vision of WDTX, alleging that several Apple products in-
fringe U.S. Patent No. 6,467,088 (“the ’088 patent”).
App. 16. According to Uniloc, “Apple’s software download
functionality, including how Apple determines compatibil-
ity for application and operating system software updates
through the App Store, infringes the ’088 patent.” Re-
sponse Br. 4. The “Accused Products include Apple devices
that run iOS and macOS-based operating systems.” Id.
In November 2019, Apple moved to transfer the case to
NDCA on the basis that it would be clearly more conven-
ient to litigate the case in that district. App. 84; see also
28 U.S.C. § 1404(a). To support its motion, Apple submit-
ted a sworn declaration from Michael Jaynes, a senior fi-
nance manager at Apple. App. 105.
In January 2020, Apple moved to stay all activity in the
case unrelated to its transfer motion pending a decision on
the motion. App. 166–73. The district court denied the
stay motion without explanation in a text entry on the
docket. App. 7. The parties completed briefing and discov-
ery on transfer in February 2020. App. 4–9.
The district court held a hearing on Apple’s motion on
May 12, 2020, during which the court stated that it would
deny the motion and issue a written order as soon as pos-
sible. App. 10, 296. After the hearing, but before issuing a
written order, the court held a Markman hearing, issued
its claim construction order, held a discovery hearing
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IN RE: APPLE INC. 3
regarding the protective order in the case, and issued a cor-
responding discovery order. App. 11. In response to these
advances in the case, on June 15, 2020, Apple filed this pe-
tition for a writ of mandamus. The district court issued its
order denying transfer a week later, on June 22, 2020.
S. App. 1–34.
DISCUSSION
The writ of mandamus is an extraordinary remedy
available to correct a clear abuse of discretion or usurpa-
tion of judicial power. Cheney v. U.S. Dist. Ct., 542 U.S.
367, 380 (2004). “In reviewing a district court’s ruling on a
motion to transfer pursuant to § 1404(a) [on mandamus re-
view], we apply the law of the regional circuit,” in this case
the Fifth Circuit. See In re Barnes & Noble, Inc., 743 F.3d
1381, 1383 (Fed. Cir. 2014). “A district court abuses its
discretion if it: (1) relies on clearly erroneous factual find-
ings; (2) relies on erroneous conclusions of law; or (3) mis-
applies the law to the facts.” In re Volkswagen of Am., Inc.,
545 F.3d 304, 310 (5th Cir. 2008) (en banc) (“Volkswagen
II”) (quoting McClure v. Ashcroft, 335 F.3d 404, 408 (5th
Cir. 2003)). As “the distinction between an abuse of discre-
tion and a clear abuse of discretion cannot be sharply de-
fined for all cases,” “[o]n mandamus review, we review for
these types of errors, but we only will grant mandamus re-
lief when such errors produce a patently erroneous result.”
Id. “To determine whether a district court clearly abused
its discretion in ruling on a transfer motion, some petitions
for mandamus relief that are presented to us require that
we ‘review[] carefully the circumstances presented to and
the decision making process’ of the district court.” Id. at
312 (alteration in original) (quoting In re Horseshoe Ent.,
337 F.3d 429, 432 (5th Cir. 2003)).
In general, three conditions must be satisfied for a writ
to issue: (1) the petitioner must demonstrate a clear and
indisputable right to issuance of the writ; (2) the petitioner
must have no other adequate method of attaining the de-
sired relief; and (3) the court must be satisfied that the writ
is appropriate under the circumstances. Cheney, 542 U.S.
at 380–81. In the § 1404(a) transfer context, however, the
test for mandamus essentially reduces to the first factor,
given that “the possibility of an appeal in the transferee
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4 IN RE: APPLE INC.
forum following a final judgment . . . is not an adequate al-
ternative,” and that “an erroneous transfer may result in
judicially sanctioned irreparable procedural injury.” In re
McGraw-Hill Glob. Educ. Holdings LLC, 909 F.3d 48, 56
(3d Cir. 2018) (internal quotation marks omitted); see also
In re TS Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir.
2008). Accordingly, the issue on appeal is whether Apple
has shown a clear and indisputable right to issuance of the
writ.
I
Before addressing the merits of Apple’s petition, we
first consider Uniloc’s argument that Apple waived a num-
ber of arguments by failing to raise them in its petition.
Apple filed its petition on June 15, 2020—one week be-
fore the district court issued its written order denying
transfer and more than one month after the court held a
hearing on the transfer motion and orally indicated that it
would deny the motion. Apple’s reply brief, however, was
filed after the district court issued its written order deny-
ing transfer. Uniloc moved to file a sur-reply on the basis
that Apple’s reply brief raised “new points of error” not
raised in the petition because Apple incorrectly guessed in
its pre-order petition as to the bases on which the district
court would support its order denying transfer. See Op-
posed Non-Confidential Motion of Respondent for Leave to
File Sur-Reply Brief (July 13, 2020), ECF No. 39; see also
Response Br. 11 (arguing that Apple “guessed wrong [in its
petition] at how the [district court] would rule on a number
of factors” and, as a result, failed “to challenge several find-
ings at all” in the initial petition). In its sur-reply, Uniloc
addresses the merits of the arguments it contends Apple
first raised in its reply brief and further argues that Apple’s
purportedly newly raised arguments are waived. See Sur-
Reply Br. 1. Apple defends its pre-order filing, explaining
that “[g]iven the rapid progression of this case, [it could
not] wait any longer for a written order before seeking
mandamus to prevent the case from moving forward in an
inconvenient venue.” Pet. 10–11.
Ordinarily, an appellant waives issues or arguments
not properly raised in its opening brief. See Becton
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IN RE: APPLE INC. 5
Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed.
Cir. 1990). “This practice is, of course, not governed by a
rigid rule but may as a matter of discretion not be adhered
to where circumstances indicate that it would result in ba-
sically unfair procedure.” Id.; see also Harris Corp. v. Er-
icsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (“An
appellate court retains case-by-case discretion over
whether to apply waiver.”). To the extent Apple raises new
arguments in its reply brief in response to the district
court’s order, we exercise our discretion to not apply waiver
because doing so would be unfair under the circumstances.
Although district courts have discretion as to how to
handle their dockets, once a party files a transfer motion,
disposing of that motion should unquestionably take top
priority. E.g., In re Horseshoe, 337 F.3d at 433 (explaining
that transfer motions should take “top priority” in the han-
dling of a case); McDonnell Douglas Corp. v. Polin, 429 F.2d
30, 30 (3d Cir. 1970) (“To undertake a consideration of the
merits of the action is to assume, even temporarily, that
there will be no transfer before the transfer issue is de-
cided. Judicial economy requires that another district
court should not burden itself with the merits of the action
until it is decided that a transfer should be effected.”); In re
Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir. 2013) (ex-
plaining that “a trial court must first address whether it is
a proper and convenient venue before addressing any sub-
stantive portion of the case”); In re EMC Corp., 501 F. App’x
973, 975 (Fed. Cir. 2013) (acknowledging the “importance
of addressing motions to transfer at the outset of litiga-
tion”).
Instead, the district court barreled ahead on the merits
in significant respects, prompting Apple to file its manda-
mus petition before the district court issued its transfer or-
der. For example, the court held a Markman hearing,
issued its claim construction order, held a discovery hear-
ing, and issued a corresponding discovery order. App. 11.
These are not merely rote, ministerial tasks. Indeed, a
Markman hearing and claim construction order are two of
the most important and time-intensive substantive tasks a
district court undertakes in a patent case.
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6 IN RE: APPLE INC.
Given Apple’s concern over the rapid progression of
this case, Apple filed its petition before the district court
issued its transfer order. In the petition, Apple addressed
what it believed would be the court’s likely reasons for its
denial of the motion. Apple was first able to directly ad-
dress the district court’s order in its reply brief. On these
facts, and because we grant Uniloc’s motion to file a sur-
reply, we decline to apply waiver. 1
II
As to the merits, under 28 U.S.C. § 1404(a), “[f]or the
convenience of parties and witnesses, in the interest of jus-
tice, a district court may transfer any civil action to any
other district or division where it might have been brought
or to any district or division to which all parties have con-
sented.” Under Fifth Circuit law, to prevail on its transfer
motion before the district court, Apple bore the burden of
demonstrating that “the transferee venue is clearly more
convenient.” Volkswagen II, 545 F.3d at 314. The district
court denied that motion. On mandamus review, Apple
bears the burden of demonstrating that the court’s denial
amounted to a clear abuse of discretion. Id. at 308.
The Fifth Circuit assesses transfer requests using the
well-established private and public interest factors. Id. at
315. “The private interest factors are: ‘(1) the relative ease
of access to sources of proof; (2) the availability of compul-
sory process to secure the attendance of witnesses; (3) the
cost of attendance for willing witnesses; and (4) all other
practical problems that make trial of a case easy, expedi-
tious and inexpensive.’” Id. (quoting In re Volkswagen AG,
1 To the extent this order could be construed as con-
doning pre-order mandamus petitions, we take care to em-
phasize the particular circumstances of this case: namely,
the district court heavily prioritized the merits of the case,
and Uniloc was allowed a sur-reply. We also note that Ap-
ple’s decision to file a pre-order petition was not without
consequence to Apple. Indeed, Apple was only able to file
one brief directly responding to the district court’s argu-
ments, and Uniloc, through its sur-reply, received both the
last word and extra space for briefing.
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IN RE: APPLE INC. 7
371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”)). And
“[t]he public interest factors are: ‘(1) the administrative dif-
ficulties flowing from court congestion; (2) the local interest
in having localized interests decided at home; (3) the famil-
iarity of the forum with the law that will govern the case;
and (4) the avoidance of unnecessary problems of conflict of
laws [or in] the application of foreign law.’” Id. (alteration
in original) (quoting Volkswagen I, 371 F.3d at 203).
The parties agree that the third and fourth public in-
terest factors are neutral in this case but dispute whether
the remaining factors weigh for or against transfer. See
Pet. 34; Response Br. 11. We conclude that Apple has
demonstrated that the district court clearly abused its dis-
cretion in denying transfer. 2 We discuss the relevant pri-
vate and public interest factors in turn.
A. Relative ease of access to sources of proof
The district court concluded that the first private inter-
est factor—the relative ease of access to sources of proof—
“weighs slightly in favor of transfer.” S. App. 15; see also
S. App. 22. The court divided its analysis between the lo-
cation of witnesses and the location of relevant documents.
The district court determined that “the location of wit-
nesses weighs in favor of transfer,” because “Apple pro-
vides sufficient argument that most relevant party
witnesses are located in NDCA.” S. App. 21. Even after
taking potential third-party witnesses into account, the
2 The dissent states in its conclusion that Apple’s
“petition itself does not raise many of the arguments the
majority relies upon in its decision.” Dissent at 12. To the
extent this statement might be misconstrued as suggesting
that we have relied on arguments not advanced by Apple,
that is not the case. For the reasons explained above, we
have not applied waiver under the circumstances
here. Therefore, we have considered all the arguments in
the papers before us, including those in Apple’s reply brief
and in the sur-reply we permitted Uniloc to file.
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8 IN RE: APPLE INC.
district court concluded that “the greater balance of wit-
nesses . . . are located within NDCA.” S. App. 21–22.
The court concluded that “the location of relevant doc-
uments was neutral.” S. App. 22; see also S. App. 19. In
reaching this conclusion, the court credited “Uniloc’s argu-
ment concerning the physical location of its documents” in
a different Texas district as being closer to WDTX than
NDCA. S. App. 19. With respect to Apple, the court noted
that Apple’s campus in Austin, Texas houses revenue and
accounting documents that the court concluded might be
“relevant to ascertaining what damages Uniloc could argue
at trial and Uniloc’s inducement claim.” S. App. 20. The
court also highlighted that Apple’s Austin campus might
house instruction documents relevant to Uniloc’s induce-
ment claim. Id. The court further noted that Apple owns
content delivery network (“CDN”) servers in the Northern
District of Texas that might be relevant because Apple uses
the CDN “to store and distribute apps and other content of
the accused App Store.” Id. With respect to third parties
located within WDTX, the district court explained that
“Flextronics, the third-party manufacturer of an Accused
Product, may have relevant documents,” but that such doc-
uments may be “duplicative” of what Apple will itself pro-
duce. Id. For these reasons, the court found “that there
are documents relevant to this case located in this District,
such that Apple has not shown it is clearly more convenient
to transfer this case to NDCA.” Id.
The district court ultimately determined that because
the location of witnesses weighs in favor of transfer, but the
location of documents was neutral, the first private interest
factor “weighs slightly in favor of transfer.” S. App. 15; see
also S. App. 22.
The district court legally erred in considering wit-
nesses as “sources of proof” for purposes of the first private
interest factor. This factor relates to the ease of access to
non-witness evidence, such as documents and other physi-
cal evidence; the third private interest factor—the cost of
attendance for willing witnesses—relates to the conven-
ience of each forum to witnesses. See, e.g., Volkswagen II,
545 F.3d at 316–18; see also Duha v. Agrium, Inc., 448 F.3d
867, 876 (6th Cir. 2006) (“Access to non-witness sources of
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IN RE: APPLE INC. 9
proof, including documents in particular, is properly con-
sidered as part of the ease-of-access factor.”); In re Acer Am.
Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (analyzing
witness convenience under the third private interest factor
and documentary and physical evidence under the first pri-
vate interest factor). If witness convenience is considered
when assessing both the first and third private interest fac-
tors, witness convenience will be inappropriately counted
twice.
The district court also misapplied the law to the facts
in analyzing the location of relevant documents. Notably,
in its substantive analysis of this factor, the district court
failed to even mention Apple’s sources of proof in NDCA,
much less meaningfully compare them to proof in or nearer
to WDTX. Rather, the district court concluded that the fac-
tor was neutral merely because there existed some “docu-
ments relevant to this case located in the District, such
that Apple has not shown it is clearly more convenient to
transfer this case to NDCA.” S. App. 20. The district
court’s analysis confuses Apple’s burden of demonstrating
that the transferee venue is clearly more convenient with
the showing needed for a conclusion that a particular pri-
vate or public interest factor favors transfer. Indeed, a fac-
tor can favor transfer even if that factor is, standing alone,
insufficient to warrant transfer. See, e.g., Volkswagen II,
545 F.3d at 315; Action Indus., Inc. v. U.S. Fidelity & Guar.
Co., 358 F.3d 337, 340 (5th Cir. 2004). And although we
credit the district court’s determination that some relevant
documents are located in WDTX, the movant need not show
that all relevant documents are located in the transferee
venue to support a conclusion that the location of relevant
documents favors transfer. Nor is this factor neutral
merely because some sources of proof can be identified in
the district. The district court erred in holding otherwise.
Even to the extent the district court’s order can be in-
terpreted as attempting to conduct an appropriate compar-
ison of the ease of access to sources of proof in the two
forums, the court erred by overemphasizing the sources of
proof in or nearer to WDTX and failing to meaningfully
consider the sources of proof in NDCA. “In patent infringe-
ment cases, the bulk of the relevant evidence usually comes
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10 IN RE: APPLE INC.
from the accused infringer. Consequently, the place where
the defendant’s documents are kept weighs in favor of
transfer to that location.” In re Genentech, Inc., 566 F.3d
1338, 1345 (Fed. Cir. 2009). In his sworn declaration, Mr.
Jaynes stated that Apple stores a significant amount of rel-
evant information in NDCA, including the relevant source
code, Apple records relating to the research and design of
the accused products, and marketing, sales, and financial
information for the accused products. See, e.g., App. 115–
16 ¶¶ 23, 30; App. 119 ¶¶ 47, 48; App. 184; Pet. 29–30. Nei-
ther the district court nor Uniloc disputes that such records
are located in NDCA. Mr. Jaynes also stated in his sworn
declaration that he was unaware of any relevant docu-
ments in WDTX. App. 119 ¶ 49. Again, although we credit
the district court’s identification of some relevant proof lo-
cated in or nearer to WDTX, the district court erred by fail-
ing to meaningfully consider the wealth of important
information in NDCA.
While we note these errors, we need not reweigh the
evidence (or, rather, weigh Apple’s evidence in the first in-
stance), or otherwise disturb the district court’s ultimate
conclusion that the location of relevant documents is neu-
tral, because the remainder of the factors convince us that
transfer is appropriate and that the court clearly abused
its discretion in concluding otherwise.
B. The availability of compulsory process to secure the at-
tendance of witnesses
The district court concluded that the second private in-
terest factor—the availability of compulsory process to se-
cure the attendance of witnesses—was neutral in this case.
S. App. 23–24. On review, we see no reason to disturb the
district court’s conclusion on this factor.
C. The cost of attendance for willing witnesses
Next we turn to “an important factor, the convenience
for and cost of attendance of witnesses.” Genentech, 566
F.3d at 1343. In analyzing this factor, the Fifth Circuit
uses the “100-mile rule,” which provides that “[w]hen the
distance between an existing venue for trial of a matter and
a proposed venue under § 1404(a) is more than 100 miles,
the factor of inconvenience to witnesses increases in direct
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IN RE: APPLE INC. 11
relationship to the additional distance to be traveled.”
Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I, 371
F.3d at 204–05).
In Genentech, this court—applying Fifth Circuit law—
held that “the ‘100-mile’ rule should not be rigidly applied”
where “witnesses . . . will be required to travel a significant
distance no matter where they testify.” 566 F.3d at 1344.
Genentech specifically held that witnesses traveling from
Europe, Iowa, and the East Coast would be only “slightly
more inconvenienced by having to travel to California”
than to Texas. Id. at 1348. This sensible holding stems
from the observation that, regardless of the ultimately cho-
sen venue, such witnesses will be required to travel a sig-
nificant distance, will likely incur meal and lodging
expenses, and will likely incur time away from home. See
id. at 1344. Genentech’s interpretation of the 100-mile rule
is consistent with the Fifth Circuit’s reasoning underlying
the rule, which forcefully applies to witnesses who reside
near one of the two districts but not to the circumstances
presented here:
Additional distance means additional travel time;
additional travel time increases the probability for
meal and lodging expenses; and additional travel
time with overnight stays increases the time which
these fact witnesses must be away from their regu-
lar employment. Furthermore, the task of schedul-
ing fact witnesses so as to minimize the time when
they are removed from their regular work or home
responsibilities gets increasingly difficult and com-
plicated when the travel time from their home or
work site to the court facility is five or six hours
one-way as opposed to 30 minutes or an hour.
Volkswagen I, 371 F.3d at 205.
The district court concluded that this factor was neu-
tral. S. App. 26–27. The court divided its analysis into the
convenience to third-party witnesses and the convenience
to party witnesses.
The court determined that “the location of third-party
witnesses weighs against transfer.” S. App. 26; see also
S. App. 27 (concluding that “the inventors being located
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12 IN RE: APPLE INC.
closer to WDTX is a significant fact that weighs against
transfer” (emphasis added)). The court highlighted that
Uniloc identified three important third-party witnesses be-
lieved to reside in New York: the attorney who prosecuted
the asserted patent and the patent’s two named inventors.
S. App. 25, 27. The court reasoned that because the inven-
tors are likely to be two of the most important witnesses
called at trial, and because these inventors live “much
closer to WDTX than NDCA,” the location of third-party
witnesses weighed against transfer. S. App. 26–27. The
court also determined that “the location of party witnesses
slightly weighs in favor of transfer to NDCA.” S. App. 26.
In sum, the court concluded that the factor was neutral.
S. App. 26–27.
The district court misapplied the law to the facts of this
case by too rigidly applying the 100-mile rule. As a result,
the district court gave too much significance to the fact that
the inventors and patent prosecutor live closer to WDTX
than NDCA. Although it might be true that these individ-
uals will need to travel a greater distance to reach NDCA
than WDTX, and although a flight from New York to
WDTX might take a bit less time than from New York to
NDCA, in either instance these individuals will likely have
to leave home for an extended period of time and incur
travel, lodging, and related costs. As expressed in Genen-
tech, the 100-mile rule “should not be rigidly applied”
where witnesses “will be required to travel a significant
distance no matter where they testify.” 566 F.3d at 1344.
These witnesses will only be “slightly more inconvenienced
by having to travel to California” than to Texas. 3 See id. at
1348.
3 The dissent argues that our determination reflects
“mere disagreement with the district court[].” Dissent at 3.
We are puzzled as to how our conclusion—that the district
court misapplied the law by rigidly applying the law in a
manner inconsistent with Genentech—amounts to a mere
“disagreement” with the district court. We also do not un-
derstand how this conclusion disregards our standard of
review, considering that we are obligated to review for
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IN RE: APPLE INC. 13
In view of this misapplication of the law, and in view of
the district court’s findings that “most relevant party wit-
nesses are located in NDCA” and “it is likely that both Ap-
ple and Uniloc will each have one or more potential trial
witnesses from NDCA,” S. App. 27, this factor weighs at
least slightly in favor of transfer. See Volkswagen II, 545
F.3d at 317 (concluding that the district court “erred in ap-
plying this factor” when, contrary to the district court’s con-
clusion, the factor weighed in favor of transfer).
D. All other practical problems that make trial of a case
easy, expeditious, and inexpensive
The district court concluded that the fourth private in-
terest factor—all other practical problems that make trial
of a case easy, expeditious, and inexpensive—“weighs
heavily against transfer.” S. App. 30. The court reasoned
that “significant steps” had already been taken in the case.
S. App. 29. In particular, the court explained that the par-
ties exchanged infringement and invalidity contentions,
the parties “briefed and argued Markman claim terms,”
and the court held a Markman hearing and “issued a claim
construction order.” S. App. 29–30. Thus, wrote the court,
“NDCA would have to duplicate this Court’s efforts to con-
strue the patent unless it merely chose to accept what this
Court has already determined and entered.” S. App. 30.
The district court further remarked that because NDCA
has more pending civil cases than WDTX, a transfer to
NDCA, “a forum with a significantly higher level of case
clear misapplications of the law. E.g., Volkswagen II,
545 F.3d at 310. Only by giving district courts unbounded
discretion would we defer to this misapplication of law. Fi-
nally, we reject the dissent’s apparent invitation to discard
or otherwise ignore Genentech.
The dissent also appears to suggest that we have en-
tirely dispensed with the 100-mile rule and that we “seek[]
to eliminate the application of this rule to third-party wit-
nesses residing a plane ride away from both districts.” Dis-
sent at 4. To the contrary, we merely follow Genentech’s
sensible holding that the 100-mile rule should not be rig-
idly applied in circumstances such as these.
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14 IN RE: APPLE INC.
congestion,” would be “an act against judicial economy.”
S. App. 29–30.
Apple argued that this factor “weighs in favor of trans-
fer because of the twenty-one cases [presenting some over-
lapping issues] that have been transferred from districts in
Texas to NDCA.” S. App. 28. The district court was unper-
suaded, reasoning that many of those twenty-one cases
were stayed, the active cases lacked set trial dates, and the
cases related to different patents. S. App. 29–30. The court
explained that it “disagrees that a case should be trans-
ferred when another case with the same parties and only
some overlapping issues such as standing and subject mat-
ter jurisdiction are present in another district.” S. App. 30.
The district court legally erred in its analysis of this
factor. Aside from the service of preliminary infringement
contentions, see App. 32–34, all the “significant steps” that
had been taken by the court and parties in the case were
taken after Apple moved for transfer in November 2019, as
well as after Apple moved to stay the case in January 2020.
For example, the parties submitted Markman briefing in
February and March 2020. What’s more, most of the “sig-
nificant” steps the district court relied on were taken after
the district court’s May 12, 2020 hearing on the transfer
motion, during which the court explained that the motion
would be denied. In particular, after the transfer hearing
but before issuing a transfer order, the district court held a
Markman hearing and issued its claim construction order.
The court also held a discovery hearing and issued a corre-
sponding discovery order.
As stated previously, once a party files a transfer mo-
tion, disposition of that motion should take top priority in
the case. E.g., In re Horseshoe, 337 F.3d at 433; McDonnell
Douglas Corp., 429 F.2d at 30; In re Nintendo, 544 F. App’x
at 941; In re EMC, 501 F. App’x at 975. Setting aside the
questionable prioritization of other proceedings over the
pending transfer motion, the district court legally erred in
concluding that the merits-related steps it had taken
weighed heavily against transfer. A district court’s deci-
sion to give undue priority to the merits of a case over a
party’s transfer motion should not be counted against that
party in the venue transfer analysis.
Case: 20-135 Document: 55 Page: 15 Filed: 11/09/2020
IN RE: APPLE INC. 15
The district court also misapplied the law to the facts
of this case in concluding that judicial economy weighed
against transfer because NDCA has more pending cases
than WDTX. 4 “To the extent that court congestion matters,
what is important is the speed with which a case can come
to trial and be resolved.” See In re Ryze Claims Sols., LLC,
968 F.3d 701, 710 (7th Cir. 2020) (quoting In re Factor VIII
or IX Concentrate Blood Prods. Litig., 484 F.3d 951, 958
(7th Cir. 2007)); see also Gates Learjet Corp. v. Jensen, 743
F.2d 1325, 1337 (9th Cir. 1984) (concluding, in assessing
the impact of court congestion on the § 1404(a) analysis,
that “[t]he real issue is . . . whether a trial may be speedier
in another court because of its less crowded docket”).
As the district court acknowledged, NDCA and WDTX
have historically had comparable times to trial for civil
cases (25.9 months for NDCA versus 25.3 months for
WDTX), and, most relevantly, NDCA has historically had
a shorter time to trial for patent cases. See S. App. 30. Alt-
hough the district court noted that NDCA has more pend-
ing cases than WDTX, this fact is, without more, too
tenuously related to any differences in speed by which
these districts can bring cases to trial.
After accounting for the district court’s errors, we are
left with nothing relevant to this factor weighing against
transfer. However, there are judicial economy benefits on
the other side of the ledger: namely, as the district court
conceded, there are pending cases in NDCA with “some
overlapping issues.” S. App. 30. Even crediting (as we do)
each of the district court’s findings discounting the benefits
of transfer to NDCA on this basis (e.g., many cases in
NDCA are stayed and lack trial dates, and the cases differ
in many respects), it is beyond question that the ability to
transfer a case to a district with numerous cases involving
some overlapping issues weighs at least slightly in favor of
4 We question whether such considerations of “judi-
cial economy” might have been more appropriately as-
sessed under the first public interest factor—the
administrative difficulties flowing from court congestion.
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16 IN RE: APPLE INC.
such a transfer. Accordingly, this factor weighs at least
slightly in favor of transfer.
E. The administrative difficulties flowing from court con-
gestion
The district court concluded that the first public inter-
est factor—the administrative difficulties flowing from
court congestion—“weighs against transfer.” S. App. 30–
31. The court acknowledged that NDCA historically “has a
shorter time to trial for patent cases than WDTX.”
S. App. 30. But, the district court concluded, “because the
Court has already set the trial date in this case, the pro-
spective time from filing to trial is 18.4 months,” which is
“42.5 percent faster than previous WDTX cases” and faster
than the historical time to trial in NDCA. S. App. 31.
The district court misapplied the law to the facts of this
case by relying too heavily on the scheduled trial date. We
have previously explained that a court’s general ability to
set a fast-paced schedule is not particularly relevant to this
factor. See, e.g., In re Adobe Inc., 823 F. App’x 929, 932
(Fed. Cir. 2020). Indeed, a district court cannot merely set
an aggressive trial date and subsequently conclude, on that
basis alone, that other forums that historically do not re-
solve cases at such an aggressive pace are more congested
for venue transfer purposes. This is particularly true
where, like here, the forum itself has not historically re-
solved cases so quickly. Thus, this factor is neutral. 5
5 We further note that this factor frequently calls for
speculation. For example, scheduled trial dates are often
subject to change, and the district court’s anticipated time
to trial is significantly shorter than the district’s historical
time to trial. Because this factor often calls for speculation,
where “several relevant factors weigh in favor of transfer
and others are neutral, then the speed of the transferee dis-
trict court should not alone outweigh all of those other fac-
tors.” See Genentech, 566 F.3d at 1347.
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IN RE: APPLE INC. 17
F. The local interest in having localized interests decided
at home
The district court concluded that the second public in-
terest factor—the local interest in having localized inter-
ests decided at home—was “neutral in terms of transfer.”
S. App. 33. The court reasoned that “Apple has substantial
presences in both NDCA and WDTX, so both districts have
a significant interest in this case.” S. App. 32. In addition,
the court explained that “WDTX has a significant localized
interest because of the state and local tax benefits received
by and pledged to Apple to build a second campus in Aus-
tin.” Id. The district court concluded that “Uniloc’s pres-
ence in NDCA, but not in WDTX, weighs in favor of
transfer.” S. App. 33. The district court further remarked
that “Flextronics’ presence in this District weighs slightly
against transfer,” but the court ultimately concluded that
the factor was neutral irrespective of whether Flextronics
was considered. See S. App. 33 (concluding that this factor
is neutral “even if Flextronics was excluded from the
Court’s analysis”).
The district court misapplied the law to the facts of this
case in analyzing this factor. This factor most notably re-
gards not merely the parties’ significant connections to
each forum writ large, but rather the “significant connec-
tions between a particular venue and the events that gave
rise to a suit.” See In re Acer, 626 F.3d at 1256 (emphasis
added); see also Volkswagen II, 545 F.3d at 318 (explaining
that this factor pertains to a forum’s “connections with the
events that gave rise to th[e] suit”); In re HP Inc., No. 2020-
140, 2020 WL 5523561, at *1, *4 (Fed. Cir. Sept. 15, 2020)
(concluding that the district court correctly recognized that
the local interests factor weighed at least slightly in favor
of transfer from the Eastern District of Texas (“EDTX”) to
NDCA because “more of the events giving rise to this suit
appear to have occurred in [NDCA] than in [EDTX]—
specifically, the development of the accused products”).
The district court thus misapplied the law to the facts by
so heavily weighing Apple’s general contacts with the fo-
rum that are untethered to the lawsuit, such as Apple’s
general presence in WDTX and the state and local tax
Case: 20-135 Document: 55 Page: 18 Filed: 11/09/2020
18 IN RE: APPLE INC.
benefits it purportedly received from the district. 6 The dis-
trict court also misapplied the law to the facts by failing to
give weight to the “significant connections between
[NDCA] and the events that gave rise to a suit.” See In re
Acer, 626 F.3d at 1256 (emphasis added). Because of
Uniloc’s “presence in NDCA” and absence from WDTX; be-
cause the accused products were designed, developed, and
tested in NDCA; and because the lawsuit “calls into ques-
tion the work and reputation of several individuals resid-
ing” in NDCA, In re Hoffman-La Roche Inc., 587 F.3d 1333,
1336 (Fed. Cir. 2009), this factor weighs in favor of trans-
fer. 7
The dissent argues that our analysis of this factor is
“overblown.” Dissent at 8. It relies on the following facts
as both relevant to the local interests factor and weighing
against transfer: (1) Apple has a large presence, and is in-
creasing its presence, in WDTX; (2) Apple maintains CDN
servers in Dallas, Texas, and has “at least seven employees
in WDTX with duties concerning Apple’s CDN”; (3) Apple
6 In addition, to the extent the district court relies on
the fact that Apple’s presence in the district is expected to
increase in the future, neither Uniloc nor the district court
has explained how Apple’s future plans in WDTX relate in
any way to this lawsuit.
7 The dissent states that “[e]ven Apple’s petition did
not argue that it would be a clear abuse of discretion to find
this factor neutral.” Dissent at 10. We decline to engage
with this minor semantical point other than to say that Ap-
ple properly raised an argument that the district court
erred in concluding that this factor did not favor transfer.
See, e.g., Pet. at 34 (“The other two public-interest factors
either weigh in favor of transfer or, at the very least, cannot
weigh against it.”); id. (“The interest of the district where
the accused technology was designed and developed is self-
evidently stronger than that of a district with no tie to this
case.”); id. at 34–37 (generally arguing that NDCA’s inter-
est outweighs WDTX’s interest, and that “[e]ven accepting
every speculation by Uniloc, the local interest factor would
at most be neutral”); see also Reply Br. 19 (The local inter-
ests factor “should have weighed in favor of transfer.”).
Case: 20-135 Document: 55 Page: 19 Filed: 11/09/2020
IN RE: APPLE INC. 19
performs some relevant revenue reporting and accounting
activities in WDTX; and (4) Apple contracts with Flextron-
ics to manufacture one of the accused products in WDTX.
Dissent at 8–9.
We have already discussed Apple’s presence, and in-
creasing presence, in WDTX above but add that both the
district court and the dissent improperly conflate the re-
quirements for establishing venue under 28 U.S.C.
§ 1400(b) and the requirements for establishing transfer
under § 1404(a). “The statutory rights under [§] 1400(b)
. . . are independent of the convenience-based rights under
§ 1404(a).” In re Oath Holdings Inc., 908 F.3d 1301, 1306
(Fed. Cir. 2018). Indeed, the entire premise of a § 1404(a)
transfer motion is that a case, although brought in a proper
venue, should nevertheless be transferred for the conven-
ience of the parties. See, e.g., HollyAnne Corp. v. TFT, Inc.,
199 F.3d 1304, 1307 (Fed. Cir. 1999) (“Section 1404(a) al-
lows a court where venue is proper to transfer a case to a
more convenient forum.”).
As to the CDN servers in Dallas, Texas, it is unclear
why these servers are entitled to any weight, particularly
given that the district court neither mentioned nor gave
weight to these CDN servers in its analysis, and consider-
ing that the servers are located in the Northern District of
Texas, not WDTX.
As to Apple’s CDN employees in the district and the
fact that Apple performs some relevant financial activity in
WDTX, we are unclear as to why the dissent focuses exclu-
sively on these employees and this activity to the exclusion
of all other employees and activity. This is particularly
perplexing considering that the district court did not dis-
cuss these employees or activity at all in its analysis of this
factor, other than to merely acknowledge Uniloc’s argu-
ment that the “witnesses it identified” weigh against trans-
fer. S. App. 32. Moreover, the district court did not
otherwise provide any reason to give these employees and
Case: 20-135 Document: 55 Page: 20 Filed: 11/09/2020
20 IN RE: APPLE INC.
this activity weight above and beyond other relevant em-
ployees and activity. 8
Finally, as to Flextronics, as we note above, the district
court itself gave Flextronics little weight with respect to
this factor. We see no error in this conclusion.
III
We conclude our discussion by addressing two addi-
tional points from the dissent. First, on numerous occa-
sions, the dissent criticizes us for applying what it refers to
as “de novo” review. To the contrary, and as we have ex-
plained throughout the order, we properly reviewed the
district court’s order only for reliance on clearly erroneous
fact findings, erroneous conclusions of law, or misapplica-
tions of law to fact. See Volkswagen II, 545 F.3d at 310.
District courts have no discretion to make these kinds of
errors. See id. And when such errors accumulate to pro-
duce a patently erroneous result, as they have here, we are
obliged to act. See id.; see also id. at 318 (“[W]e hold that
the district court’s errors resulted in a patently erroneous
result.”). To the extent the dissent believes otherwise, it is
mistaken. A district court’s “exercise of its discretion is not
unbounded; that is, a court must exercise its discretion
within the bounds set by relevant statutes and relevant,
binding precedents.” Id. at 310.
Even more troubling, the dissent says that our order
will somehow invite mandamus petitions based “almost en-
tirely” on what it refers to as “ad hominem attacks on es-
teemed jurists.” Dissent at 3. That is a baseless and
counterproductive statement about our order. Notably, the
dissent supports its assertion with citations to Apple’s pe-
tition that the dissent contends constitute such attacks.
Our order, however, relies on Apple’s relevant arguments
and the record in the case, not on anything the dissent re-
fers to as “ad hominem attacks.” For this reason, we do not
8 And in any event, when discussing the private in-
terest factors, the district court concluded that most rele-
vant party witnesses resided in NDCA, which undercuts
the dissent’s analysis.
Case: 20-135 Document: 55 Page: 21 Filed: 11/09/2020
IN RE: APPLE INC. 21
understand how our order could reasonably be construed
as inviting such attacks. If anything, the fact that our or-
der completely ignores what the dissent calls “ad hominem
attacks” will discourage future litigants from wasting pre-
cious briefing space on such statements.
CONCLUSION
We have considered Uniloc’s remaining arguments but
find them unpersuasive. For the foregoing reasons, we
hold that “the district court’s errors resulted in a patently
erroneous result” and grant Apple’s mandamus petition.
See Volkswagen II, 545 F.3d at 318.
Accordingly,
IT IS ORDERED THAT:
(1) The petition is granted.
(2) The motion to file a sur-reply brief is granted.
(3) The motion to supplement the record is granted.
(4) The motion by ACT │ The App Association, The
Computer & Communications Industry Association, Uni-
fied Patents, LLC, and Roku, Inc. for leave to file a brief
amici curiae in support of Apple Inc. is granted.
FOR THE COURT
November 9, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
Case: 20-135 Document: 55 Page: 22 Filed: 11/09/2020
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: APPLE INC.,
Petitioner
______________________
2020-135
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:19-
cv-00532-ADA, Judge Alan D. Albright.
______________________
MOORE, Circuit Judge, dissenting.
Our review on a petition for a writ of mandamus is sup-
posed to be limited—we are to grant mandamus to over-
turn a transfer decision only when the district court has
clearly abused its discretion, “produc[ing] a patently erro-
neous result.” In re Volkswagen of Am., Inc., 545 F.3d 304,
310 (5th Cir. 2008) (Volkswagen II). “Our reluctance to in-
terfere is not merely a formality, but rather a longstanding
recognition that a trial judge has a superior opportunity to
familiarize himself or herself with the nature of the case
and the probable testimony at trial, and ultimately is bet-
ter able to dispose of these motions.” In re Vistaprint Ltd.,
628 F.3d 1342, 1346 (Fed. Cir. 2010). Our mandamus ju-
risdiction is not an invitation to exercise de novo dominion,
as the majority does here, over the district court’s individ-
ual fact findings and the balancing determination that
Congress has committed “to the sound discretion of the
trial court.” Id. at 1346; 28 U.S.C. § 1404(a). Nor is it an
invitation for us to criticize the way our district court
Case: 20-135 Document: 55 Page: 23 Filed: 11/09/2020
2 IN RE: APPLE INC.
colleagues generally manage their dockets, or as the major-
ity puts it, “barrel” ahead on the merits in any given case.
Maj. at 5.
The district court here thoroughly considered each con-
venience factor on the record before it. It acknowledged
that Apple had identified several party witnesses residing
in the Northern District of California. It ultimately found,
however, that Uniloc chose a venue in the district in which
Apple maintains a large campus employing thousands of
people, where one of the accused products is manufactured,
where third-party information and potential witnesses are
located, and which is convenient for potential witnesses
and sources of proof and which would not impose a signifi-
cant hardship on Apple. The district court therefore con-
cluded that Apple has not shown that it is clearly more
convenient for the parties and witnesses to transfer the in-
stant case to the Northern District of California. S.A. 34.
I do not agree with the majority in light of these facts that
the district court clearly abused its discretion in refusing
transfer.
We must recognize our limited role in this process—
there is no more deferential standard of review than clear
abuse of discretion. Under the clear abuse of discretion
standard, our role is to defer to the broad discretion of the
district court except as necessary to correct a usurpation of
judicial power or a patently erroneous result. Volkswagen
II, 545 F.3d at 312 (“But—and we stress—in no case will
we replace a district court’s exercise of discretion with our
own; we review only for clear abuses of discretion that pro-
duce patently erroneous results.”); In re Volkswagen of
Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (Volkswagen
III) (“A suggestion that the district court abused its discre-
tion, which might warrant reversal on a direct appeal, is
not a sufficient showing to justify mandamus relief.”); In re
Barnes & Noble, Inc., 743 F.3d 1381, 1383 (Fed. Cir. 2014)
(“Th[e] standard is an exacting one, requiring the peti-
tioner to establish that the district court’s decision
Case: 20-135 Document: 55 Page: 24 Filed: 11/09/2020
IN RE: APPLE INC. 3
amounted to a failure to meaningfully consider the merits
of the transfer motion.”). Rather than conducting this lim-
ited review, the majority usurps the district court’s role in
the transfer process, disregards our standard of review and
substitutes its judgment for that of the district court. I am
concerned that the majority’s blatant disregard for the dis-
trict court’s thorough fact findings and for our role in a pe-
tition for mandamus will invite further petitions based
almost entirely on ad hominem attacks on esteemed jurists
similar to those Apple wages here. See, e.g., Petition at 12;
id. at 14; id. at 14–15; id. at 15; id. at 16. First, parties
should be mindful that personal attacks against judges
such as those lodged in this case are not welcome, and at
least in my opinion completely unwarranted. Second, I am
not comfortable with the new role the majority has carved
out for our court, and I believe it is inconsistent with the
Fifth Circuit law that we are bound to follow.
I. The Cost of Attendance for Willing Witnesses
The majority’s mere disagreement with the district
court’s determination that the cost of attendance for willing
witnesses is neutral does not warrant the extraordinary
remedy of mandamus. The majority feigns confusion re-
garding the suggestion that it merely disagrees with the
district court’s weighing of this factor. Maj. at 12 n.3. But
it does not contest the district court’s finding that the loca-
tion of party witnesses only “slightly weighs in favor of
transfer.” S.A. 26. Nor does it address the court’s finding
that because “Apple is building its own hotel [in Austin],
the cost of attending a trial in the Austin division of WDTX
may also weigh against transfer.” S.A. 13. Nor does it con-
test, even under Genentech, the district court’s findings
that the Northern District of California would be more in-
convenient, time-consuming and costly for potential third-
party witnesses residing in New York and within the West-
ern District of Texas, or that these facts weigh against
transfer. S.A. at 26–27; Maj. at 12 (expressly acknowledg-
ing that the third-party witnesses will be “‘more
Case: 20-135 Document: 55 Page: 25 Filed: 11/09/2020
4 IN RE: APPLE INC.
inconvenienced by having to travel to California’ than to
Texas”). Try as it may to cast this as a “misapplication of
the law to facts,” the majority’s criticism of the district
court merely amounts to a belief that the district court
“gave too much significance” to the inconvenience of the
third-party witnesses. Maj. at 12. That criticism is incon-
sistent with our role in reviewing district court transfer de-
cisions on mandamus, where the district court’s decision
must be upheld unless it is “patently erroneous.”
To justify its appellate fact finding that the inconven-
ience to party witnesses outweighs the inconvenience to
third-party witnesses, the majority strains to identify a le-
gal error in the district court’s application of the Fifth Cir-
cuit’s 100-mile rule. The 100-mile rule is clear: “[w]hen the
distance between an existing venue for trial of a matter and
a proposed venue under § 1404(a) is more than 100 miles,
the factor of inconvenience to witnesses increases in direct
relationship to the additional distance to be traveled.”
Volkswagen II, 545 F.3d at 317. The majority seeks to elim-
inate the application of this rule to third-party witnesses
residing a plane ride away from both districts. But the
Fifth Circuit reaffirmed the 100-mile rule in 2008, clearly
contemplating air travel, and yet imposed no air-travel lim-
its on the rule. The majority contends that the district
court applied the 100-mile rule “in a manner inconsistent
with Genentech.” Maj. at 12 n.3. But as the majority con-
cedes, even in Genentech, which the majority cites for the
proposition that the 100-mile rule “should not be rigidly ap-
plied,” we applied the 100-mile rule to witnesses residing a
plane ride away from both the transferee and transferor
districts, and concluded that those third-party witnesses
would more be inconvenienced by traveling to the Northern
District of California than to the Eastern District of Texas.
566 F.3d 1338, 1348 (Fed. Cir. 2009); Maj. at 12. Contrary
to the majority’s suggestion, it is not a clear abuse of dis-
cretion to find the right facts, apply the right law and
simply weigh a factor differently than an appellate judge
Case: 20-135 Document: 55 Page: 26 Filed: 11/09/2020
IN RE: APPLE INC. 5
would. To the extent there is any dispute regarding the
extent of inconvenience faced by all willing witnesses, it
was Apple’s burden to prove that the transferee forum is
clearly more convenient. The district court found that Ap-
ple failed to carry that burden and we must defer to that
finding absent a clear abuse of discretion.
II. All Other Practical Problems That Make Trial of a
Case Easy, Expeditious and Inexpensive
The majority next criticizes the district court’s analysis
of the practical problems that make trial of a case easy, ex-
peditious and inexpensive. Maj. at 13–16. The district
court found that this factor weighed heavily in favor of
denying transfer. S.A. 30. I agree that the district court
erred in considering events (such as claim construction) oc-
curring after Apple filed its motion to transfer, therefore
the court’s conclusion that this factor weighs heavily
against transfer may be flawed. This error alone, however,
does not mean that this factor flips from heavily against
transfer to slightly in favor of transfer. Volkswagen II, 545
F.3d at 315 n.11 (emphasizing that “mandamus does not
reach all erroneous rulings of the district court”). The dis-
trict court considered factors of judicial economy separate
and apart from its own case progress such as trial dates,
case and docket congestion, and the similarity of other
pending lawsuits and concluded that these factors also “in-
dicate that keeping the case in WDTX would have a more
positive impact.” S.A. 29. Setting aside the district court’s
consideration of its own progress in the case occurring after
Apple filed its transfer motion, we must defer to the district
court’s finding that the separate judicial economy consider-
ations also weigh in favor of denying transfer. To the ex-
tent the majority believes the district court’s consideration
of events occurring after Apple filed its motion undermines
the entirety of the district court’s remaining fact findings,
the appropriate remedy would be to remand for reconsider-
ation. See, e.g., In re Nitro Fluids, No. 2020-142, Slip op.
at 8 (Fed. Cir. Oct. 28, 2020); In re Dropbox, 814 F. App’x
Case: 20-135 Document: 55 Page: 27 Filed: 11/09/2020
6 IN RE: APPLE INC.
598, 599–600 (Fed. Cir. 2020). It is inappropriate for the
majority to use a single legal error to justify resolving fac-
tual disputes and to reconsider this factor anew on a peti-
tion for mandamus.
The majority seizes on the fact that there are other
cases between Apple and Uniloc that have already been
transferred to the Northern District of California, and con-
cludes “it is beyond question that the ability to transfer a
case to a district with numerous cases involving some over-
lapping issues weighs at least slightly in favor of transfer.”
Maj. at 15–16. This statement of law that is apparently
beyond question (though without citation to anything) dis-
regards all the carefully considered facts regarding NDCA
and the cases themselves which the district court discussed
over many pages of its opinion. The district court deter-
mined that judicial economy does not weigh in favor of
transfer after carefully considering the transferred cases,
noting that “the asserted patent” and “the documents and
source code relevant to proving infringement” are “unique
to this case.” S.A. 29. Given the limited overlap in the
cases, the “lack of set trial dates and the number of stayed
cases” between the parties in the Northern District of Cal-
ifornia, and the congestion of the transferee docket, the
court found that keeping the case in the Western District
of Texas would have “a more positive impact.” Id. The dis-
trict court also noted that the other cases between these
parties were spread among various Northern District of
California judges, that the cases were not consolidated be-
fore the same trial judge, and the NDCA local rules would
not steer towards consolidation. S.A. 28–30. In short, the
court found the other NDCA cases significantly different
and widely dispersed. The majority barely mentions these
careful, thoughtful, thoroughly analyzed fact findings en
route to its conclusion that it will grant transfer.
Moreover, the court extensively analyzed the conges-
tion in both dockets, explaining that although WDTX his-
torically had only a slightly quicker median time from
Case: 20-135 Document: 55 Page: 28 Filed: 11/09/2020
IN RE: APPLE INC. 7
filing to disposition (25.3 versus 25.9 months), NDCA cur-
rently had three times the number of civil cases as WDTX.
S.A. 29–30. The court further held that its trial date for
this case would result in a shorter time to trial of 18.4
months compared with the average time to trial of approx-
imately 32 months for patent cases in NDCA. S.A. 31. The
majority finds no flaws with these fact findings (and claims
to credit them), but it nonetheless dismisses them out of
hand as insufficient to support the district court’s analysis.
The majority cites our decision in Adobe for the propo-
sition that the district court relied too heavily on the sched-
uled trial date. But in Adobe, we merely concluded that the
district court erred in giving dispositive weight to the dis-
trict court’s general ability to set a trial schedule. 823 F.
App’x 929, 932 (Fed. Cir. 2020). Contrary to the majority’s
suggestion, the court here did not conclude “on that basis
alone” that NDCA is more congested than WDTX. Maj. at
16. The court instead considered the relative congestion in
each district, number of pending cases, historical time to
trial for each district and the projected time to trial in the
instant case and found that there was an appreciable dif-
ference in court congestion. The majority does not refute
these thoughtful, thorough fact findings or point to any ev-
idence that NDCA would resolve this case faster than
WDTX. Nor does the majority suggest a district court
should not consider its time to trial. Instead, the majority
cites Genentech in an attempt to distract from its de novo
review. Maj. at 16 n.5. But as in Genentech, I do not see
how we can disturb the district court’s finding that judicial
economy favors denying transfer under a clear abuse of dis-
cretion standard. See Genentech, 566 F.3d at 1347 (“We do
not disturb the district court’s suggestion that it could dis-
pose of the case more quickly than if the case was trans-
ferred to the Northern District of California”). Setting
aside the district court’s own post-transfer motion case pro-
gress, the facts still support the court’s conclusion that this
factor favors denying transfer. This is true de novo (the
Case: 20-135 Document: 55 Page: 29 Filed: 11/09/2020
8 IN RE: APPLE INC.
standard the majority seems to be applying), and certainly
true under the actual standard—the clear abuse of discre-
tion standard.
III. Local Interests in Having Localized Interests De-
cided at Home
Lastly, the majority criticizes the district court’s weigh-
ing of the parties’ local interests. This criticism is over-
blown and inconsistent with our role as an appellate court.
As the district court found, even though Apple is headquar-
tered in Cupertino, California, it has a campus of more
than 8,000 employees in the Western District of Texas.
S.A. 4. Apple has committed to expanding this presence in
the district by adding 5,000 to 15,000 employees. S.A. 12.
It also has multiple retail stores in the district and is build-
ing its own local hotel. This is not the same local interest
as every other district where Apple happens to have a retail
store. Apple performs some of its revenue reporting and
accounting activities on its Austin campus and Uniloc al-
leges (and Apple does not dispute) that these accounting
activities process revenue tied to the alleged infringing
functionality. Apple maintains content delivery network
(CDN) servers in Dallas that store and distribute apps and
other content. S.A. 20. The district court found that Apple
has at least seven employees in WDTX with duties concern-
ing Apple’s CDN (related to the actual alleged infringe-
ment in this case).
The majority does not dispute these facts. Instead, the
majority contends that these facts should not be entitled to
any weight based on a specious claim that the district court
did not mention Apple’s CDN servers, engineers or its fi-
nancial activities “at all in its analysis of this factor.” Maj.
at 19. This is untrue. The district court referenced Apple’s
CDN servers, CDN engineers and Apple’s financial ac-
counting activities throughout its opinion:
Uniloc acknowledges the fact that Apple uses a con-
tent delivery network (CDN) to store and distribute
Case: 20-135 Document: 55 Page: 30 Filed: 11/09/2020
IN RE: APPLE INC. 9
apps and other content of the accused App Store.
Because there are Apple-owned CDN servers lo-
cated in Dallas, and at least seven Apple employees
in the District have job duties pertaining to Apple’s
CDN, Uniloc makes a reasonable argument that
these sources of proof are relevant and located in
this District.
S.A. 20. The district court then expressly refers to these
facts again in support of its conclusion that the local inter-
est factor is neutral:
Additionally, Uniloc contends that between the
witnesses it identified (e.g., Ms. Titus, seven em-
ployees in Austin with duties concerning Apple’s
CDN, and others) and the fact that Flextronics is
located in this District, this factor weighs against
transfer or is at worst, neutral.
S.A. 32.
The district court also found that Apple contracts with
Flextronics to manufacture one of the accused products in
Austin (and that Flextronics has hundreds of employees in
WDTX some of whom may be relevant witnesses). S.A. 33.
Far from giving “Flextronics little weight” as the majority
suggests, the district court found that Flextronics’ presence
in the district “also contribute[s] towards a higher localized
interest in this case” and weighs against transfer. 1 Id. Fi-
nally, Apple has multiple retail stores with employees and
customer support personnel to instruct and train users on
1 The district court’s conclusion that the local inter-
est factor “would be neutral in terms of transfer” absent
Flextronics’ presence does not justify the majority’s blatant
disregard for the fact that Flextronics manufactures an ac-
cused product and “has a few hundred employees in the
District—including some who may be potential witnesses.”
S.A. 33.
Case: 20-135 Document: 55 Page: 31 Filed: 11/09/2020
10 IN RE: APPLE INC.
how to use the accused functionality. Weighing these facts,
the district court determined that the local interest factor
was neutral. S.A. 32–33.
Contrary to the majority’s suggestion, the district court
did not “fail[] to give weight” to the connections between
this case and NDCA. Maj. at 18. The district court ex-
pressly acknowledged that Apple alleges that the software
was designed and developed in NDCA. S.A. 31–32. And,
as the majority concedes, the district court addressed the
“relevant party witnesses residing in NDCA,” and nonethe-
less concluded that this factor was neutral. That there are
facts on both sides does not mean we grant mandamus.
The majority may not agree with the district court’s fact
findings or may have weighed them differently, but it is
impossible to say (and the majority never does) that the
district court clearly abused its discretion in its local inter-
est analysis.
And while the majority would rather not “engage with
th[e] minor semantical point” of what the parties actually
argue, even Apple’s petition did not argue that it would be
a clear abuse of discretion to find this factor neutral. Maj.
at 18 n.7; Petition at 36 (“the local interest factor would at
most be neutral”); see also Petition at 35 (“Any finding that
the local-interest factor weighs against transfer would re-
quire legal error.”). It wasn’t until its reply brief when Ap-
ple for the first time alleged that this factor weighs in favor
of transfer. I do not see how the majority can conclude that
a district court clearly abused its discretion in finding this
factor neutral where even the moving party argued that
the facts support neutrality.
The majority dismisses Apple’s and its manufacturer’s
significant presence in the district. Neither this court nor
the Fifth Circuit has held that an accused infringer’s gen-
eral presence in a district is irrelevant to the district’s local
interest in resolving the case. See, e.g., In re Acer Am.
Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (considering
Case: 20-135 Document: 55 Page: 32 Filed: 11/09/2020
IN RE: APPLE INC. 11
as relevant to the local interest factor the fact that one of
the parties alleged to have caused harm resided in the
transferor district). Moreover, the manufacture of the ac-
cused product in the district and the maintenance of a cam-
pus that may house documents related to the development
of the accused products is indisputably relevant to the in-
stant case. And to the extent there is a dispute regarding
whether Apple or Flextronics have may have information
or witnesses in Austin relevant to this case, that is a fact-
intensive matter left to the discretion of the district court,
not the appellate court. See In re Apple Inc., 818 F. App’x.
1001, 1004 (Fed. Cir. June 16, 2020) (“Whether individuals
or organizations may have relevant information . . . are
fact-intensive matters often subject to reasonable dis-
pute. . . . Those determinations are generally entrusted to
the discretion of the district court.”).
It is not for us to criticize the district court’s weighing
of these facts. It is Apple’s burden to prove that the local
interest factor weighs in favor of transfer. On this record,
the district court did not clearly abuse its discretion in find-
ing that Apple failed to meet that burden.
CONCLUSION
I do not believe the district court’s denial of Apple’s
transfer motion reflects a clear abuse of discretion. The
majority identifies a “misapplication of law to fact” in
nearly every factor the district court analyzed. But looking
beyond this label, which the Fifth Circuit notably has never
relied on as a basis for granting a petition for mandamus,
the majority’s criticism amounts merely to a disagreement
with the district court’s weighing of its thorough fact find-
ings. See, e.g., Maj. at 12 (“The district court misapplied
the law to the facts of this case” and “gave too much signif-
icance to the fact that the inventors and patent prosecutor
live closer to WDTX than NDCA.”); id. at 16 (“The district
court misapplied the law to the facts of this case by relying
too heavily on the scheduled trial date.”); id. at 17 (“The
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12 IN RE: APPLE INC.
district court thus misapplied the law to the facts by so
heavily weighing Apple’s general contacts with the fo-
rum.”); id. at 18 (“The district court also misapplied the law
to the facts by failing to give weight” to the connections be-
tween NDCA and the suit.); id. at 19–20 (“Moreover, the
district court did not otherwise provide any reason to give
these employees and this activity weight above and beyond
other relevant employees and activity.”). Though the dis-
trict court erred in considering events that occurred after
the transfer motion was filed, the court cannot fairly be
charged with having failed to “meaningfully consider the
merits of the transfer motion.” See Barnes & Noble, 743
F.3d at 1383. Nor can we say that the district court’s well-
reasoned decision amounts to a “a clear abuse of discretion
or usurpation of judicial power.” In re Nintendo Co., 589
F.3d 1194, 1197 (Fed. Cir. 2009). The majority has simply
substituted its judgment that transfer should be ordered
for that of the district court. At most, the alleged errors
identified by the majority would support a motion for re-
consideration; they do not warrant the extraordinary rem-
edy of mandamus. It is particularly troubling to grant
mandamus here where the petition itself does not raise
many of the arguments the majority relies upon in its deci-
sion. Under the proper standard of review, I believe the
only patently erroneous result here is the one reached by
the majority. I dissent from that result. Though the stand-
ard of review is not de novo, because the majority has ap-
proached the case as though it is, let me add—I agree with
the district court and I would have denied transfer de novo.