Case: 21-187 Document: 23 Page: 1 Filed: 10/01/2021
1 NOTE: This order is nonprecedential.
2
3 United States Court of Appeals
4 for the Federal Circuit
5 ______________________
6
7 In re: APPLE INC.,
8 Petitioner
9 ______________________
10
11 2021-187
12 ______________________
13
14 On Petition for Writ of Mandamus to the United States
15 District Court for the Western District of Texas in No. 6:21-
16 cv-00926-ADA, Judge Alan D. Albright.
17 ______________________
18
19 ON PETITION AND MOTION
20 ______________________
21 Before DYK, PROST, and HUGHES, Circuit Judges.
22 PER CURIAM.
23 ORDER
24 Apple Inc. petitions for a writ of mandamus directing
25 the United States District Court for the Western District of
26 Texas to vacate its order transferring this case from the
27 Austin Division of the Western District of Texas to the
28 Waco Division and to stay that order pending disposition of
29 the petition. Because the district court cites no statutory
30 authority for its re-transfer and because Austin remains
31 the more convenient forum, we grant the petition and di-
32 rect the district court to vacate its order.
Case: 21-187 Document: 23 Page: 2 Filed: 10/01/2021
2 IN RE: APPLE INC.
1 I
2 Fintiv, Inc. filed the underlying patent-infringement
3 suit against Apple in the Waco Division of the Western Dis-
4 trict of Texas in December 2018. In September 2019, the
5 district court judge granted-in-part Apple’s motion to
6 transfer venue of the action to the Austin Division of the
7 Western District of Texas, where the same judge continued
8 to preside over the case. Although the district court denied
9 transfer to Apple’s preferred destination in Northern Cali-
10 fornia, the district court agreed with Apple that the Austin
11 Division of the Western District of Texas was, at the time,
12 clearly more convenient for trial.
13 The district court scheduled the trial to begin in Austin
14 on October 4, 2021. But on September 8, 2021, one month
15 before trial, the district court ordered the case re-trans-
16 ferred back to Waco. In its order, the district court ex-
17 plained only that “[j]ury trials in the Austin courthouse
18 ha[ve] largely been suspended” due to the COVID-19 pan-
19 demic, that “it remains uncertain whether the Austin
20 courthouse will be open for jury trial in the foreseeable fu-
21 ture,” and that such intervening events “frustrated the
22 original purpose of transferring this action to the Austin
23 Division.” Order at 1–2, Fintiv, Inc. v. Apple Inc., 6:21-cv-
24 00926-ADA (W.D. Tex. Sept. 8, 2021), ECF No. 386 (“Re-
25 Transfer Order”).
26 Apple now petitions this court for a writ of mandamus
27 directing the district court to vacate the re-transfer order
28 and to stay that order pending disposition of the petition.
29 Fintiv opposes both requests. We have jurisdiction under
30 28 U.S.C. §§ 1651 and 1295.
31 II
32 Our review here is governed by Fifth Circuit law. See
33 In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir.
34 2008). When a writ of mandamus is sought, we review a
35 decision to transfer for a clear abuse of discretion. See In re
Case: 21-187 Document: 23 Page: 3 Filed: 10/01/2021
IN RE: APPLE INC. 3
1 Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008)
2 (en banc).
3 In In re Intel Corp., we explained that the only author-
4 ity for an intra-district re-transfer without full consent of
5 the parties is 28 U.S.C. § 1404(a). 841 F. App’x 192, 193–95
6 (Fed. Cir. 2020). Under § 1404(a), a district court “should
7 not re-transfer except under the most impelling and unu-
8 sual circumstances,” such as unanticipated “post-transfer
9 events [that] frustrate the original purpose for transfer.” In
10 re Cragar Indus., Inc., 706 F.2d 503, 505 (5th Cir. 1983)
11 (cleaned up). Further, a re-transfer analysis should be
12 “based on the traditional factors bearing on a § 1404(a)
13 analysis” and “should take into account the reasons of con-
14 venience that caused the earlier transfer.” Intel, 841 F.
15 App’x at 195.
16 Here, the district court inexplicably failed to perform
17 that analysis, giving “the parties and reviewing courts no
18 way of understanding how the court reached its conclusion
19 and providing no assurance that it was the result of consci-
20 entious legal analysis.” In re Lloyd’s Reg. N. Am., Inc.,
21 780 F.3d 283, 291 (5th Cir. 2015). The district court artic-
22 ulated no authority in its order to re-transfer, explaining
23 only that “it remains uncertain whether the Austin court-
24 house will be open for jury trial in the foreseeable future.”
25 Re-Transfer Order at 1. Not only is this explanation mini-
26 mal, but it is also not supported by any analysis of the tra-
27 ditional § 1404(a) factors. Nor is there any indication that
28 the Austin courthouse is currently closed for trial. The dis-
29 trict court even acknowledged that some civil trials are pro-
30 ceeding in Austin and that there is a possibility of “being
31 able to use a courtroom in Austin” and “mov[ing] forward
32 with [the trial] in Austin.” Appx175–77.
33 Fintiv suggests that its position statement before the
34 district court sufficiently explains the district court’s rul-
35 ing. But “[a]n explanation must be generated by the court,
36 not inferred by the appellate court from the submissions of
Case: 21-187 Document: 23 Page: 4 Filed: 10/01/2021
4 IN RE: APPLE INC.
1 the parties,” and a “[c]ontrary rule would require us to
2 guess the basis for the decision without guidance, essen-
3 tially reducing us to the role of replacing the district court’s
4 discretion with our own.” Lloyd’s Reg., 780 F.3d at 290–91.
5 To be sure, the district court gestures to our decision in
6 Intel by stating that “the intervening COVID-19 pandemic
7 has frustrated the original purpose of transferring this ac-
8 tion to the Austin Division.” Re-Transfer Order at 1–2. But
9 the purpose of transfer under § 1404(a) is “for the conven-
10 ience of parties and witnesses” and the “interest of justice.”
11 28 U.S.C. § 1404(a). In originally granting Apple’s motion
12 to transfer venue to the Austin Division, the district court
13 performed the required analysis and found that Austin was
14 clearly the more convenient venue. Order Denying Defend-
15 ant Apple’s Motion to Transfer Venue at 4–17, Fintiv, Inc.
16 v. Apple Inc., 6:21-cv-00926-ADA (W.D. Tex. Sept. 10,
17 2019), ECF No. 73. It relied in large part on the fact that
18 there are no sources of proof in the Waco Division and that
19 the parties and a relevant third party have a significant
20 presence in Austin, but not in Waco. Id. at 17. We approved
21 this reasoning in our order denying Apple’s previous peti-
22 tion for mandamus seeking transfer to the Northern Dis-
23 trict of California. See In re Apple Inc., No. 2020-104 (Fed.
24 Cir. Dec. 20, 2019).
25 On the record before us, it is far from clear that the
26 intervening COVID-19 pandemic has frustrated any of the
27 original purposes for transferring this case from Waco to
28 Austin under § 1404(a). Relevant witnesses and evidence
29 remain in Austin, and the parties continue to maintain
30 their presences there. Pet. Opening Br. at 20. Furthermore,
31 the parties have prepared for trial in Austin. And Apple’s
32 employee witnesses will all be traveling from California,
33 from which there are no direct flights to Waco. Pet. Reply
34 at 9. So far as the briefing before this court reflects, the
35 only factor that may have changed as a result of the
36 COVID-19 pandemic is the public interest “court-conges-
37 tion” factor—which seems, at most, to slightly weigh in
Case: 21-187 Document: 23 Page: 5 Filed: 10/01/2021
IN RE: APPLE INC. 5
1 favor of re-transfer. But as we have said previously, this
2 factor is the “most speculative” of the factors bearing on
3 transfer and “should not alone outweigh all . . . other fac-
4 tors.” In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir.
5 2009). This is particularly so here, given the district court’s
6 acknowledgement that there is a possibility of “mov[ing]
7 forward with [the trial] in Austin.” Also, court congestion
8 was not a factor relied on by the district court as a basis for
9 transferring the case to Austin.
10 Under these circumstances, where the district court
11 has failed to perform the requisite § 1404(a) analysis and
12 where Austin remains the more convenient forum, the dis-
13 trict court’s decision to re-transfer this case back to the
14 Waco Division amounts to a clear abuse of discretion.
15 Accordingly,
16 IT IS ORDERED THAT:
17 (1) The petition for a writ of mandamus is granted. The
18 district court’s September 8, 2021 order re-transferring the
19 trial from Austin to Waco is vacated and we remand with
20 instructions that this action shall proceed in the Austin Di-
21 vision of the United States District Court for the Western
22 District of Texas.
23 (2) The motion to stay is denied as moot.
FOR THE COURT
October 01, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
24
25 s31