Case: 22-128 Document: 18 Page: 1 Filed: 04/22/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2022-128
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:21-
cv-00165-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before DYK, REYNA, and CHEN, Circuit Judges.
DYK, Circuit Judge.
ORDER
Apple Inc. petitions for a writ of mandamus directing
the United States District Court for the Western District of
Texas to transfer this case to the United States District
Court for the Northern District of California. CPC Patent
Technologies PTY Ltd. opposes. Because the district court
clearly abused its discretion in evaluating the transfer mo-
tion, we grant the petition and direct transfer.
Case: 22-128 Document: 18 Page: 2 Filed: 04/22/2022
2 IN RE: APPLE INC.
BACKGROUND
CPC filed this suit in the Waco Division of the Western
District of Texas, alleging that Apple’s mobile phones, tab-
lets, and computing products equipped with Touch ID, Face
ID, or Apple Card features infringe three of CPC’s patents
relating to biometric security. It is undisputed that CPC,
an Australian-based investment company, does not have
any meaningful connection to the Western District of Texas
and that the inventor of the asserted patents also resides
outside of the United States.
Apple moved to transfer under 28 U.S.C. § 1404(a) to
the Northern District of California. Apple noted that its
employees responsible for the design, development, and en-
gineering of the accused functionality reside in the North-
ern District of California, where Apple maintains its
headquarters, or outside of Western Texas, in the Czech
Republic and Florida; its employees most knowledgeable
about the marketing, licensing, and financial issues relat-
ing to the accused products were also located in the North-
ern District of California; and, to its knowledge, no Apple
employee involved in the development of the accused func-
tionality worked from Western Texas.
On February 8, 2022, the district court denied Apple’s
motion. After finding that the threshold requirement for
transfer under § 1404(a) that the action “might have been
brought” in the Northern District of California was satis-
fied, the district court analyzed the private and public in-
terest factors that traditionally govern transfer
determinations. The district court determined that the fac-
tor concerning the convenience of willing witnesses slightly
favored transfer. Conversely, the district court determined
that the factor accounting for the availability of compulsory
process weighed strongly against transfer and that the
court congestion and practical problems factors also
weighed against transfer based on its ability to quickly
reach trial, Appx15, and CPC having another pending suit
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IN RE: APPLE INC. 3
alleging infringement in the Western District of Texas
against a different defendant. The remaining transfer fac-
tors, the court found, favored neither forum.
Notably, the district court recognized that Apple had
identified seven witnesses in the Northern District of Cali-
fornia, but the district court found that inconvenience was
mostly counterbalanced by the presence of two Apple em-
ployees in Austin that CPC had insisted as having relevant
information and an Apple party witness in Florida the
court said would “find it about twice as inconvenient to
travel to NDCA than to WDTX because Texas sits halfway
from Florida to California.” Appx11–12. In addition, the
court relied on its ability to compel the third party “Mac
Pro manufacturer in Austin to attend trial,” finding that
product is “properly accused and its assembly relevant to
infringement” and that the product’s manufacturer “is
likely to testify about technical information or assembly in-
formation that is relevant to infringement and production
information that may affect damages.” Appx9–10. It also
relied on that manufacturer as a basis for weighing the lo-
cal interest and sources of proof factors as neutral. Appx17
(“The third-party Mac Pro manufacturer in Austin will
want to know if it is making a patented product . . . .”);
Appx8 (noting the Mac Pro manufacturer “is likely to have
electronic documents, such as technical documents needed
to assemble the accused product”).
On balance, the court determined that Apple had
“failed to meet the burden of proving that NDCA is ‘clearly
more convenient’ than WDTX,” and thus, this case should
“proceed in WDTX, where Apple employs thousands of peo-
ple, where Apple is building a 15,000 employee campus,
where a third-party manufactures the accused product,
where two of Apple’s witnesses reside, where other wit-
nesses find it more convenient to travel to, where the par-
ties can reach trial sooner, and where a related case is
pending.” Appx17. For those reasons, the court denied Ap-
ple’s transfer motion. This petition followed.
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4 IN RE: APPLE INC.
DISCUSSION
Our review is governed by the law of the regional cir-
cuit, which in this case is the United States Court of Ap-
peals for the Fifth Circuit. See In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008). Fifth Circuit law pro-
vides that a motion to transfer venue pursuant to section
1404(a) “should be granted if ‘the movant demonstrates
that the transferee venue is clearly more convenient.’” In
re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (quoting
In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir.
2008) (en banc)). The Fifth Circuit generally reviews a dis-
trict court’s decision to deny transfer for an abuse of discre-
tion. See Volkswagen, 545 F.3d at 310. A district court
abuses its discretion “if it based its ruling on an erroneous
view of the law or on a clearly erroneous assessment of the
evidence.” Cooter & Gell v. Hartmarx Corp., 496 U.S. 384,
405 (1990). “Errors of judgment in weighing relevant fac-
tors are also a ground for finding an abuse of discretion.”
In re Nitro Fluids L.L.C., 978 F.3d 1308, 1310 (Fed. Cir.
2020) (citing TS Tech, 551 F.3d at 1320). “We may grant
mandamus when the denial of transfer was a clear abuse
of discretion under governing legal standards.” Nitro, 978
F.3d at 1311 (citations omitted). Applying those standards,
we agree that Apple has shown clear entitlement to trans-
fer to the Northern District of California here.
The district court noted that “[t]he most important fac-
tor in the transfer analysis is the convenience of the wit-
nesses.” Appx10 (citing In re Genentech, Inc., 566 F.3d
1338, 1336, 1342 (Fed. Cir. 2009)). And the court acknowl-
edged that Apple identified a significant number of wit-
nesses residing in Northern California, including an Apple
employee who worked at the company that created the
Touch ID technology acquired by Apple, Appx127; two em-
ployees who work on the research, design, and develop-
ment of the accused features, Appx127–28; two employees
who work on the marketing and promotion of the accused
features, Appx129–30; an employee knowledgeable about
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IN RE: APPLE INC. 5
Apple’s licensing of intellectual property, Appx130; and an
employee knowledgeable about sales and financial infor-
mation concerning the accused products, id.
The court, however, found that this factor tilted only
slightly in favor of transfer. We agree with Apple that this
conclusion was erroneous. The court relied on two Apple
employees in Austin that CPC indicated it may wish to call
as potential witnesses. But it is far from clear that either
of those employees has relevant or material information.
One of the employees identified as being knowledgeable
about Touch ID said during his deposition that the internal
Apple authentication application he worked on was en-
tirely different from the functionality that appears to be
the focus of the infringement allegations. Appx329–30.
The other employee was found to be a potential witness
only on the basis that he had “knowledge about surveys of
customer satisfaction with” Apple Card. Appx3. And even
without second guessing the district court’s conclusion in
these respects, this factor still strongly favors transfer
where the transferee venue would be more convenient for
the witnesses overall.
The court also pointed to an Apple witness in Florida
who the court concluded would find it “about twice as in-
convenient” to attend trial in the Northern District of Cal-
ifornia than in the Western District of Texas. Appx11. The
sole basis for the district court’s conclusion was that “Texas
sits halfway from Florida to California.” Appx11–12. But
we have repeatedly rejected the view that “the convenience
to the witnesses should be weighed purely on the basis of
the distance the witnesses would be required to travel,
even though they would have to be away from home for an
extended period whether or not the case was transferred.”
In re Pandora Media, LLC, No. 2021-172, 2021 WL
4772805, at *6 (Fed. Cir. Oct. 13, 2021) (collecting cases);
In re Apple Inc., 979 F.3d 1332, 1341–42 (Fed. Cir. 2020).
Here too, while trial in Northern California will require the
Apple employee in Florida to spend significant time away
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6 IN RE: APPLE INC.
from home, trial in Western Texas will undoubtedly impose
a similar burden on the Apple employee. The willing wit-
ness factor accordingly weighs firmly in favor of transfer.
The district court also clearly erred in its determina-
tion that the compulsory process factor strongly weighed
against transfer based on its ability to compel the testi-
mony of a third-party manufacturer of an accused product.
Critical to the district court’s conclusion was its finding
that the “Mac Pro” was “properly accused and its assembly
relevant to infringement.” Appx9–10. That finding, how-
ever, is entirely unsupported by the record. It is undis-
puted that CPC has not accused the Mac Pro of
infringement in this litigation. Indeed, Apple states with-
out challenge from CPC that the Mac Pro is not even com-
patible with Touch ID, Face ID, or Apple Card.
The court’s confusion appears to have been caused by
CPC incorrectly alleging, in its opposition to Apple’s trans-
fer motion, that Apple issued a press release indicating
that the MacBook Pro would be manufactured in Austin. *
However, the press release attached to CPC’s filing clearly
stated that the Mac Pro, not the accused MacBook Pro,
would be produced in Austin. Apple states without dispute
that the accused MacBook Pro is not manufactured in Aus-
tin. Because no other party was identified as relevant un-
der the compulsory process factor, this court agrees with
* CPC argues that the confusion actually stems from
statements made by one of Apple’s employees during a dep-
osition. The employee accidentally stated “Mac Pro” when
he meant to say “MacBook Pro” in one statement. Apple
points out, however, that this meaning was made clear one
question later when he correctly described the MacBook
Pro. Reply at 5. Apple also noted that the parties dis-
cussed the error in a later meet-and-confer. Id. Regardless
of the source of confusion, it remains clear that the district
court’s conclusion is not supported by the record.
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IN RE: APPLE INC. 7
Apple that there is no basis here to conclude that the factor
weighs against transfer.
The district court similarly erred in its analysis of the
local interest factor. The district court correctly recognized
that the Northern District of California had a local interest
in resolving this dispute because research, design, and de-
velopment of the accused functionality occurred in that dis-
trict. Appx16; see Apple, 979 F.3d at 1345. Despite this
finding, the court held that the local interest factor
weighed in favor of neither of the two forums. But it failed
to provide any plausible basis for that conclusion. The dis-
trict court first connected this case to the Mac Pro manu-
facturer, see Appx17, but, as noted above, that
manufacturer has no connection to this case.
The court’s second and only other stated rationale for
its decision was Apple’s “thousands of employees in Aus-
tin,” id., and echoing CPC’s argument, the fact that “adver-
tising and sale of the accused products occurs in WDTX,”
Appx16. But those activities are immaterial to the local
interest analysis in this case. We have held that a party’s
“general presence in a particular district” does not alone
“give that district a special interest in the case.” In re
Google LLC, No. 2021-171, 2021 WL 4592280, at *5 (Fed.
Cir. Oct. 6, 2021); see also In re Juniper Networks, Inc.,
14 F.4th 1313, 1320 (Fed. Cir. 2021); Apple, 979 F.3d at
1345. Rather, “what is required is that there be ‘significant
connections between a particular venue and the events that
gave rise to a suit.’” Google, 2021 WL 4592280, at *5 (cita-
tions omitted). Here, no such connection between the
Western District of Texas and the events giving rise to this
infringement suit is reflected by the record. We have also
explained that “the sale of an accused product offered na-
tionwide does not give rise to a substantial interest in any
single venue.” In re Hoffmann-La Roche Inc., 587 F.3d
1333, 1338 (Fed. Cir. 2009). Thus, the local interest factor
favors transfer.
Case: 22-128 Document: 18 Page: 8 Filed: 04/22/2022
8 IN RE: APPLE INC.
The access to sources of proof factor should likewise
have been weighed in favor of transfer, not neutral, as the
district court found it. Apple submitted a sworn declara-
tion stating that “working files, electronic documents, and
any hard copy documents concerning the Accused Features
reside on local computers and/or servers either located in
or around” the Northern District of California, the Czech
Republic, and Florida, where Apple’s employees who are
knowledgeable about the design and development of those
features work. Appx125. Apple also informed the court
that relevant source code associated with the accused func-
tionality was developed at these Apple offices and that
“this source code is controlled on a need-to-know basis.”
Appx126. Apple also informed the court that its documents
concerning the marketing, licensing, and financial records
related to the accused products would be in the Northern
District of California. See Appx129. Apple added that it
was unaware of any relevant source code or documents be-
ing created or stored from its offices in Western Texas. See
Appx125–26, Appx129.
Aside from erroneously relying on the presence of po-
tential evidence from the Mac Pro manufacturer (irrele-
vant to this case as we addressed above), the district court
faulted Apple for not clearly showing that the bulk of the
documentary evidence was located or stored in the North-
ern District of California. Appx7–8. Even so, with nothing
on the other side of the ledger in the Western District of
Texas, the Northern District of California would still have
a comparative advantage with regard to the ease of access
to the sources of proof located within that district. See Ju-
niper, 14 F.4th at 1321 (“We have held that the fact that
some evidence is stored in places other than either the
transferor or the transferee forum does not weigh against
transfer.”); In re Toyota Motor Corp., 747 F.3d 1338, 1340
(Fed. Cir. 2014) (“The comparison between the transferor
and transferee forums is not altered by the presence of
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IN RE: APPLE INC. 9
other witnesses and documents in places outside both fo-
rums.”).
The district court also supported its decision to weigh
the sources of proof factor as neutral based on its view that
Apple had the capability of accessing its own electronic doc-
uments from its Austin offices. Appx8. But we rejected
very similar reasoning in In re Apple Inc., No. 2021-181,
2021 WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021). There,
despite Apple having identified source code to which access
was restricted to employees working at its Northern Dis-
trict of California headquarters and no potential evidence
in the Western District of Texas, the district court found
the factor neutral based on its view that Apple could give
employees in Austin the proper credentials to access the
information from Apple’s offices in Austin. In finding the
court erred, we explained that “[t]he district court should
have compared the ease of access in the Western District of
Texas relative to the ease of access in the Northern District
of California.” Id. (citing Juniper, 14 F.4th at 1321). The
district court here similarly failed to ask the correct ques-
tion, and in doing so, improperly discounted the relative
convenience of the transferee venue with regard to sources
of proof. The court therefore erred in not weighing this fac-
tor in favor of transfer.
When we turn to the remaining factors, we see no
sound basis for keeping this case in the Western District of
Texas. We have “rejected as a general proposition that the
mere co-pendency of infringement suits in a particular dis-
trict automatically tips the balance in the non-movant’s fa-
vor.” In re NetScout Sys., Inc., No. 2021-173, 2021 WL
4771756, at *5 (Fed. Cir. Oct. 13, 2021); see In re Samsung
Elecs. Co., Ltd., 2 F.4th 1371, 1379–80 (Fed. Cir. 2021); In
re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013). Here,
the district court appears to have overstated the concern
about waste of judicial resources and risk of inconsistent
results in light of CPC’s co-pending suit in the Western Dis-
trict of Texas. That suit involves a different defendant with
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10 IN RE: APPLE INC.
different hardware and different software and thus is likely
to involve significantly different discovery and evidence.
See Samsung, 2 F.4th at 1379–80. Thus, any “incremental
gains in keeping [this] case[] in the Western District of
Texas” are insufficient “to justify overriding the inconven-
ience to the parties and witnesses” if the case were trans-
ferred to the Northern District of California. Id. at 1380.
Finally, there is no sound basis for the district court
here to premise its denial of transfer on the court conges-
tion factor. We have held that when other relevant factors
weigh in favor of transfer or are neutral, “then the speed of
the transferee district court should not alone outweigh all
of those other factors.” Genentech, 566 F.3d at 1347. Under
this relevant precedent, we conclude that the evidence
cited by the district court to support its conclusion that the
Western District of Texas could schedule a trial sooner
than if trial was held in the Northern District of California
is insufficient to warrant keeping this case in plaintiff’s
chosen forum, given the striking imbalance favoring trans-
fer based on the convenience factors and lack of any cited
reason for why a more rapid disposition of the case that
might be available in the Western District of Texas would
be important enough to be assigned significant weight in
the analysis.
Accordingly,
IT IS ORDERED THAT:
The petition is granted. The district court’s February
8, 2022 order is vacated, and the district court is directed
to transfer this matter to the United States District Court
for the Northern District of California.
FOR THE COURT
April 22, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court