Case: 23-120 Document: 16 Page: 1 Filed: 03/06/2023
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2023-120
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:22-
cv-00149-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Before DYK, REYNA, and CHEN, Circuit Judges.
PER CURIAM.
ORDER
Apple Inc. petitions this court for a writ of mandamus
directing the United States District Court for the Western
District of Texas to promptly rule on Apple’s motion to
transfer and to stay other proceedings until transfer has
been resolved. Apple also moves this court to stay the pro-
ceedings pending consideration of its petition.
In February 2022, SpaceTime3D, Inc. brought this suit
against Apple in the Western District of Texas, Waco Divi-
sion. In July 2022, Apple moved to transfer the case within
the Western District to Austin. That motion was fully
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2 IN RE: APPLE INC.
briefed by the parties and has been pending on the district
court’s docket since November 7, 2022. On November 14,
2022, fact discovery was opened. Based on an agreement
by the parties, the district court scheduled a claim con-
struction hearing for November 17, 2022. The day before
the hearing, however, Apple moved to stay that hearing
and all other proceedings until the district court’s decision
on Apple’s pending motion to transfer. In light of Apple’s
motion, the trial court deferred claim construction.
On January 30, 2023, the district court denied Apple’s
stay motion. The court acknowledged the requirement un-
der governing precedent to prioritize timely resolution of a
motion for inter-district transfer but took the view that “it
does not have to stay the proceedings or decide whether to
transfer the case intra district until closer to trial since this
Court has the power to retain this case on its trial docket
regardless of whether the Court grants transfer or not.”
Appx274. More particularly, the court found that Apple
had failed to show good cause for a stay of the Markman
hearing, noting that “Apple waited to file this Motion to
stay until only hours before the . . . scheduled Markman
hearing—after the Court had already expended its re-
sources to issue preliminary constructions and after the
parties had already prepared for the hearing.” Appx280–
81. It likewise found that Apple had failed to show the bal-
ance of interests favored a stay of discovery deadlines.
“The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Court for N. Dist. of Cal., 426 U.S. 394, 402 (1976). Accord-
ingly, “three conditions must be satisfied before it may is-
sue.” Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380
(2004). The petitioner must show a “clear and indisputa-
ble” right to relief. Id. at 381 (quoting Kerr, 426 U.S. at
403). The petitioner must show a “lack [of] adequate alter-
native means to obtain the relief” it seeks. Mallard v. U.S.
Dist. Ct. for S.D. Iowa, 490 U.S. 296, 309 (1989); see
Cheney, 542 U.S. at 380. And, “even if the first two
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IN RE: APPLE INC. 3
prerequisites have been met, the issuing court, in the exer-
cise of its discretion, must be satisfied that the writ is ap-
propriate under the circumstances.” Cheney, 542 U.S. at
381.
Regional circuit law—here, the law of the United
States Court of Appeals for the Fifth Circuit—governs our
review of procedural matters pertaining to transfer and
stay requests not unique to patent law. See In re TS Tech
USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); Biodex
Corp. v. Loredan Biomed., Inc., 946 F.2d 850, 856 (Fed. Cir.
1991). Under Fifth Circuit law, a trial court must prioritize
transfer motions over substantive proceedings. In re
Horseshoe Ent., 337 F.3d 429, 433 (5th Cir. 2003) (“[I]n our
view disposition of that [transfer] motion should have
taken a top priority in the handling of this case by
the . . . District Court.”); In re Apple Inc., 979 F.3d 1332,
1337 (Fed. Cir. 2020) (“Apple I”) (“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.”).
To that end, we have, in applying Fifth Circuit law in
cases from trial courts in that circuit, granted mandamus
“to correct a clearly arbitrary refusal to act on a longstand-
ing pending transfer motion,” In re Apple Inc., 52 F.4th
1360, 1361 (Fed. Cir. 2022) (“Apple II”). In Apple II, as
here, the trial court’s management of the case would have
substantially delayed resolution of a transfer motion until
close to trial while requiring the parties to litigate the mer-
its in a potentially inconvenient forum. Id. at 1362. We
postponed substantive proceedings until after the trial
court considered the motion. We explained that “precedent
entitles parties to have their [transfer] motions prioritized”
and concluded, based on the circumstances, that it “was a
clear abuse of discretion to require the parties to expend
additional party and court resources litigating the substan-
tive matters of the case while Apple’s motion to transfer
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4 IN RE: APPLE INC.
unnecessarily lingers on the docket,” id. We think this
precedent is equally applicable here.
In deviating from this precedent, the trial court relied
on a statement in an unpublished, non-precedential deci-
sion, Sundell v. Cisco Sys. Inc., 111 F.3d 892, 1997 WL
156824 (5th Cir. 1997), which noted that “[u]nder 28 U.S.C.
§ 1404(b), the district court has broad discretion in deciding
whether to transfer a civil action from a division in which
it is pending to any other division in the same district.” Id.
at *1. But Sundell does not suggest discretion in the prior-
itization of the decision of transfer motions. In recognizing
leeway in deciding whether to ultimately disturb the plain-
tiff’s choice of forum, Sundell did not suggest, let alone
hold, that a trial court can arbitrarily refuse to act on the
transfer request. Indeed, Fifth Circuit precedent entitles
parties to have their transfer motions prioritized. See
Horseshoe, 337 F.3d at 433. We do not understand the
Fifth Circuit to require only inter-district transfer motions
be prioritized to the exclusion of intra-district transfer mo-
tions. *
* In concluding otherwise, the district court judge in-
dicated that he “has the power to retain this case on [his]
docket regardless of whether the Court grants transfer or
not.” Appx274. But 28 U.S.C. § 137(a) provides that it is
“[t]he chief judge of the district court [who] . . . shall divide
the business and assign the cases.” And the Chief Judge of
the Western District has issued a standing order providing
for assignment of the civil docket in the Austin Division of
the Western District to two other district court judges.
Appx369–70, Amended Order Assigning the Business of
the Court (W.D. Tex. Dec. 16, 2022). Although the district
court judge here suggested that one of those other judges
might re-assign the case back to him, such speculation is
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IN RE: APPLE INC. 5
Given the demanding standard on mandamus, we can-
not say that it was a clear abuse of discretion under the
specific circumstances of this case for the district court to
conclude that Apple was not entitled to a stay of the Mark-
man hearing or the discovery deadlines because of its delay
in moving for a stay. However, for the reasons provided
above, we grant Apple’s petition for mandamus to the ex-
tent that the district court is directed to timely decide the
transfer motion before proceeding to further substantive
matters beyond the Markman hearing.
Accordingly,
IT IS ORDERED THAT:
(1) The interim stay of the Markman hearing is lifted.
(2) The petition and motion are granted to the limited
extent that the district court is directed to decide the trans-
fer motion before proceeding to further substantive mat-
ters beyond the Markman hearing.
FOR THE COURT
March 6, 2023 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
not a basis to disregard precedent directing that transfer
motions be prioritized.