Case: 24-111 Document: 18 Page: 1 Filed: 03/18/2024
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re APPLE INC.,
Petitioner
______________________
2024-111
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 1:23-
cv-00324-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
Judges.
MOORE, Chief Judge.
ORDER
Apple Inc. petitions for a writ of mandamus to direct
the United States District Court for the Western District of
Texas to transfer this patent infringement case to the
United States District Court for the Northern District of
California. Carbyne Biometrics, LLC opposes. For the fol-
lowing reasons, we deny the petition.
Carbyne filed suit against Apple in the Austin Division
of the Western District of Texas, asserting six patents:
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2 IN RE APPLE INC.
three “Authentication Patents” 1 asserted against Apple de-
vices utilizing “Secure Enclave” and three “Fraud Reduc-
tion Patents” 2 asserted generally against Apple devices
using the Apple Cash platform.
In July 2023, Apple moved pursuant to 28 U.S.C.
§ 1404(a) to transfer the case to the Northern District of
California. That motion was fully briefed in November
2023. On December 12, 2023, the district court announced
that it was going to deny the motion and that a written de-
cision would be forthcoming. See Dkt. No. 69. On January
31, 2024, having received no written decision, Apple filed
this mandamus petition asking to direct the district court
to stay proceedings until the written decision was issued or
to transfer the case to the Northern District of California.
On February 6, 2024, this court issued an order directing a
response. ECF No. 6.
On February 12, 2024, the district court issued its writ-
ten decision denying transfer. It began by finding that Car-
byne’s infringement contentions implicate hardware and
server-side aspects of the accused products. SAppx3. It
then analyzed the traditional transfer factors, finding that
the willing witness factor weighed against transfer based
largely on five Apple employees in Austin knowledgeable
about those aspects of the accused products. It also found
that the compulsory process factor slightly weighed against
transfer. It weighed the remaining factors as neutral. On
balance, the court concluded that Apple had failed to
demonstrate that the Northern District of California was
clearly more convenient and therefore denied the transfer
motion.
1 U.S. Patent Nos. 10,929,512; 11,475,105; and
11,514,138.
2 U.S. Patent Nos. 9,972,010; 10,713,656; and
11,526,886.
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IN RE APPLE INC. 3
Mandamus is “reserved for extraordinary situations,”
Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
271, 289 (1988) (citation omitted). To obtain a writ of man-
damus, a petitioner must show that: (1) it has a clear and
indisputable right to relief; (2) it does not have any other
adequate method of obtaining relief; and (3) the “writ is ap-
propriate under the circumstances.” Cheney v. U.S. Dist.
Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation omitted).
When evaluating transfer decisions under 28 U.S.C.
§ 1404(a), we generally apply the law of the regional circuit
in which the district court sits, here the United States
Court of Appeals for the Fifth Circuit. In re TS Tech USA
Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Applying Fifth
Circuit law, we may grant mandamus only for “a clear
abuse of discretion such that refusing transfer produced a
patently erroneous result.” Id. (cleaned up). Apple’s peti-
tion fails to make that showing here. 3
After considering the transfer factors, the district court
concluded that Apple failed to establish good cause for
transfer under the governing Fifth Circuit standards. It
found that Apple maintains significant relevant operations
in Austin, where some of the accused products are manu-
factured and were developed; the cost of attending trial in
Austin would be less for the inventor residing in New York;
sources of proof were created and maintained in both fo-
rums; third-party employees named in the complaint and
identified as potential witnesses also reside in Austin; and
Apple failed to identify any specific third-party individuals
in Northern California who were unwilling to testify. Ap-
ple has not provided sufficiently compelling reasons to con-
clude that the district court clearly abused its discretion in
making these fact-specific determinations, which plausibly
3 In light of the written transfer decision, Apple’s re-
quest for a stay pending that decision is moot.
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4 IN RE APPLE INC.
support the district court’s denial of Apple’s transfer mo-
tion.
The parties primarily dispute the willing witness fac-
tor, which largely turns on the district court’s finding that
the accused products’ hardware and server-side functional-
ity are potentially relevant to the infringement issues. Ap-
ple attempted to persuade the trial court that its employees
in Austin do not possess relevant and material information
because this case is limited to just the software features of
the products. But the district court, after considering the
scope of the asserted claims and information in possession
of these Apple employees, reached a contrary conclusion.
Mindful of the deferential standard of review on manda-
mus and that fact-intensive matters are principally en-
trusted to the district court, see In re Vistaprint Ltd., 628
F.3d 1342, 1346 (Fed. Cir. 2010), we are not prepared to
say that the district court’s assessment on this factor was
so clearly wrong that it produced a patently erroneous re-
sult. 4
Accordingly,
4 Apple also argues that it identified additional un-
named team members in the Northern District, which were
not counted. But we are not prepared to say that the dis-
trict court clearly erred in refusing to credit these unnamed
team members when presented with little information as
to what, if any, relevant and material information they
may possess.
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IN RE APPLE INC. 5
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
March 18, 2024
Date