Federal Circuit Mandamus Opinion in In re: Apple: Majority Opinion
Yesterday the Federal Circuit issued an order granting a mandamus petition filed by Apple regarding a patent case proceeding in the Waco Division. The order effectively reverses Judge Albright’s prior denial of Apple’s motion for a convenience transfer to the N.D. Cal. under 28 U.S.C. § 1404(a), based on the Federal Circuit’s “conclu[sion] that Apple has demonstrated that the district court clearly abused its discretion in denying transfer.” (We’ve previously examined convenience transfers before Judge Albright on the blog.)
By way of brief procedural background, the timeline leading up to the In re: Apple opinion is as follows:
|9/10/19||Plaintiff Uniloc 2017 LLC files its complaint against Apple|
|11/12/19||Apple files its motion to change venue under Section 1404(a)|
|1/9/20||Apple moves to stay case (including claim construction) pending transfer motion|
|1/12/20||District Court denies motion to stay|
|2/20/20||Transfer motion briefing closes|
|5/12/20||Oral argument on transfer motion, which the District Court indicted on the record it would deny|
|5/15/20||Markman hearing before District Court|
|6/15/20||Apple petitions Federal Circuit for writ of mandamus|
|6/22/20||District Court issues written order memorializing denial of motion to transfer|
|7/13/20||Mandamus petition briefing closes|
|9/22/20||Oral argument on mandamus petition before Federal Circuit|
As you can see in the above chronology, Apple filed its mandamus petition before the District Court had issued a formal written opinion. Following issuance of the written opinion, Apple addressed certain aspects of that opinion in its reply brief. The Federal Circuit panel majority “exercise[d] [its] discretion to not apply waiver” to Apple’s arguments raised for the first time on reply, “because doing so would be unfair under the circumstances” and also noted that it had “grant[ed] Uniloc’s motion to file a surreply.”
The order is a fairly hefty opinion for a mandamus proceeding, including a spirited dissent from Judge Moore. So we’re breaking it down into two posts. We’ll cover the majority opinion below, and the dissent over here.
The panel majority’s assessment of the Fifth Circuit Volkswagen transfer factors was as follows:
- Private-Interest Factor #1—the relative ease of access to sources of proof: The District Court had ruled that this factor weighed slightly in favor of transfer. The Federal Circuit panel majority ruled both that “[t]he district court legally erred in considering witnesses as ‘sources of proof’ for purposes of the first private interest factor,” and that “[t]he district court also misapplied the law to the facts in analyzing the location of relevant documents,” because “although we credit the district court’s identification of some relevant proof located in or nearer to WDTX, the district court erred by failing to meaningfully consider the wealth of important information in NDCA.” The Federal Circuit panel majority did not “disturb the district court’s ultimate conclusion that the location of relevant documents is neutral, because the remainder of the factors convince us that transfer is appropriate.”
- Private-Interest Factor #2—the availability of compulsory process to secure the attendance of witnesses: The District Court had ruled that this factor was neutral. The Federal Circuit panel majority “[saw] no reason to disturb the district court’s conclusion on this factor.”
- Private-Interest Factor #3—the cost of attendance for willing witnesses: The District Court had ruled that this factor was neutral—noting that the convenience of third-party witnesses weighed against transfer, and the convenience of party witnesses weighed in favor of transfer. The Federal Circuit panel majority ruled that, as to third-party witnesses, the District Court misapplied the law to the facts and “gave too much significance to the fact that the [NY-domiciled] inventors and patent prosecutor live closer to WDTX than NDCA,” ruling that “these witnesses will only be ‘slightly more inconvenienced by having to travel to California’ than to Texas.” The Federal Circuit panel majority concluded that “in view of the district court’s findings that ‘most relevant party witnesses are located in NDCA’ and ‘it is likely that both Apple and Uniloc will each have one or more potential trial witnesses from NDCA,’ this factor weighs at least slightly in favor of transfer.”
- Private-Interest Factor #4—all other practical problems that make trial of a case easy, expeditious and inexpensive: This factor constituted the most significant section of the Federal Circuit panel majority’s analysis. The District Court had ruled that this factor weighed against transfer. The Federal Circuit panel majority first ruled that “[t]he district court legally erred in its analysis of this factor” because “[a]side from the service of preliminary infringement contentions, all the ‘significant steps’ that had been taken by the court and parties in the case [most notably claim construction] were taken after Apple moved for transfer in November 2019, as well as after Apple moved to stay the case in January 2020.” (Emphases in original.) The Federal Circuit panel majority cited prior Circuit Court authority (Federal Circuit and otherwise) to the effect that “once a party files a transfer motion, disposition of that motion should take top priority in the case,” and stated that “[a] district court’s decision 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.” The Federal Circuit panel majority also concluded that “[t]he 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” on the ground that “this fact is, without more, too tenuously related to any differences in speed by which these districts can bring cases to trial.” The Federal Circuit panel majority further noted that “there are pending cases in NDCA with ‘some overlapping issues’” and that “the ability to transfer a case to a district with numerous cases involving some overlapping issues weighs at least slightly in favor of … transfer.”
- Public-Interest Factor #1—the administrative difficulties flowing from court congestion: The District Court had ruled that this factor weighed against transfer. The Federal Circuit panel majority ruled that the District Court “misapplied the law to the facts of this case by relying too heavily on the scheduled trial date,” and that “a court’s general ability to set a fast-paced schedule is not particularly relevant to this factor,” ultimately finding this factor was neutral.
- Public-Interest Factor #2—the local interest in having localized interests decided at home: The District Court had ruled that this factor was neutral. The Federal Circuit panel majority ruled that the District Court “misapplied the law to the facts of this case” by “so heavily weighing Apple’s general contacts with the forum that are untethered to the lawsuit, such as Apple’s general presence in WDTX and the state and local tax benefits it purportedly received from the district” and by “failing to give weight to the ‘significant connections between [NDCA] and the events that gave rise to a suit.’” (Emphasis in original.) The Federal Circuit panel majority concluded that “[b]ecause of [plaintiff] Uniloc’s ‘presence in NDCA’ and absence from WDTX; because the accused products were designed, developed, and tested in NDCA; and because the lawsuit ‘calls into question the work and reputation of several individuals residing’ in NDCA, this factor weighs in favor of transfer.” (Citation omitted.)
- Public-Interest Factor #3—the familiarity of the forum with the law that will govern the case: The parties agreed this factor was neutral; it was not addressed by the Federal Circuit panel majority.
- Public-Interest Factor #4—the avoidance of unnecessary problems of conflict of laws [or in] the application of foreign law: The parties agreed this factor was neutral; it was not addressed by the Federal Circuit panel majority.
We’ll end our analysis for now; further thoughts will likely be forthcoming ASAP this week or next.
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