In re Apple-Judge Moore’s Dissent

On November 9, 2020, the Federal Circuit issued an order granting Apple’s mandamus petition to transfer its case against Uniloc to the Northern District of California (“NDCA”). We previously discussed the panel majority opinion, so this post will focus on Judge Judge Kimberly A. Moore’s dissenting opinion – which contained some flavorful rhetoric.

 Judge Moore opens her opinion with several comments leading up to her conclusion that the majority exercised “de novo dominion” over Judge Albright’s individual fact findings. She repeatedly emphasized the clear abuse of discretion standard of review, maintaining that the majority “usurp[ed] the district court’s role in the transfer process” and “carved out” a new role for the Circuit – deciding 1404 mandamus petitions on the merits. Finally, Judge Moore wrapped up her opening comments with chastising Apple that “ad hominem attacks on esteemed jurists” are “not welcome, and at least in my opinion completely unwarranted.” 

Judge Moore otherwise engages with the panel majority’s findings primarily with respect to three of the Volkswagen factors, as follows:

The Cost of Attendance for Willing Witnesses

As her opinion’s opening line states, Judge Moore took issue with the panel majority’s criticism of Judge Albright’s factual findings under this factor: “The majority’s mere disagreement with the district court’s determination that the cost of attendance for willing witnesses is neutral does not warrant the extraordinary remedy of mandamus.” Specifically, Judge Moore pointed out that the majority agreed with (or at least did not contest) several of the Judge Albright’s findings, including: Apple’s construction of a hotel for its employees reduces the cost of attending trial in Austin; the NDCA would be more inconvenient, time-consuming and costly for potential third parties residing in New York and within the WDTX; and that the location of party witnesses weighs only slightly in favor of transfer. Thus, Judge Moore argues that such “mere disagreement” is “inconsistent with our role in reviewing district court transfer decisions on mandamus, where the district court’s decision must be upheld unless it is patently erroneous.”

Judge Moore also took issue with the panel majority’s criticism of Judge Albright’s application of the Fifth Circuit’s “100-mile rule.” For those of you who are a little rusty on the 100-mile rule, the 100-mile rule is: “[w]hen the distance between an existing venue for trial of a matter and a proposed venue under section 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled.” Volkswagen II, 545 F.3d at 317. The panel majority found error when Judge Albright “too rigidly” applied the 100-mile rule to witnesses residing outside the NDCA and WDTX, as the distance between the location of the witnesses was closer to the WDTX than the NDCA. However, as Judge Moore points out, prior case law applied the 100-mile rule to witnesses residing a plane ride away from both the transferee and transferor district, and found that those third-party witnesses would be more inconvenienced by traveling to the NDCA than to the Eastern District of Texas. In re Genentech, 566 F.3d 1338, 1348 (Fed. Cir. 2009). Thus, Judge Moore concluded that the “majority seeks to eliminate the application of [the 100-mile rule] to third-party witnesses residing a plane ride away from both districts.” 

All Other Practical Problems That Make Trial of a Case Easy, Expeditious and Inexpensive

Judge Moore agreed with the panel majority that “the district court erred in considering events (such as claim construction) occurring after Apple filed its motion to transfer . . . .” However, “this error alone . . . does not mean that this factor flips from heavily against transfer to slightly in favor of transfer.” In short, Judge Moore argued that the reviewing court must defer to the district court’s finding that the separate judicial economy considerations weigh in favor of denying transfer and that to the extent the district court’s consideration of events occurring after Apple filed its motion, the appropriate remedy would be to remand for reconsideration. 

Judge Moore’s seemingly largest disagreement with the panel majority is the majority’s conclusion that Judge Albright relied too heavily on the scheduled trial date. She argues “[c]ontrary to the majority’s suggestion, the court here did not conclude ‘on that basis alone’ that NDCA is more congested than WDTX.” Instead, Judge Albright considered the relative congestion in each district, number of pending cases, historical time to trial for each district and the projected time to trial in the instant case and found that there was an appreciable difference in court congestion. However, Judge Moore points out that “the majority does not refute these thoughtful, thorough fact findings” and argues that the majority cites Genentech in an attempt to “distract from its de novo review.” 

Local Interests in Having Localized Interests Decided at Home

Judge Moore continues with her forceful rhetoric in discussing this factor and states that the panel majority’s “criticism is overblown and inconsistent with our role as an appellate court.” In short, Judge Moore disagreed with the majority that Judge Albright failed to give weight to the connections between this case and the NDCA, and noted the significant local presence of Apple in the WDTX and that such presence was “not the same local interest as every other district where Apple happens to have a retail store.” 

Judge Moore also addresses the panel majority’s comment concerning Apple’s apparent change of tone regarding this factor. Initially, Apple argued that the local interest factor was neutral, but later in its reply brief, Apple argued that the local interest factor weighs in favor of transfer. Judge Moore commented that “I do not see how the majority can conclude that a district court clearly abused its discretion in finding this factor neutral where even the moving party argued that the facts support neutrality.” 

In concluding her opinion, Judge Moore again criticized the majority for not adhering to the property standard of review. She concludes with the following: 

“Under the proper standard of review, I believe the only patently erroneous result here is the one reached by the majority. I dissent from that result. Though the standard of review is not de novo, because the majority has approached the case as though it is, let me add – I agree with the district court and I would have denied transfer de novo.”