Case: 21-187 Document: 2-1 Page: 1 Filed: 09/16/2021
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`Miscellaneous Docket No. ___
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`
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`IN RE APPLE INC.,
`
`Petitioner.
`
`
`
`
`On Petition for Writ of Mandamus to the
`United States District Court for the
`Western District of Texas
`No. 6:21-cv-00926-ADA, Hon. Alan D Albright
`
`
`APPLE INC.’S PETITION FOR
`WRIT OF MANDAMUS
`
`
`
`Sean C. Cunningham
`Erin Gibson
`DLA PIPER LLP
`401 B Street, Suite 1700
`San Diego, CA 92101
`
`John M. Guaragna
`DLA PIPER LLP
`303 Colorado Street, Suite 3000
`Austin, TX 78701
`
`Mark D. Fowler
`DLA PIPER LLP
`2000 University Avenue
`East Palo Alto, CA 94303
`
`Melanie L. Bostwick
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Edmund R. Hirschfeld
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`Counsel for Petitioner
`
`
`
`
`
`

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`Case: 21-187 Document: 2-1 Page: 2 Filed: 09/16/2021
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`FORM 9. Certificate of Interest
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`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
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`CERTIFICATE OF INTEREST
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`
`Form 9 (p. 1)
`July 2020
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`Case Number
`Short Case Caption
`Filing Party/Entity
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`In re Apple Inc.
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`Apple Inc.
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`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`
`
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`
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`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
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`09/15/2021
`Date: _________________
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`
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`Signature:
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`/s/ Melanie L. Bostwick
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`
`
`Name:
`
`Melanie L. Bostwick
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`
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`
`
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`i
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`

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`Case: 21-187 Document: 2-1 Page: 3 Filed: 09/16/2021
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`FORM 9. Certificate of Interest
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Form 9 (p. 2)
`July 2020
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`(cid:1798) None/Not Applicable (cid:1798) None/Not Applicable
`
`✔
`
`✔
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`Apple Inc.
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`Additional pages attached
`
`ii
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`Case: 21-187 Document: 2-1 Page: 4 Filed: 09/16/2021
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
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`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`See Attached
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`None/Not Applicable
`
`Additional pages attached
`
`✔
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`iii
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`Case: 21-187 Document: 2-1 Page: 5 Filed: 09/16/2021
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`Attachment
`
`4. Legal Representatives. List all law firms, partners, and associates
`that (a)appeared for the entities in the originating court or agency or (b)
`are expected to appear in this court for the entities. Do not include
`those who have already entered an appearance in this court. Fed. Cir.
`R. 47.4(a)(4).
`Orrick, Herrington & Sutcliffe LLP: Claudia Wilson Frost, Travis
`Jensen, Tyler S. Miller, Jeffrey T. Quilici
`DLA Piper LLP: Paul R. Steadman, Peter Maggiore, Stephanie Lim,
`Zachary Loney
`Kelly Hart & Hallman LLP: John R. Johnson, J. Stephen Ravel
`Gillam & Smith, LLP: Harry Lee Gillam, Jr.
`
`iv
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`

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`Case: 21-187 Document: 2-1 Page: 6 Filed: 09/16/2021
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`TABLE OF CONTENTS
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`Page
`
`CERTIFICATE OF INTEREST ................................................................... i
`TABLE OF AUTHORITIES ...................................................................... vii
`INTRODUCTION ........................................................................................ 1
`RELIEF SOUGHT ....................................................................................... 4
`ISSUE PRESENTED ................................................................................... 4
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY ................ 5
`Fintiv Sues Apple In The Waco Division Of The Western
`District Of Texas. ...................................................................... 5
`With Fintiv’s Consent, The District Court Transfers The
`Litigation To The Austin Division Of The Western
`District Of Texas. ...................................................................... 6
`For Two Years, The Parties Litigate And Plan For Trial In
`Austin. ........................................................................................ 8
`On The Eve Of Trial, The District Court Sua Sponte Re-
`Transfers The Litigation To The Waco Division Of The
`Western District Of Texas. ....................................................... 9
`REASONS FOR ISSUING THE WRIT .................................................... 12
`I.
`The District Court Clearly Abused Its Discretion In
`Sua Sponte Re-Transferring This Case To Waco
`Without Any Lawful Basis. .................................................... 14
`A.
`As this Court has already held, the district court’s
`decision to transfer venue without citing a valid
`legal basis for doing so is a clear abuse of
`discretion. ....................................................................... 14
`Even if the district court had properly applied
`§ 1404(a), its decision would be a clear abuse of
`discretion. ....................................................................... 18
`Apple Has No Adequate Alternative Means For Relief. ...... 26
`II.
`III. Mandamus Is Appropriate Under The Circumstances. ....... 27
`
`B.
`
`v
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`

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`Case: 21-187 Document: 2-1 Page: 7 Filed: 09/16/2021
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`CONCLUSION ........................................................................................... 28
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`vi
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`

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`Case: 21-187 Document: 2-1 Page: 8 Filed: 09/16/2021
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ......................................................... 24
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ................................................. 13, 24, 27
`Cheney v. U.S. Dist. Ct.,
`542 U.S. 367 (2004) ............................................................................... 12
`Chicago, R.I. & P.R. Co. v. Igoe,
`212 F.2d 378 (7th Cir. 1954) ................................................................. 27
`Christianson v. Colt Indus. Operating Corp.,
`486 U.S. 800 (1988) ............................................................................... 18
`In re Cragar Indus., Inc.,
`706 F.2d 503 (5th Cir. 1983) ................................................. 3, 18, 21, 23
`Dietz v. Bouldin,
`136 S. Ct. 1885 (2016) ........................................................................... 16
`In re Gibson,
`423 F. App’x 385 (5th Cir. 2011) .................................................... 15, 17
`In re HP Inc.,
`No. 18-149, 2018 WL 4692486 (Fed. Cir. Sept. 25, 2018) .................. 26
`In re Intel Corp.,
`841 F. App’x 192 (Fed. Cir. 2020) .... 2, 13, 15, 16, 17, 18, 19, 26, 27, 28
`In re Intel Corp.,
`843 F. App’x 272 (Fed. Cir. 2021) ......................................................... 22
`JTH Tax, Inc. v. Mahmood,
`No. 2:09-cv-134, 2010 WL 2175843 (N.D. Miss. May 27,
`2010) ................................................................................................. 21, 22
`
`vii
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`Case: 21-187 Document: 2-1 Page: 9 Filed: 09/16/2021
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`Koon v. United States,
`518 U.S. 81 (1996) ................................................................................. 17
`In re Nitro Fluids L.L.C.,
`978 F.3d 1308 (Fed. Cir. 2020) ............................................................. 17
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ............................................................... 24
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) ............................................................. 13
`United States v. Koenig,
`290 F.2d 166 (5th Cir. 1961) ................................................................. 18
`VLSI Tech. LLC v. Intel Corp.,
`No. 1:19-cv-00977-ADA, 2020 WL 8254867 (W.D. Tex.
`Dec. 31, 2020) ...................................................................... 19, 22, 24, 25
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ............................................... 13, 23, 25, 26
`Statutes
`28 U.S.C. § 124(d)(1) .................................................................................. 14
`28 U.S.C. § 124(d)(2) .................................................................................. 14
`28 U.S.C. § 1404(a) ............................................................................ passim
`28 U.S.C. § 1404(b) .................................................................................... 17
`28 U.S.C. § 1404(c) ..................................................................................... 14
`Rules
`Fed. R. Civ. P. 77(b) ................................................................................... 16
`Fed. R. Civ. P. 83(b) ................................................................................... 16
`
`viii
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`Case: 21-187 Document: 2-1 Page: 10 Filed: 09/16/2021
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`Other Authorities
`Covid Act Now, McLennan County, TX,
`https://covidactnow.org/us/texas-
`tx/county/mc_lennan_county/?s=22911212 ......................................... 25
`Opposition to Petition for Writ of Mandamus, In re Apple
`Inc., No. 20-104, Dkt. 18-1 (Fed. Cir. Oct. 24, 2019) ............................ 8
`Order, In re Apple Inc., No. 20-104, Dkt. 36 (Fed. Cir. Dec.
`20, 2019) ............................................................................................... 7, 8
`Petition for Writ of Mandamus, In re Apple Inc., No. 20-104,
`Dkt. 3 (Fed. Cir. Oct. 16, 2019) .............................................................. 7
`Western District of Texas, Thirteenth Supplemental Order
`Regarding Court Operations (Feb. 2, 2021),
`https://tinyurl.com/wdtx13order; ........................................................... 9
`Western District of Texas, Waco Division, Seventh Standing
`Order (Jan. 26, 2021), https://tinyurl.com/Waco7order ........................ 9
`14D Wright & Miller, Federal Practice & Procedure § 3801
`(4th ed.) .................................................................................................. 16
`15 Wright & Miller, Federal Practice & Procedure § 3842
`(4th ed.) .................................................................................................. 17
`
`
`
`ix
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`

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`Case: 21-187 Document: 2-1 Page: 11 Filed: 09/16/2021
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`INTRODUCTION
`Petitioner Apple Inc. respectfully requests that this Court issue a
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`writ of mandamus to vacate the district court’s patently erroneous order
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`re-transferring this case back to its docket in the Waco Division of the
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`Western District of Texas on the cusp of trial.
`
`Two years ago, the district court found the Austin Division
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`“clearly more convenient” than the Waco Division, where Fintiv filed
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`this case. It issued a 17-page opinion analyzing the factors governing
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`transfer under 28 U.S.C. § 1404(a) and denied Apple’s request for inter-
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`district transfer to California but granted its alternative request for
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`intra-district transfer to the Austin Division. That decision was based
`
`on the district court’s findings that there were sources of proof, party
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`and non-party witnesses, and a localized interest in Austin, but not in
`
`Waco. This Court upheld the district court’s findings on mandamus
`
`review.
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`Now, after the parties and witnesses have spent months preparing
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`for an Austin trial scheduled to begin less than three weeks from now,
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`the district court has abruptly changed course. In a short order
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`containing no legal analysis, and issued over Apple’s objection, the
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`1
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`

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`Case: 21-187 Document: 2-1 Page: 12 Filed: 09/16/2021
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`district court re-transferred the case back to its docket in the Waco
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`Division. This decision was not based on any finding of convenience or
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`other statutory analysis; the sole reason the district court articulated
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`for re-transferring the case was that the Waco Division courthouse
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`remains fully open for jury trials during the ongoing COVID-19
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`pandemic, whereas the Austin Division courthouse might not be
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`available on the scheduled date. That same uncertainty, of course,
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`affects every other civil case currently pending in the Austin Division;
`
`the district court cited nothing specific to this case to support a last-
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`minute transfer of venue.
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`The district court’s order is a clear abuse of discretion. This Court
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`has already once used its mandamus authority to vacate a decision by
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`the same district court that involved the same last-minute, Austin-to-
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`Waco transfer without any supporting authority or analysis. See In re
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`Intel Corp., 841 F. App’x 192 (Fed. Cir. 2020) (“Intel I”). In doing so,
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`this Court held that district courts have no inherent authority to
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`transfer venue and may do so only under “appropriate statutory
`
`authority,” such as an analysis of the § 1404(a) factors. Id. at 194-95.
`
`2
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`

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`Case: 21-187 Document: 2-1 Page: 13 Filed: 09/16/2021
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`Nonetheless, the district court here disregarded that fundamental
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`requirement—and this Court’s Intel I ruling—in again issuing a venue
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`transfer order without any statutory authority. As in Intel I,
`
`mandamus is warranted to correct this clear abuse of discretion.
`
`Mandamus is particularly appropriate because the district court
`
`could not have grounded its re-transfer order in statutory authority.
`
`The only available statutory authority, § 1404(a), plainly does not
`
`authorize re-transfer here. Controlling Fifth Circuit precedent requires
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`“unanticipatable post-transfer events” that “frustrate the original
`
`purpose for transfer.” In re Cragar Indus., Inc., 706 F.2d 503, 505 (5th
`
`Cir. 1983). But the unanticipatable event here—the COVID-19
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`pandemic—has not frustrated the original rationale for transferring the
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`case to Austin, which had nothing to do with the anticipated trial date.
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`Indeed, moving the case from Austin would undermine the original
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`rationale for transfer, because an otherwise-willing third-party witness
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`who will be traveling from out of state is likely not available for trial in
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`Waco. It will also compel additional travel for numerous witnesses and
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`counsel at a moment when COVID-19 has created a shortage of Texas
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`3
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`

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`Case: 21-187 Document: 2-1 Page: 14 Filed: 09/16/2021
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`hospital beds. In short, there is no proper analysis that could find Waco
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`to be more convenient than Austin at this time.
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`This Court should correct the district court’s clear abuse of
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`discretion and issue a writ of mandamus ordering that the case be
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`returned to the Austin Division.
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`RELIEF SOUGHT
`Apple respectfully requests that the Court grant this petition for a
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`writ of mandamus, vacate the district court’s order dated September 9,
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`2021, and remand with instructions that this action shall proceed in the
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`Austin Division of the United States District Court for the Western
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`District of Texas.
`
`ISSUE PRESENTED
`Whether the district court clearly abused its discretion in sua
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`sponte transferring this case back to the Waco Division, particularly
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`when the district court identified no legal authority for its re-transfer
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`decision.
`
`4
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`

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`Case: 21-187 Document: 2-1 Page: 15 Filed: 09/16/2021
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`FACTUAL BACKGROUND AND PROCEDURAL HISTORY
`
`Fintiv Sues Apple In The Waco Division Of The Western District
`Of Texas.
`This case began in December 2018, when Fintiv filed suit against
`
`Apple based on a patent it had acquired from another company. Appx9.
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`Although Fintiv’s headquarters are in Austin, it chose to file its action
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`not in the Austin Division but a hundred miles away in the Waco
`
`Division of the Western District of Texas. Appx46-47.
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`Fintiv accuses Apple of infringing U.S. Patent No. 8,843,125,
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`which purports to provide improved management of virtual
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`(“contactless”) cards used with a mobile wallet application in a mobile
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`device. Appx69-82. Fintiv’s infringement contentions originally
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`targeted certain functions of iPhone and Apple Watch devices, but
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`ultimately expanded to include iPad and Mac products as well.
`
`Appx145-146. Fintiv’s infringement contentions relate to the Apple Pay
`
`and Apple Wallet functionalities of the accused devices. Appx145-146.
`
`Apple’s work on those accused functionalities is performed by employees
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`in or near Cupertino, California, or outside the United States. Appx85-
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`87.
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`5
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`

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`Case: 21-187 Document: 2-1 Page: 16 Filed: 09/16/2021
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`For the iPhone and Apple Watch devices, Fintiv’s infringement
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`theory also implicates a Secure Element chip supplied by a
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`Netherlands-based company called NXP. See Appx113-114. Although
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`NXP has certain operations in Austin, like Apple, they are unrelated to
`
`this case. Instead, the relevant U.S.-based work is done in California,
`
`and the NXP employee who will be a trial witness works in San Jose.
`
`Appx113-114; Appx199.
`
`With Fintiv’s Consent, The District Court Transfers The
`Litigation To The Austin Division Of The Western District Of
`Texas.
`Shortly after the complaint was filed, Apple sought transfer to the
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`Northern District of California under 28 U.S.C. § 1404(a), citing the
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`clear concentration of party and third-party witnesses, documentation,
`
`and localized interest in Northern California. Appx84. In the
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`alternative, Apple sought intra-district transfer to the Austin Division
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`of the Western District of Texas. Appx84. Although the Northern
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`District of California was clearly the most convenient forum, Apple
`
`explained that Austin was clearly more convenient than Waco, given
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`the total lack of any party or witness presence, or sources of proof, in
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`Waco. Appx93.
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`6
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`Case: 21-187 Document: 2-1 Page: 17 Filed: 09/16/2021
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`Fintiv readily agreed to a transfer to the Austin Division. Appx99.
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`It opposed only the inter-district transfer to California, and it did so on
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`the basis that Austin (not Waco) was a convenient forum in which to
`
`litigate this dispute. See Appx100-108.
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`The district court agreed. In an order issued in September 2019,
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`it denied inter-district transfer to Northern California but granted
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`intra-district transfer to Austin. Appx119-136. In finding that the
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`§ 1404(a) private- and public-interest factors favored transfer to Austin,
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`the district court relied on (1) Fintiv and Apple employees in Austin
`
`whom Fintiv claimed might be witnesses; (2) NXP’s corporate presence
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`in Austin; (3) the localized interest created by Apple’s and NXP’s
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`presences in Austin; and (4) the fact that “there are no sources of proof
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`in the Waco Division.” Appx124-135; see also Order, In re Apple Inc.,
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`No. 20-104, Dkt. 36 at 3 (Fed. Cir. Dec. 20, 2019) (hereafter “Transfer
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`Mandamus Order”) (noting that the district court granted intra-district
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`transfer “given the connections between the case and Austin”).
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`Apple sought a writ of mandamus from this Court, demonstrating
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`that the denial of inter-district transfer to California turned on key
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`legal errors amounting to a clear abuse of discretion. See Pet. at 15-40,
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`7
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`

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`Case: 21-187 Document: 2-1 Page: 18 Filed: 09/16/2021
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`In re Apple Inc., No. 20-104, Dkt. 3 (Fed. Cir. Oct. 16, 2019). The Court
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`denied Apple’s petition, relying in part on the fact that the district court
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`had instead granted Apple’s alternative request for an intra-district
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`transfer to Austin—a request that Fintiv had argued amounted to
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`judicial estoppel. See Transfer Mandamus Order at 3 (“Nor can Apple
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`now take back its previous assertion to the district court that the Austin
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`Division ‘is clearly more convenient for both parties’” than the Waco
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`Division.); Opp. at 27-32, Apple, No. 20-104, Dkt. 18-1 (Fed. Cir. Oct. 24,
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`2019) (Fintiv arguing that Apple “should be judicially estopped” from
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`“now seeking a transfer out of Austin”).
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`For Two Years, The Parties Litigate And Plan For Trial In
`Austin.
`After this Court denied mandamus, the district court formally
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`effected the transfer to the Austin Division, though it took the unusual
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`step of retaining the case on the Waco Division judge’s docket.
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`Appx137. Since that time, the parties have planned and prepared for a
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`trial in Austin. After a series of extensions sought by both parties, in
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`February 2021, this case was set for a jury trial beginning on October 4,
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`2021. See Appx138-139. At the time of that scheduling order, civil jury
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`trials were suspended in the Austin Division due to the COVID-19
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`8
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`Case: 21-187 Document: 2-1 Page: 19 Filed: 09/16/2021
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`crisis, but the Waco Division was continuing to hold jury trials.
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`Compare Western District of Texas, Thirteenth Supplemental Order
`
`Regarding Court Operations (Feb. 2, 2021),
`
`https://tinyurl.com/wdtx13order; with Western District of Texas, Waco
`
`Division, Seventh Standing Order (Jan. 26, 2021),
`
`https://tinyurl.com/Waco7order. But despite the uncertainty as to when
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`the Austin courthouse would reopen, this case was set for trial in
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`Austin. Appx138-139. The parties and anticipated witnesses continued
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`to prepare for trial in Austin.
`
`On The Eve Of Trial, The District Court Sua Sponte Re-Transfers
`The Litigation To The Waco Division Of The Western District Of
`Texas.
`More than six months later, and just six weeks before trial was set
`
`to begin, the district court contacted the parties by email to arrange a
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`status conference “to discuss the feasibility of trial in Austin on October
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`4th, 2021,” in light of “the recent spike in COVID-19 cases.” Appx200-
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`201. That status conference took place on August 23, 2021. The district
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`court explained during the conference that, despite the Western
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`District’s standing order, certain jury trials (civil and criminal) were
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`going forward in the Austin courthouse, though space was limited.
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`9
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`Case: 21-187 Document: 2-1 Page: 20 Filed: 09/16/2021
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`Appx175-176. The district court further advised the parties that it was
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`considering three options: (1) keeping the October 4 trial date but
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`holding the trial in Waco; (2) postponing the trial date to early 2022 (in
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`Austin) at the agreement of the parties; or (3) keeping the current trial
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`date and Austin venue in hopes that “there’s no conflict between Judge
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`Yeakel and Judge Pitman and me being able to use a courtroom in
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`Austin.” Appx177-178. The district court directed the parties to confer
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`and report on their preferred course of action. Appx182-183.
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`Among other things, Apple noted during the hearing that certain
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`key third-party witnesses, including one from NXP (which the district
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`court had cited in its original ruling transferring the case to Austin),
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`had agreed to appear for trial in Austin but not in Waco. Appx180. The
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`district court asked Apple to obtain “a statement from these people
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`that … if I were to move the trial [date] and have it in Austin, that they
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`would in fact be attending live.” Appx181.
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`The parties conferred as directed but could not reach agreement.
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`In a report to the district court on August 25, 2021, they laid out their
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`respective positions. Appx198-199. Fintiv asked the district court to
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`maintain the October 4 trial date but hold the trial in the Waco
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`10
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`Case: 21-187 Document: 2-1 Page: 21 Filed: 09/16/2021
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`Division, citing the COVID-19 spike and the “potential unavailability of
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`the Austin Division for trial.” Appx198-199. Apple, in contrast, asked
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`the district court to keep the case in the Austin venue and set the trial
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`date for February or March 2022. Appx199. Apple cited its heavy
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`investments in “preparing to try this case in Austin, which the Court
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`has found is the clearly more convenient venue for this dispute.”
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`Appx199 (noting arrangements for war room and hotel space, daily
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`COVID testing, and witness accommodations).
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`Apple also provided, in response to the district court’s request, a
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`letter from a key third-party witness located in California who
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`confirmed he would agree to attend a trial in Austin if held in early
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`2022. Appx202. And it further confirmed that third-party NXP’s
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`witness, who works in California, would do the same. Appx199.
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`Finally, Apple “[a]t a minimum” requested briefing on the venue
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`convenience issue if the district court were considering re-transferring
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`the case to the Waco Division. Appx199.
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`The district court did not allow for briefing. Instead, on
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`September 8, 2021, just over three weeks before jury selection was set
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`to begin in Austin, it issued an order directing “that this case be
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`Case: 21-187 Document: 2-1 Page: 22 Filed: 09/16/2021
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`TRANSFERRED back to the Waco Division.” Appx2. The district court
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`did not cite any legal authority for this transfer, nor did it analyze the
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`§ 1404(a) convenience factors or the law regarding re-transfer of cases.
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`Instead, it simply stated that the COVID-19 pandemic had begun after
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`the case was originally transferred to the Austin Division, that jury
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`trials in the Austin courthouse had “largely been suspended ever since,”
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`and that “it remains uncertain whether the Austin courthouse will be
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`open for jury trial in the foreseeable future.” Appx1. The district court
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`then found, without any explanation or reference to its original transfer
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`rationale, that “the intervening COVID-19 pandemic has frustrated the
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`original purpose of transferring this action to the Austin Division,”
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`because “the jury trial will remain in limbo for an indefinite period of
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`time.” Appx1-2.
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`REASONS FOR ISSUING THE WRIT
`A petitioner seeking mandamus relief must show (1) a “clear and
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`indisputable” right to the writ; (2) that the petitioner has “no other
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`adequate means to attain the relief he desires”; and (3) that the writ is
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`appropriate under the circumstances.” Cheney v. U.S. Dist. Ct., 542
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`Case: 21-187 Document: 2-1 Page: 23 Filed: 09/16/2021
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`U.S. 367, 380-81 (2004) (citation omitted); see also In re Volkswagen of
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`Am., Inc., 545 F.3d 304, 311 (5th Cir. 2008) (en banc).1
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`All three factors are satisfied here. This Court has already held
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`that the right to mandamus relief is clear and indisputable where a
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`district court orders re-transfer without citing, let alone adequately
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`applying, statutory authority. Intel I, 841 F. App’x at 195. That is
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`exactly what happened here. If anything, the right to mandamus relief
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`is even more plain because the only available authority for re-transfer—
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`§ 1404(a)—could not possibly have justified the district court’s order in
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`any event. As for the second factor, it is well-established that a later
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`appeal “provide[s] no remedy” for an error of venue transfer.
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`Volkswagen, 545 F.3d at 319; see Intel I, 841 F. App’x at 193. And the
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`third factor is satisfied where, as here, there has been a clear abuse of
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`discretion in directing transfer. In re Apple Inc., 979 F.3d 1332, 1336-
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`37 (Fed. Cir. 2020).
`
`
`1 Because this petition does not involve substantive issues of patent law,
`this Court applies “the laws of the regional circuit in which the district
`court sits, in this case the Fifth Circuit.” In re TS Tech USA Corp., 551
`F.3d 1315, 1319 (Fed. Cir. 2008).
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`Case: 21-187 Document: 2-1 Page: 24 Filed: 09/16/2021
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`I.
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`The District Court Clearly Abused Its Discretion In Sua
`Sponte Re-Transferring This Case To Waco Without Any
`Lawful Basis.
`This Court has already diagnosed, and found mandamus-worthy,
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`the district court’s clear abuse of discretion. Intel I vacated a nearly
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`identical re-transfer order because the same district court cited no
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`statutory authority for the transfer. The same error recurred here, and
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`mandamus is no less warranted. If anything, the case for this Court’s
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`intervention is clearer still: Even if the district court had invoked
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`§ 1404(a), the only available statutory authority for re-transfer, it would
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`have been a clear abuse of discretion to conclude that the statute
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`authorized re-transfer.
`
`A.
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`As this Court has already held, the district court’s
`decision to transfer venue without citing a valid legal
`basis for doing so is a clear abuse of discretion.
`By the district court’s own order, the venue of this case is the
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`Austin Division of the Western District of Texas. Appx137. Congress
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`has directed that the Austin Division is separate from the Waco
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`Division, and that “Court for the Austin Division shall be held at
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`Austin,” while “Court for the Waco Division shall be held at Waco.” 28
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`U.S.C. § 124(d)(1)-(2); see also id. § 1404(c) (“A district court may order
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`Case: 21-187 Document: 2-1 Page: 25 Filed: 09/16/2021
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`any civil action to be tried at any place within the division in which it is
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`pending.” (emphasis added)). Apple therefore has a “statutory right” to
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`have this case tried in Austin. In re Gibson, 423 F. App’x 385, 390 (5th
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`Cir. 2011).
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`Absent some lawful basis for changing the venue of the case, the
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`district court has no power to do so. This Court has already made that
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`clear in a case arising out of the same district court and involving the
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`same issue of the COVID-19 pandemic and the potential unavailability
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`of the Austin courthouse for a patent jury trial. That case, like this one,
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`was originally filed in the Waco Division but was transferred to the
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`Austin Division in 2019 based on the defendant’s § 1404(a) motion.
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`Intel I, 841 F. App’x at 192. There too, the district court (over the
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`defendant’s objection) ordered the trial re-transferred to Waco in light of
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`the COVID-19 trial restrictions in the Austin courthouse. Id. at 193.
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`And there too, the defendant sought this Court’s mandamus review.
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`The Court granted a writ of mandamus. Id. at 195. It held that
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`the district court’s “inherent authority to manage its docket” did not
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`permit it to move the trial to Waco absent some proper statutory
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`Case: 21-187 Document: 2-1 Page: 26 Filed: 09/16/2021
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`authority. Id. at 194.2 The governing statutes “simply leave[] no room
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`to invoke such authority here.” Id. As the Supreme Court has
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`explained, a district court’s “exercise of an inherent power cannot be
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`contrary to any express grant of or limitation on the district court’s
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`power contained in a rule or statute.” Dietz v. Bouldin, 136 S. Ct. 1885,
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`1892 (2016); see also Fed. R. Civ. P. 83(b) (district judge may “regulate
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`practice in any manner consistent with federal law … and the district[]
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`[court’s] local rules”). “[V]enue is wholly a statutory matter.” 14D
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`Wright & Miller, Federal Practice & Procedure § 3801 (4th ed.). And
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`the governing venue statutes make clear that this case—like every
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`other case pending in the Austin Division of the Western District of
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`Texas—must be tried in Austin.
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`The district court had no power to change that