Case: 22-128 Document: 18 Page: 1 Filed: 04/22/2022
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`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: APPLE INC.,
`Petitioner
`______________________
`
`2022-128
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:21-
`cv-00165-ADA, Judge Alan D. Albright.
`______________________
`
`ON PETITION
`______________________
`
`Before DYK, REYNA, and CHEN, Circuit Judges.
`DYK, Circuit Judge.
`
`O R D E R
`Apple Inc. petitions for a writ of mandamus directing
`
`the United States District Court for the Western District of
`Texas to transfer this case to the United States District
`Court for the Northern District of California. CPC Patent
`Technologies PTY Ltd. opposes. Because the district court
`clearly abused its discretion in evaluating the transfer mo-
`tion, we grant the petition and direct transfer.
`
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`Case: 22-128 Document: 18 Page: 2 Filed: 04/22/2022
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`IN RE: APPLE INC.
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`BACKGROUND
`CPC filed this suit in the Waco Division of the Western
`
`District of Texas, alleging that Apple’s mobile phones, tab-
`lets, and computing products equipped with Touch ID, Face
`ID, or Apple Card features infringe three of CPC’s patents
`relating to biometric security. It is undisputed that CPC,
`an Australian-based investment company, does not have
`any meaningful connection to the Western District of Texas
`and that the inventor of the asserted patents also resides
`outside of the United States.
`
`Apple moved to transfer under 28 U.S.C. § 1404(a) to
`the Northern District of California. Apple noted that its
`employees responsible for the design, development, and en-
`gineering of the accused functionality reside in the North-
`ern District of California, where Apple maintains its
`headquarters, or outside of Western Texas, in the Czech
`Republic and Florida; its employees most knowledgeable
`about the marketing, licensing, and financial issues relat-
`ing to the accused products were also located in the North-
`ern District of California; and, to its knowledge, no Apple
`employee involved in the development of the accused func-
`tionality worked from Western Texas.
` On February 8, 2022, the district court denied Apple’s
`motion. After finding that the threshold requirement for
`transfer under § 1404(a) that the action “might have been
`brought” in the Northern District of California was satis-
`fied, the district court analyzed the private and public in-
`terest
`factors
`that
`traditionally govern
`transfer
`determinations. The district court determined that the fac-
`tor concerning the convenience of willing witnesses slightly
`favored transfer. Conversely, the district court determined
`that the factor accounting for the availability of compulsory
`process weighed strongly against transfer and that the
`court congestion and practical problems factors also
`weighed against transfer based on its ability to quickly
`reach trial, Appx15, and CPC having another pending suit
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`Case: 22-128 Document: 18 Page: 3 Filed: 04/22/2022
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`IN RE: APPLE INC.
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`alleging infringement in the Western District of Texas
`against a different defendant. The remaining transfer fac-
`tors, the court found, favored neither forum.
` Notably, the district court recognized that Apple had
`identified seven witnesses in the Northern District of Cali-
`fornia, but the district court found that inconvenience was
`mostly counterbalanced by the presence of two Apple em-
`ployees in Austin that CPC had insisted as having relevant
`information and an Apple party witness in Florida the
`court said would “find it about twice as inconvenient to
`travel to NDCA than to WDTX because Texas sits halfway
`from Florida to California.” Appx11–12. In addition, the
`court relied on its ability to compel the third party “Mac
`Pro manufacturer in Austin to attend trial,” finding that
`product is “properly accused and its assembly relevant to
`infringement” and that the product’s manufacturer “is
`likely to testify about technical information or assembly in-
`formation that is relevant to infringement and production
`information that may affect damages.” Appx9–10. It also
`relied on that manufacturer as a basis for weighing the lo-
`cal interest and sources of proof factors as neutral. Appx17
`(“The third-party Mac Pro manufacturer in Austin will
`want to know if it is making a patented product . . . .”);
`Appx8 (noting the Mac Pro manufacturer “is likely to have
`electronic documents, such as technical documents needed
`to assemble the accused product”).
` On balance, the court determined that Apple had
`“failed to meet the burden of proving that NDCA is ‘clearly
`more convenient’ than WDTX,” and thus, this case should
`“proceed in WDTX, where Apple employs thousands of peo-
`ple, where Apple is building a 15,000 employee campus,
`where a third-party manufactures the accused product,
`where two of Apple’s witnesses reside, where other wit-
`nesses find it more convenient to travel to, where the par-
`ties can reach trial sooner, and where a related case is
`pending.” Appx17. For those reasons, the court denied Ap-
`ple’s transfer motion. This petition followed.
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`IN RE: APPLE INC.
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`DISCUSSION
`Our review is governed by the law of the regional cir-
`cuit, which in this case is the United States Court of Ap-
`peals for the Fifth Circuit. See In re TS Tech USA Corp.,
`551 F.3d 1315, 1319 (Fed. Cir. 2008). Fifth Circuit law pro-
`vides that a motion to transfer venue pursuant to section
`1404(a) “should be granted if ‘the movant demonstrates
`that the transferee venue is clearly more convenient.’” In
`re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (quoting
`In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir.
`2008) (en banc)). The Fifth Circuit generally reviews a dis-
`trict court’s decision to deny transfer for an abuse of discre-
`tion. See Volkswagen, 545 F.3d at 310. A district court
`abuses its discretion “if it based its ruling on an erroneous
`view of the law or on a clearly erroneous assessment of the
`evidence.” Cooter & Gell v. Hartmarx Corp., 496 U.S. 384,
`405 (1990). “Errors of judgment in weighing relevant fac-
`tors are also a ground for finding an abuse of discretion.”
`In re Nitro Fluids L.L.C., 978 F.3d 1308, 1310 (Fed. Cir.
`2020) (citing TS Tech, 551 F.3d at 1320). “We may grant
`mandamus when the denial of transfer was a clear abuse
`of discretion under governing legal standards.” Nitro, 978
`F.3d at 1311 (citations omitted). Applying those standards,
`we agree that Apple has shown clear entitlement to trans-
`fer to the Northern District of California here.
`The district court noted that “[t]he most important fac-
`tor in the transfer analysis is the convenience of the wit-
`nesses.” Appx10 (citing In re Genentech, Inc., 566 F.3d
`1338, 1336, 1342 (Fed. Cir. 2009)). And the court acknowl-
`edged that Apple identified a significant number of wit-
`nesses residing in Northern California, including an Apple
`employee who worked at the company that created the
`Touch ID technology acquired by Apple, Appx127; two em-
`ployees who work on the research, design, and develop-
`ment of the accused features, Appx127–28; two employees
`who work on the marketing and promotion of the accused
`features, Appx129–30; an employee knowledgeable about
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`IN RE: APPLE INC.
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`Apple’s licensing of intellectual property, Appx130; and an
`employee knowledgeable about sales and financial infor-
`mation concerning the accused products, id.
`The court, however, found that this factor tilted only
`slightly in favor of transfer. We agree with Apple that this
`conclusion was erroneous. The court relied on two Apple
`employees in Austin that CPC indicated it may wish to call
`as potential witnesses. But it is far from clear that either
`of those employees has relevant or material information.
`One of the employees identified as being knowledgeable
`about Touch ID said during his deposition that the internal
`Apple authentication application he worked on was en-
`tirely different from the functionality that appears to be
`the focus of the infringement allegations. Appx329–30.
`The other employee was found to be a potential witness
`only on the basis that he had “knowledge about surveys of
`customer satisfaction with” Apple Card. Appx3. And even
`without second guessing the district court’s conclusion in
`these respects, this factor still strongly favors transfer
`where the transferee venue would be more convenient for
`the witnesses overall.
`
`The court also pointed to an Apple witness in Florida
`who the court concluded would find it “about twice as in-
`convenient” to attend trial in the Northern District of Cal-
`ifornia than in the Western District of Texas. Appx11. The
`sole basis for the district court’s conclusion was that “Texas
`sits halfway from Florida to California.” Appx11–12. But
`we have repeatedly rejected the view that “the convenience
`to the witnesses should be weighed purely on the basis of
`the distance the witnesses would be required to travel,
`even though they would have to be away from home for an
`extended period whether or not the case was transferred.”
`In re Pandora Media, LLC, No. 2021-172, 2021 WL
`4772805, at *6 (Fed. Cir. Oct. 13, 2021) (collecting cases);
`In re Apple Inc., 979 F.3d 1332, 1341–42 (Fed. Cir. 2020).
`Here too, while trial in Northern California will require the
`Apple employee in Florida to spend significant time away
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`IN RE: APPLE INC.
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`from home, trial in Western Texas will undoubtedly impose
`a similar burden on the Apple employee. The willing wit-
`ness factor accordingly weighs firmly in favor of transfer.
`
`The district court also clearly erred in its determina-
`tion that the compulsory process factor strongly weighed
`against transfer based on its ability to compel the testi-
`mony of a third-party manufacturer of an accused product.
`Critical to the district court’s conclusion was its finding
`that the “Mac Pro” was “properly accused and its assembly
`relevant to infringement.” Appx9–10. That finding, how-
`ever, is entirely unsupported by the record. It is undis-
`puted that CPC has not accused the Mac Pro of
`infringement in this litigation. Indeed, Apple states with-
`out challenge from CPC that the Mac Pro is not even com-
`patible with Touch ID, Face ID, or Apple Card.
`The court’s confusion appears to have been caused by
`CPC incorrectly alleging, in its opposition to Apple’s trans-
`fer motion, that Apple issued a press release indicating
`that the MacBook Pro would be manufactured in Austin.*
`However, the press release attached to CPC’s filing clearly
`stated that the Mac Pro, not the accused MacBook Pro,
`would be produced in Austin. Apple states without dispute
`that the accused MacBook Pro is not manufactured in Aus-
`tin. Because no other party was identified as relevant un-
`der the compulsory process factor, this court agrees with
`
`* CPC argues that the confusion actually stems from
`statements made by one of Apple’s employees during a dep-
`osition. The employee accidentally stated “Mac Pro” when
`he meant to say “MacBook Pro” in one statement. Apple
`points out, however, that this meaning was made clear one
`question later when he correctly described the MacBook
`Pro. Reply at 5. Apple also noted that the parties dis-
`cussed the error in a later meet-and-confer. Id. Regardless
`of the source of confusion, it remains clear that the district
`court’s conclusion is not supported by the record.
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`IN RE: APPLE INC.
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`Apple that there is no basis here to conclude that the factor
`weighs against transfer.
`The district court similarly erred in its analysis of the
`local interest factor. The district court correctly recognized
`that the Northern District of California had a local interest
`in resolving this dispute because research, design, and de-
`velopment of the accused functionality occurred in that dis-
`trict. Appx16; see Apple, 979 F.3d at 1345. Despite this
`finding, the court held that the local interest factor
`weighed in favor of neither of the two forums. But it failed
`to provide any plausible basis for that conclusion. The dis-
`trict court first connected this case to the Mac Pro manu-
`facturer, see Appx17, but, as noted above,
`that
`manufacturer has no connection to this case.
`The court’s second and only other stated rationale for
`its decision was Apple’s “thousands of employees in Aus-
`tin,” id., and echoing CPC’s argument, the fact that “adver-
`tising and sale of the accused products occurs in WDTX,”
`Appx16. But those activities are immaterial to the local
`interest analysis in this case. We have held that a party’s
`“general presence in a particular district” does not alone
`“give that district a special interest in the case.” In re
`Google LLC, No. 2021-171, 2021 WL 4592280, at *5 (Fed.
`Cir. Oct. 6, 2021); see also In re Juniper Networks, Inc.,
`14 F.4th 1313, 1320 (Fed. Cir. 2021); Apple, 979 F.3d at
`1345. Rather, “what is required is that there be ‘significant
`connections between a particular venue and the events that
`gave rise to a suit.’” Google, 2021 WL 4592280, at *5 (cita-
`tions omitted). Here, no such connection between the
`Western District of Texas and the events giving rise to this
`infringement suit is reflected by the record. We have also
`explained that “the sale of an accused product offered na-
`tionwide does not give rise to a substantial interest in any
`single venue.” In re Hoffmann-La Roche Inc., 587 F.3d
`1333, 1338 (Fed. Cir. 2009). Thus, the local interest factor
`favors transfer.
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`IN RE: APPLE INC.
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`The access to sources of proof factor should likewise
`have been weighed in favor of transfer, not neutral, as the
`district court found it. Apple submitted a sworn declara-
`tion stating that “working files, electronic documents, and
`any hard copy documents concerning the Accused Features
`reside on local computers and/or servers either located in
`or around” the Northern District of California, the Czech
`Republic, and Florida, where Apple’s employees who are
`knowledgeable about the design and development of those
`features work. Appx125. Apple also informed the court
`that relevant source code associated with the accused func-
`tionality was developed at these Apple offices and that
`“this source code is controlled on a need-to-know basis.”
`Appx126. Apple also informed the court that its documents
`concerning the marketing, licensing, and financial records
`related to the accused products would be in the Northern
`District of California. See Appx129. Apple added that it
`was unaware of any relevant source code or documents be-
`ing created or stored from its offices in Western Texas. See
`Appx125–26, Appx129.
`Aside from erroneously relying on the presence of po-
`tential evidence from the Mac Pro manufacturer (irrele-
`vant to this case as we addressed above), the district court
`faulted Apple for not clearly showing that the bulk of the
`documentary evidence was located or stored in the North-
`ern District of California. Appx7–8. Even so, with nothing
`on the other side of the ledger in the Western District of
`Texas, the Northern District of California would still have
`a comparative advantage with regard to the ease of access
`to the sources of proof located within that district. See Ju-
`niper, 14 F.4th at 1321 (“We have held that the fact that
`some evidence is stored in places other than either the
`transferor or the transferee forum does not weigh against
`transfer.”); In re Toyota Motor Corp., 747 F.3d 1338, 1340
`(Fed. Cir. 2014) (“The comparison between the transferor
`and transferee forums is not altered by the presence of
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`Case: 22-128 Document: 18 Page: 9 Filed: 04/22/2022
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`IN RE: APPLE INC.
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`other witnesses and documents in places outside both fo-
`rums.”).
`The district court also supported its decision to weigh
`the sources of proof factor as neutral based on its view that
`Apple had the capability of accessing its own electronic doc-
`uments from its Austin offices. Appx8. But we rejected
`very similar reasoning in In re Apple Inc., No. 2021-181,
`2021 WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021). There,
`despite Apple having identified source code to which access
`was restricted to employees working at its Northern Dis-
`trict of California headquarters and no potential evidence
`in the Western District of Texas, the district court found
`the factor neutral based on its view that Apple could give
`employees in Austin the proper credentials to access the
`information from Apple’s offices in Austin. In finding the
`court erred, we explained that “[t]he district court should
`have compared the ease of access in the Western District of
`Texas relative to the ease of access in the Northern District
`of California.” Id. (citing Juniper, 14 F.4th at 1321). The
`district court here similarly failed to ask the correct ques-
`tion, and in doing so, improperly discounted the relative
`convenience of the transferee venue with regard to sources
`of proof. The court therefore erred in not weighing this fac-
`tor in favor of transfer.
` When we turn to the remaining factors, we see no
`sound basis for keeping this case in the Western District of
`Texas. We have “rejected as a general proposition that the
`mere co-pendency of infringement suits in a particular dis-
`trict automatically tips the balance in the non-movant’s fa-
`vor.” In re NetScout Sys., Inc., No. 2021-173, 2021 WL
`4771756, at *5 (Fed. Cir. Oct. 13, 2021); see In re Samsung
`Elecs. Co., Ltd., 2 F.4th 1371, 1379–80 (Fed. Cir. 2021); In
`re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013). Here,
`the district court appears to have overstated the concern
`about waste of judicial resources and risk of inconsistent
`results in light of CPC’s co-pending suit in the Western Dis-
`trict of Texas. That suit involves a different defendant with
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`IN RE: APPLE INC.
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`different hardware and different software and thus is likely
`to involve significantly different discovery and evidence.
`See Samsung, 2 F.4th at 1379–80. Thus, any “incremental
`gains in keeping [this] case[] in the Western District of
`Texas” are insufficient “to justify overriding the inconven-
`ience to the parties and witnesses” if the case were trans-
`ferred to the Northern District of California. Id. at 1380.
`
`Finally, there is no sound basis for the district court
`here to premise its denial of transfer on the court conges-
`tion factor. We have held that when other relevant factors
`weigh in favor of transfer or are neutral, “then the speed of
`the transferee district court should not alone outweigh all
`of those other factors.” Genentech, 566 F.3d at 1347. Under
`this relevant precedent, we conclude that the evidence
`cited by the district court to support its conclusion that the
`Western District of Texas could schedule a trial sooner
`than if trial was held in the Northern District of California
`is insufficient to warrant keeping this case in plaintiff’s
`chosen forum, given the striking imbalance favoring trans-
`fer based on the convenience factors and lack of any cited
`reason for why a more rapid disposition of the case that
`might be available in the Western District of Texas would
`be important enough to be assigned significant weight in
`the analysis.
`
`Accordingly,
`
`IT IS ORDERED THAT:
`
`The petition is granted. The district court’s February
`8, 2022 order is vacated, and the district court is directed
`to transfer this matter to the United States District Court
`for the Northern District of California.
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`April 22, 2022
` Date
`
`
`