Case: 22-137 Document: 17 Page: 1 Filed: 06/24/2022
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`Miscellaneous Docket No. 22-137
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`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
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`In re Apple, Inc.,
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`Petitioner.
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`On Petition for Writ of Mandamus to the United States District
`Court for the Western District of Texas, No. 6:21-cv-00528-ADA,
`Honorable Judge Alan D. Albright
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`BILLJCO, LLC’S COMBINED PETITION
`FOR REHEARING AND REHEARING EN BANC
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`Brian R. Michalek (brian.michalek@saul.com)
`Brian Landry (brian.landry@saul.com)
`Joseph M. Kuo (joseph.kuo@saul.com)
`Elizabeth A. Thompson (elizabeth.thompson@saul.com)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, Illinois 60601
`(312) 876-7100
`Counsel for Respondent BillJCo, LLC
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`Case: 22-137
`Document: 7
`Page: 1
`Filed: 04/01/2022
`Case: 22-137 Document: 17 Page: 2 Filed: 06/24/2022
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`Case: 22-137
`Document: 7
`Page: 2
`Filed: 04/01/2022
`Case: 22-137 Document: 17 Page: 3 Filed: 06/24/2022
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`Case: 22-137
`Document: 7
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`Filed: 04/01/2022
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`Case: 22-137 Document: 17 Page: 5 Filed: 06/24/2022
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`TABLE OF CONTENTS
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`Page
`STATEMENT OF COUNSEL .................................................................................. 1
`POINTS OF LAW OR FACT OVERLOOKED BY THIS COURT ........................ 1
`INTRODUCTION ..................................................................................................... 1
`BACKGROUND ....................................................................................................... 3
`ARGUMENT ............................................................................................................. 5
`I. THE PANEL SHOULD REHEAR THIS CASE BECAUSE MARK
`ROLLINS’ TESTIMONY WAS UNRELIABLE, VAGUE, AND
`UNSUPPORTED. ................................................................................................... 5
`II. THE COURT SHOULD REHEAR THE CASE EN BANC BECAUSE THE
`PANEL’S DECISION IS INCONSISTENT WITH THE FEDERAL CIRCUIT’S
`PRIOR VENUE DECISIONS. ............................................................................. 10
`A. The Panel’s Decision Ignores the Appropriate Deference Owed to the
`District Court in Conflict with HTC Corp. ........................................................ 10
`B. The Panel’s Decision Places Too Heavy an Emphasis on the Convenience
`Factor in Conflict with Vistaprint and Volkswagen. ......................................... 13
`C. The Panel’s Decision Disregards the Plaintiff’s Choice of Forum in
`Conflict with In re Apple, Inc. ........................................................................... 15
`CONCLUSION ........................................................................................................ 17 
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
`Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366 (Fed. Cir. 2006) .............................. 9
`In re Apple, Inc., 456 Fed. Appx. 907 (Fed. Cir. 2012) ....................................... 1, 11
`In re Apple Inc., 743 F.3d 1377 (Fed. Cir. 2014) ...................................................... 9
`In re Apple, Inc., 818 Fed. Appx. 1001 (Fed. Cir. 2020) ..................................... 1, 15
`In re Barnes & Noble, Inc., 743 F.3d 1381 (Fed. Cir. 2014) ............................... 1, 11
`In re Canrig Drilling Technology, Ltd., No. 2015-139, 2015 WL 10936672 (Fed.
`Cir. Aug. 7, 2015) ............................................................................................... 14
`In re Eli Lilly & Co., 541 Fed. Appx. 993 (Fed. Cir. 2013) .................................... 14
`In re HTC Corp., 494 Fed. Appx. 81 (Fed. Cir. 2012) .................................. 1, 10, 11
`In re Telebrands Corp., 773 Fed. Appx. 600 (Fed. Cir. 2016) ................................ 15
`In re Telular Corp., 319 Fed. Appx. 909 (Fed. Cir. 2009) .................................. 1, 13
`In re Tesco Corp., 179 Fed. Appx. 2 (Fed. Cir. 2006) ............................................ 13
`In re Vicor Corp., 493 Fed. Appx. 59 (Fed. Cir. 2012) ........................................... 14
`In re Vistaprint, 628 F.3d 1342 (Fed. Cir. 2010) ........................................... 1, 13, 14
`In re Volkswagen of Am., Inc., 545 F.3d 302 (5th Cir. 2008) ............................ 15, 16
`In re Volkswagen of Am., Inc., 566 F.3d 1349 (Fed. Cir. 2009) ........................ 13, 15
`Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223 (Fed. Cir. 2007) ............................. 9
`NRDC v. EPA, 464 F.3d 1 (D.C. Cir. 2006) .............................................................. 5
`Scramoge Technology, Ltd. v. Apple, Inc., No. 6:21-cv-00579, 2022 WL 1667561
`(W.D. Tex. May 25, 2022) ............................................................................ 2, 7, 8
`United States v. Mageno, 786 F.3d 768 (9th Cir. 2015) ............................................ 6
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`FEDERAL STATUTES
`Federal Rule of Appellate Procedure 35 .................................................................... 3
`Federal Rule of Appellate Procedure 40 ............................................................ 2, 5, 6
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`STATEMENT OF COUNSEL
`Based on my professional judgment, I believe the Panel decision is contrary
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`to the following decisions of this Court: In re Apple, Inc., 818 Fed. Appx. 1001 (Fed.
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`Cir. 2020); In re Barnes & Noble, Inc., 743 F.3d 1381 (Fed. Cir. 2014); In re HTC
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`Corp., 494 Fed. Appx. 81 (Fed. Cir. 2012); In re Vistaprint, 628 F.3d 1342 (Fed.
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`Cir. 2010); In re Apple, Inc., 456 Fed. Appx. 907 (Fed. Cir. 2012); and In re Telular
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`Corp., 319 Fed. Appx. 909 (Fed. Cir. 2009).
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`/s/ Elizabeth A. Thompson
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`POINTS OF LAW OR FACT OVERLOOKED BY THIS COURT
`In granting Apple’s petition for mandamus, this Court overlooked, or did not
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`have the benefit of at the time of its ruling, the following points of law and fact: (1)
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`Apple’s venue witness, Mark Rollins, was found to be unreliable and uncredible by
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`the District Court in another case the day prior to this Court’s ruling; (2) the Court
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`disregarded the high burden a petitioner must satisfy to obtain mandamus relief; (3)
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`the Court placed too heavy an emphasis on the convenience factor in contravention
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`of its prior case law; and (4) the Court improperly ignored the weight entitled to the
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`plaintiff’s choice of forum.
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`INTRODUCTION
`The Panel’s decision granting Apple’s petition for mandamus effectively
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`takes away the right of a Texas plaintiff to bring suit in its home state against a
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`defendant which has undoubted and repeated ties to the district. Putting aside the
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`Panel’s apparent disregard of the extraordinary nature of a writ of mandamus, the
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`decision warrants rehearing for several reasons. First, Apple’s petition – and thereby
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`the Panel’s decision – was premised on the testimony of Apple’s serial witness, Mark
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`Rollins (“Rollins”). But immediately prior to the Panel’s decision on May 26, 2022,
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`Rollins was found to be an “unreliable and misleading” witness, who is “spoon
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`[fed]” information from Apple’s attorneys to support transfer of venue motions.
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`Scramoge Technology, Ltd. v. Apple, Inc., No. 6:21-cv-00579, 2022 WL 1667561,
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`*2-3 (W.D. Tex. May 25, 2022). So, rehearing pursuant to Federal Rule of Appellate
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`Procedure 40 is necessary to reconsider Apple’s motion without reliance on Rollins’
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`improper, legally infirm testimony.
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`Second, the Panel’s decision is in direct conflict with other decisions of the
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`Federal Circuit that have denied petitions for writs of mandamus requesting a venue
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`transfer with fewer ties to the forum district. Indeed, the Panel’s decision is wholly
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`inconsistent with prior decisions granting wide discretion to district courts on venue
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`motions. Moreover, that decision improperly places too much emphasis on the
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`convenience factor – a practice this Court has previously rejected. Finally, the
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`Panel’s granting of mandamus relief fails to account for the plaintiff’s choice of
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`forum in a way that is inconsistent with its prior holdings. As a result of these
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`conflicts, rehearing en banc pursuant to Federal Rule of Appellate Procedure 35 is
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`necessary.
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`BACKGROUND
`The ties of this case to the Western District of Texas (“WDTX”) are
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`unmistakable and broad-ranging. The consequences, thus, of this Court’s decision
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`granting a writ of mandamus cannot be overstated. Plaintiff BillJCo is a Texas
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`limited liability company with its principal place of business in Flower Mound,
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`Texas. (Appx318.) Bill Johnson is the founder of BillJCo and the inventor or
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`coinventor of all the patents at issue in this litigation. (Id.) Mr. Johnson’s home is in
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`Flower Mound, Texas, where he has lived for nearly forty years. (Appx319.)
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`The patents-in-suit focus on beacon technology. (Id.) Beacon technology
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`generally relates to a class of hardware transmitters that broadcast their identifier to
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`nearby electronic devices where different information can be received, processed,
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`analyzed, and presented to a user in order to enhance a user or customer experience.
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`(Id.) Mr. Johnson worked with several other Texas residents to create and design this
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`technology, including Lev Sofman, a Plano, Texas resident; Craig Newman, a
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`Richardson, Texas resident; and Kevin Watson, a Flower Mound, Texas resident.
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`(Appx319-320.) All three were disclosed as witnesses for BillJCo in this case.
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`Mr. Johnson’s sons, Michael Johnson and Jason Johnson, were also
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`instrumental to the development of the technology at issue. (Appx319-320.) Jason is
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`a co-inventor of U.S. Patent 8,566,839, which is one of the asserted patents in this
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`case. (Id.) Michael helped Mr. Johnson with software development, including a
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`mobile development environment for building beacon applications. (Id.) Both of Mr.
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`Johnson’s sons are lifelong Texas residents: Michael lives in Austin, Texas and
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`Jason lives in Waco, Texas. (Id.) Craig Yudell, a patent attorney, who assisted Mr.
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`Johnson in negotiations and monetization with Apple, lives in Austin, Texas. (Id.)
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`Both Mr. Johnson’s sons and Yudell were disclosed as witnesses. Finally, Mr.
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`Johnson’s documents relating to the patents at issue and his dealings with Apple are
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`in Flower Mound, Texas. (Appx319-320.)
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`On May 25, 2021, BillJCo brought this patent infringement suit against Apple
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`in the WDTX for the infringement of six patents. (Appx23; Appx30.) Shortly
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`thereafter, and consistent with its apparent practice any time it is sued for patent
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`infringement, Apple moved to transfer the matter to the Northern District of
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`California (“NDCA”). (Appx26.) After full briefing on the motion, on March 1,
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`2022, the District Court for the Western District of Texas (“District Court”) denied
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`the motion, finding that the factors set forth by the Fifth Circuit United States Court
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`of Appeals favored the case remaining in Texas. (Appx19-20.)
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`On March 30, 2022, Apple brought its Petition seeking a writ of mandamus
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`from this Court ordering the District Court transfer this case to the NDCA. On May
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`26, 2022, Honorable Judges Alan D. Lourie, Richard G. Taranto, and Todd M.
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`Hughes (the “Panel”) granted Apple’s petition. Despite recognizing that BillJCo is
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`a Texas company, run by a Texas resident, and that the patents at issue were all
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`invented by that Texas resident and another Texas resident co-inventor, the Panel
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`found that the District Court had “clearly abused its discretion in concluding that the
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`private and public interest factors did not favor transfer.” (ADD002.) First, the Panel
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`found that the District Court had erred in treating Jason Johnson as an unwilling
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`witness versus a willing one; and second, the Panel believed that the District Court
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`placed too much emphasis on Apple’s “general presence” in the WDTX. (ADD004.)
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`For the reasons discussed below, this decision was in error and reconsideration or
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`rehearing en banc is warranted.
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`I.
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`ARGUMENT
`THE PANEL SHOULD REHEAR THIS CASE BECAUSE MARK
`ROLLINS’ TESTIMONY WAS UNRELIABLE, VAGUE, AND
`UNSUPPORTED.
`Panel rehearing pursuant to Federal Rule of Appellate Procedure 40 is
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`necessary because evidence upon which the Panel relied has since been found
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`unreliable, vague, and unsupported. Rule 40 allows a panel to reconsider its decision
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`if a petitioner can point to facts or law that the panel did not consider. Fed. R. App.
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`Pro. 40(a)(2). Federal appellate courts have considered new facts and evidence as a
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`basis for rehearing under this standard. NRDC v. EPA, 464 F.3d 1, 3 (D.C. Cir. 2006)
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`(granting petition for rehearing where parties offered new evidence “that has led us
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`to change our view of the standing issue”); United States v. Mageno, 786 F.3d 768,
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`774 (9th Cir. 2015) (“Rule 40 applies to a misapprehension of the actual facts.”).
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`The factual support for Apple’s motion to transfer was provided by Mark
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`Rollins, a Finance Manager Apple hired in 2019. (Appx75-80.) Apple relied on
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`Rollins’ declaration to identify its witnesses who would likely testify at trial and the
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`location of Apple’s relevant documents. (Id.) With regard to the documents, Rollins
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`testified “I understand that working files and electronic documents concerning the
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`accused features reside on local computers and/or servers located in or around
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`NDCA or which are accessible in NDCA.” (Id. (emphasis added)). Rollins repeated
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`this statement verbatim with respect to the location of financial, marketing, and
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`licensing documents. (Id.) Rollins also testified that “[t]o my knowledge, Apple does
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`not have any unique working files or documents relevant to this case located in
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`Texas.” (Id. (emphasis added)).
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`And, even though he is a finance manager, Rollins testified regarding the
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`location of relevant source code. He stated than any relevant source code was located
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`“in California,” without ever explaining where in California. (Id.) Rollins also
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`claimed that although Apple has two offices in the WDTX (in Austin and Lockhart,
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`Texas), “none of the Apple employees with relevant information relating to the
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`accused features work at these offices or reside in Texas.” (Id.)
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`Like it did in the District Court, Apple relied on Rollins’ testimony as the
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`factual backbone for its Petition for Writ of Mandamus. (Pet. at 5-6.) This Court, in
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`turn, relied on the facts contained in Rollins’ declaration when it found in Apple’s
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`favor, particularly with respect to the private interest factors. (ADD003 (“Apple
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`stated that its documents relating to the research, design, development and operation
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`of the accused products were generated in Northern California and that its source
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`code was developed, and is accessible for inspection, from Northern California and
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`controlled on a need-to-know basis.”)).
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`In its response to Apple’s petition, BillJCo urged this Court to disregard
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`Rollins’ cookie-cutter statements, that appeared to have been copied nearly verbatim
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`from his other declarations, because they are void of any real factual content. But,
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`neither this Court nor the trial court addressed BillJCo’s arguments regarding
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`Rollins. Months after denying Apple’s motion to transfer, and only one day before
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`this Court granted Apple’s petition for a writ of mandamus, the WDTX considered
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`a declaration from Rollins in another matter: Scramoge Technology Ltd., 2022 WL
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`1667561, *2-3. In Scramoge, the court explicitly held that Rollins lacks credibility.
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`(ADD008.) In so holding, that court pointed to the “similarly vague representations”
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`in the nearly-identical declaration that Rollins provided in this case and the dozens
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`of other declarations that he has provided over the past eighteen months. (ADD009-
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`11.) After reviewing Rollins’ serial declarations, the court found that he could not
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`possibly have firsthand knowledge of the information provided in all these
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`declarations. (Id. at 4-6.) According to the court:
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`Adequate preparation for all these declarations requires him to have
`spent weeks or months reviewing patent complaints, asserted patents,
`and infringement contentions so he could search for and review the
`relevant corporate documents covering technologies from Bluetooth to
`biometric security to OLED displays, and then identify and speak with
`engineers across products from the iPhone 4-12 to MacBooks to Apple
`Watches to AirPods. The frequency at which he supplies declarations
`on a wide scope of unrelated, technologically complex topics leads the
`Court to give him no credibility. Mr. Rollins must rely on his attorneys
`to selectively spoon feed him information to accomplish what he does.
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`(Id. at 6.)
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`The court further explained that Rollins had improperly testified regarding
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`technological issues that a “financial manager would typically not know” and he
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`also somehow provided information about the location of documents “known only
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`to respective custodians.” (Id.) The trial court also explained that Rollins
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`strategically limited the scope of his declaration by basing it on his own personal
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`knowledge as selectively fed by Apples’ attorneys. (Id.) As a result, the court found
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`that it was not possible to truly understand where relevant documents and witnesses
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`may be located. (Id.)
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`Based on the foregoing, the Panel should re-hear its decision granting Apple’s
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`petition for writ of mandamus because the evidence on which it relied has been
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`called into question by the trial court’s credibility determination with respect to
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`Rollins. The Court issued its opinion on May 26, 2022, and did not consider the trial
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`court’s contemporaneous finding (one day earlier) that Rollins lacked credibility.
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`Credibility determinations are within the sole purview of the trial court. See Nilssen
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`v. Osram Sylvania, Inc., 504 F.3d 1223, 1231-32 (Fed. Cir. 2007) (“While an
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`opposite conclusion could have been reached, it is not the function of a court of
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`appeals to override district court judgments on close issues, where credibility
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`findings have been made.”); Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1379
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`(Fed. Cir. 2006) (“This court must defer heavily to the trial court’s credibility
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`determinations.”).
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`If this Court had the benefit of the trial court’s May 25, 2022 finding regarding
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`Rollins’ lack of credibility, the outcome of Apple’s petition would have been
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`different. As explained above, Rollins’ declaration serves as the evidentiary
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`foundation for Apple’s motion to transfer and its petition for a writ of mandamus.
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`Without that evidentiary basis, Apple’s effort to transfer collapses on itself. And that
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`should be the result given the incredibly vague, hedging, and waffling statements
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`found in Rollins’ declaration. This Court has disregarded these types of vague
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`statements in the past and should do so again, especially in light of the trial court’s
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`credibility determination. In re Apple Inc., 743 F.3d 1377, 1378-79 (Fed. Cir. 2014)
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`(disregarding declaration from Apple witness because it “was so general in nature
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`that the court was unable to evaluate its relevance in the transfer analysis.”).
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`At bottom, the Court should reconsider its order granting Apple’s petition for
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`a writ of mandamus given the credibility issues that have surfaced with respect to
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`Rollins. In the alternative, the Court should remand this matter to allow the trial court
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`to reconsider its analysis under the private and public interest factors in light of its
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`subsequent findings as to Rollins’ credibility.
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`II. THE COURT SHOULD REHEAR THE CASE EN BANC BECAUSE
`THE PANEL’S DECISION IS INCONSISTENT WITH THE
`FEDERAL CIRCUIT’S PRIOR VENUE DECISIONS.
`Rehearing en banc of the Panel’s decision in this case is warranted as that
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`decision is in direct conflict with several other decisions of this Court. First, the
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`Panel’s decision effectively changes the standard necessary for mandamus to issue
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`from a heavy one not often entertained, to an almost de novo review, inconsistent
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`with prior decisions of this Court. Second, the Panel’s decision puts undue emphasis
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`on the private interest factors – and, specifically the convenience factor – in finding
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`that venue is more convenient in the NDCA. Finally, the Panel’s decision entirely
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`eschews the “clearly” more convenient standard, which is intended to protect a
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`plaintiff’s choice of forum. En banc review is necessary.
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`A. The Panel’s Decision Ignores the Appropriate Deference Owed to
`the District Court in Conflict with HTC Corp.
`Despite reciting the highly deferential standard owed to the District Court on
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`a petition for writ of mandamus, the Panel effectively gave that court’s decision no
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`deference. Instead, the Panel substituted its own judgment for that of the District
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`Court, drawing artificial distinctions between witnesses and convenience. Doing so
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`was in conflict with a different panel’s decision in In re HTC Corp., 494 Fed. Appx.
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`81 (Fed. Cir. 2012). There, the court held that though “the presence of a larger
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`number of witnesses and parties in the transferee venue is an important consideration
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`in a §1404(a) analysis,” such “general observations do not definitively resolve the
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`issue” because the court is to exercise the “extraordinary remedy [of mandamus] to
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`reach only those circumstances where the district court blatantly deviated from those
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`principles.” In re HTC Corp., 494 Fed. Appx. at 83; see also In re Apple, Inc., 456
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`Fed. Appx. 907, 909 (Fed. Cir. 2012) (mandamus should be granted only where the
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`district court denies a “transfer motion without so much as considering the merits or
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`the court blatantly deviates from… [the §1404] principles.”).
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`Similarly, in In re Barnes & Noble, Inc., 743 F.3d 1381 (Fed. Cir. 2014),
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`another panel of this court found that the district court had “addressed in depth” the
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`various factors relevant to a §1404 motion and it could “discern no clear abuse of
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`discretion in the district court’s decision to deny transfer.” Id. at 1383. The district
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`court’s decision in that case was based upon the plaintiff patent holder’s presence in
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`the transferor venue and the inconvenience he would suffer in traveling to California
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`for trial. Id.
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`Thus, even though Apple had identified several potential witnesses residing
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`in the transferee venue (through its unreliable witness, Rollins), other witnesses in
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`the transferor venue and elsewhere were sufficient grounds for the District Court to
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`deny the motion to transfer. Doing so was not such a blatant deviation from that
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`court’s discretion so as to warrant mandamus relief.
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`Yet, the Panel in this case indefensibly ignored the District Court’s judgment
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`on the inconvenience the Texas plaintiff would suffer if its Texas owner was required
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`to travel to California, thus improperly considering the matter anew. Instead, the
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`Panel simply found that the District Court “correctly found that the access to sources
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`of proof and willing witness factors both favor the transferee venue” based entirely
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`on the Panel’s review of Apple’s evidence. (ADD003.) In doing so, the Panel
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`disregarded the fact that the District Court found the access to proof factor did “not
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`heavily favor transfer,” wrote Jason Johnson out of the convenience equation
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`entirely, and failed to consider BillJCo’s other relevant Texas witnesses like Yudell,
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`Sofman, Watson, and Newman. This methodology is inconsistent with the standards
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`set forth in other mandamus cases of this Circuit.
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`The Panel also substituted its own assessment of the record for the District
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`Court’s. For example, the Panel noted that “Apple stated that its documents relating
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`to the research, design, development and operation of the accused products were
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`generated in Northern California and that its source code was developed, and is
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`accessible for inspection, from Northern California.” (ADD003 (emphasis added)).
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`But the Panel’s assessment of Apple’s self-serving statements ignores the District
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`Court’s review of the record, in which it concluded that it was “not convinced that
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`there is much physical evidence, if any, located in the NDCA.” (Appx7.)
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`Accordingly, the Panel coopted the record in a manner inconsistent with its
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`authority and other decisions by this Court. See, e.g., In re Vistaprint, 628 F.3d 1342,
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`1346 (Fed. Cir. 2010) (noting that the Federal Circuit has a “longstanding
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`recognition that a trial judge has a superior opportunity to familiarize himself or
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`herself with the nature of the case and the probable testimony at trial, and ultimately
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`is better able to dispose of these motions [to transfer].”); In re Telular Corp., 319
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`Fed. Appx. 909, 912 (Fed. Cir. 2009) (district court’s decision based upon plaintiff’s
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`residence in Texas was not “a clear abuse of discretion or usurpation of judicial
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`power.”); In re Tesco Corp., 179 Fed. Appx. 2, 2-3 (Fed. Cir. 2006) (where a party
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`challenges the district court’s discretion, “it cannot show that its right to a particular
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`result is clear and indisputable,” a prerequisite to mandamus relief). Rehearing en
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`banc is necessary to correct this patent error.
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`B.
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`The Panel’s Decision Places Too Heavy an Emphasis on the
`Convenience Factor in Conflict with Vistaprint and Volkswagen.
`The Panel’s decision likewise impermissibly weakens the District Court’s
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`discretion in deciding §1404 motions by reweighing the importance of certain
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`factors anew. This usurpation of the District Court’s discretion conflicts with other
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`decisions by other panels of this Court. For example, In re Vistaprint, 628 F.3d 1342,
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`conflicts with the Panel’s decision in this case. Here, the Panel found that the
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`administrative and legal problems that would be created by transferring the case to
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`the NDCA, alone, could not support the District Court’s decision denying transfer.
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`(ADD004.) But a different panel of judges in the Federal Circuit held in Vistaprint
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`that “§1404(a) balances a number of case-specific factors, not just convenience…
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`[and] §1404(a) commits the balancing determination to the sound discretion of the
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`trial court based not on per se rules but rather on an ‘individualized, case-by-case
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`consideration of convenience and fairness.’” Vistaprint, 628 F.3d at 1346.
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`The Court went on to find that a writ of mandamus should not issue, even
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`where the only factor weighing in favor of the case remaining in the plaintiff’s
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`chosen forum was a matter of judicial efficiency. As appropriate on a petition for
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`mandamus and consistent with the deference that is owed a district court upon such
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`a request, the Vistaprint panel found that a trial court may properly determine that
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`the public interest factors can be of “paramount consideration.” Id. at 1347; see also
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`In re Canrig Drilling Technology, Ltd., No. 2015-139, 2015 WL 10936672, *1 (Fed.
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`Cir. Aug. 7, 2015) (“This court has repeatedly noted that judicial economy may play
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`a prominent role in a district court’s transfer analysis.”); In re Eli Lilly & Co., 541
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`Fed. Appx. 993, 994 (Fed. Cir. 2013) (giving considerable deference to a district
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`court’s evaluation of the role judicial economy should play in a transfer decision and
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`allowing judicial economy to be of “paramount consideration”); In re Vicor Corp.,
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`493 Fed. Appx. 59, 61 (Fed. Cir. 2012) (finding no error in district court’s refusal to
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`transfer case even where the local interest, witness convenience, and location of
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`sources of evidence factors all favored transfer because judicial economy was of
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`“paramount consideration.”); In re Volkswagen of America, Inc., 566 F.3d 1349,
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`1351 (Fed. Cir. 2009) (public interest factor of judicial economy can be of
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`“paramount consideration”). This Panel did not follow that pronouncement and
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`instead substituted its own judgment for that of the District Court. This overriding
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`of the District Court’s discretion on which factors to weigh most heavily, too, was
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`in error.
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`C. The Panel’s Decision Disregards the Plaintiff’s Choice of Forum
`in Conflict with In re Apple, Inc.
`A plaintiff’s choice of forum is entitled to weight in the §1404 analysis. But,
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`the Panel gave it none, instead placing emphasis on BillJCo’s location in the Eastern
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`– rather than Western – District of Texas. (ADD004.) But In re Apple, Inc., 818 Fed.
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`Appx. 1001 (Fed. Cir. 2020), counsels that a plaintiff’s choice of forum is protected
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`by the “elevated ‘clearly more convenient’ standard that the movant must meet.”
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`Likewise, whereas “a plaintiff’s choice of venue is not a distinct factor in the venue
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`transfer analysis, it is nonetheless taken into account as it places a significant burden
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`on the movant to show good cause for transfer.’” In re Volkswagen of Am., Inc., 545
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`F.3d 302, 314 n.10 (5th Cir. 2008); see also In re Telebrands Corp., 773 Fed. Appx.
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`600, 602 (Fed. Cir. 2016) (refusing to grant mandamus to order transfer of case
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`where district court found a strong local interest in the transferor venue “given it is
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`where the inventor of the patent lives and works.”). “This ‘good cause’ burden
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`reflects the appropriate deference to which the plaintiff’s choice of venue is
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`entitled.” Volkswagen, 545 F.3d at 315.
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`Here, the Panel replaced the District Court’s judgment with its own and
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`ordered the transfer of the case without any acknowledgment or deference to
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`BillJCo’s choice of forum. Doing so all but eradicates the “clearly” more convenient
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`standard and allows defendants to drag plaintiffs out of their home court simply
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`because they present a witness or some documentary evidence in the transferee
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`court. Venue thus becomes a tactical game played by large technology companies
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`with nothing to lose at the expense of individuals with everything to lose. Rehearing
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`en banc is necessary to ensure a just result.
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`CONCLUSION
` For the reasons discussed herein, the Panel should rehear the petition without
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`reliance on Apple’s improper Rollins’ testimony, or, the Court should hear the case
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`en banc to reconcile the Panel’s decision with prior decisions denying mandamus on
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`similar facts.
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`Respectfully submitted,
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`BILLJCO, LLC
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`By: /s/ Elizabeth A. Thompson
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`One of its attorneys
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`Brian R. Michalek (brian.michalek@saul.com)
`Brian Landry (brian.landry@saul.com)
`Joseph M. Kuo (joseph.kuo@saul.com)
`Elizabeth A. Thompson (elizabeth.thompson@saul.com)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, Illinois 60601
`(312) 876-7100
`Counsel for Respondent BillJCo, LLC
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`July 2020
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`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
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