“The majority’s blatant disregard for the district court’s thorough fact findings and for our role in a petition for mandamus will invite further petitions based almost entirely on ad hominem attacks on esteemed jurists similar to those Apple wages here.” – Judge Moore, dissenting
On November 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) granted Apple’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas (WDTX) to transfer Uniloc’s patent infringement suit against Apple to the U.S. District Court for the Northern District of California (NDCA) pursuant to 28 U.S.C. § 1404(a) in In re Apple, Inc. In addition, the CAFC granted Uniloc’s motions to file a sur-reply brief and to supplement the record. Judge Moore dissented, asserting that the majority applied an incorrect standard of review.
District Court Review
In September 2019, Uniloc filed an infringement suit against Apple in the WDTX for allegedly infringing Uniloc’s U.S. Patent No. 6,467,088 (the ’088 patent). In particular, Uniloc asserted that “Apple’s software download functionality, including how Apple determines compatibility for application and operating system software updates through the App Store, infringes the ’088 patent.”
In November 2019, Apple moved to transfer the case to the NDCA, asserting that it would be more convenient to litigate the case in in the NDCA. In May 2020, the district court, with Judge Albright presiding, held a hearing on Apple’s motion and stated that it would deny the motion and issue a written order as soon as possible. The court then held a Markman hearing, issued its claim construction order, held a discovery hearing regarding a protective order in the case, and issued a corresponding discovery order. In June 2020, Apple filed a petition for a writ of mandamus with the CAFC and the district court subsequently issued an order denying transfer.
Waiver of Arguments
The CAFC initially addressed Uniloc’s argument that Apple waived some of its arguments by not raising them in the petition. The CAFC noted that an applicant typically waives arguments that are not raised in the opening brief. However, the CAFC recognized that the “district court barreled ahead on the merits in significant respects” such as with the Markman hearing and claim construction order. In response to the rapid progression of the case, Apple addressed what it believed would be the court’s reasons for denying the transfer motion. Thus, the CAFC declined to apply waiver since Apple was first able to address the district court’s order in its reply brief.
The court initially noted that a “writ of mandamus is an extraordinary remedy available to correct a clear abuse of discretion or usurpation of judicial power.” The CAFC also noted that there are generally a few conditions that must be satisfied in order for a writ to issue, but explained that in the Section 1404(a) transfer context the test essentially reduces to one factor given that “the possibility of an appeal in the transferee forum following a final judgment . . . is not an adequate alternative,” and that “an erroneous transfer may result in judicially sanctioned irreparable procedural injury.” Thus, the CAFC noted that the issue on appeal was whether Apple had shown “a clear and indisputable right to issuance of the writ.”
The CAFC discussed the relevant private and public interest factors with respect to whether transfer was favored. With respect to the “cost of attendance for willing witnesses” factor, the CAFC explained that the “100-mile rule” is applied to clarify that “[w]hen the distance between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled” under In re Genentech, Inc. However, the CAFC concluded that the district court applied the 100-mile rule too rigidly and gave too much significance to the fact that the inventors and patent prosecutor lived closer to WDTX than NDCA. Further, the CAFC pointed to the district court’s findings that both Apple and Uniloc will have one or more witnesses from NDCA and concluded that the “cost of attendance factor” weighed slightly in favor of transfer.
Further, with respect to the “all other practical problems that make trial of a case easy, expeditious, and inexpensive” factor, the CAFC explained that the district court legally erred in its analysis and incorrectly held that the factor weighed heavily against transfer because “significant steps” had already been taken in the case. However, the CAFC noted that the “significant steps” taken by the district court, such as the Markman briefing, were all taken after Apple moved for transfer of the case. The CAFC stated that a “district court’s decision to give undue priority to the merits of a case over a party’s transfer motion should not be counted against that party in the venue transfer analysis.” Considering this and other district court “errors,” the CAFC concluded that there was nothing “relevant to this factor weighing against transfer” and that the factor weighed, at least slightly, in favor of transfer. For these reasons and more, the CAFC held that “the district court’s errors resulted in a patently erroneous result” and granted Apple’s petition for mandamus.
Judge Moore Dissents
Judge Moore wrote a dissenting opinion, expressing concern that the “majority’s blatant disregard for the district court’s thorough fact findings and for our role in a petition for mandamus will invite further petitions based almost entirely on ad hominem attacks on esteemed jurists similar to those Apple wages here.” She expressed disagreement with the majority’s analysis of the “cost of attendance factor,” noting that the majority strained to identify an error in the district court’s application of the 100-mile rule. She explained that it was not a “clear abuse of discretion” because the district court applied the right facts and the right law, but simply weighed the factor differently than the majority.
Moore also disagreed with the majority’s criticism of the district courts analysis of the “practical problems that make trial of a case easy, expeditious and inexpensive” factor. Moore noted that the district court properly considered factors of “judicial economy separate and apart from its own case progress such as trial dates, case and docket congestion, and the similarity of other pending lawsuits and concluded that [the] factors [indicated] ‘that keeping the case in WDTX would have a more positive impact.’” She also explained that the fact that the district court erred in considering issues after Apple filed its motion for transfer should not have been used to “justify resolving factual disputes and to reconsider this factor anew on a petition for mandamus.”
Moore further noted that the majority erroneously reviewed the district court’s analysis as if the standard or review was de novo. She concluded the dissent by asserting that she did not agree with the majority that the district court’s denial of Apple’s transfer motion amounted to “a clear abuse of discretion or usurpation of judicial power,” which was the correct standard of review.
With respect to the standard of review, the majority responded by explaining that it properly reviewed the district court’s decision for “clearly erroneous fact findings, erroneous conclusions of law, or misapplications of law to fact.” Further, the majority rejected the dissent’s statement that the majority’s decision was based on “ad hominem attacks on esteemed jurists”, characterizing the statement as baseless and counterproductive. Finally, the majority stated that, “[i]f anything, the fact that our order completely ignores what the dissent calls ‘ad hominem attacks’ will discourage future litigants from wasting precious briefing space on such statements.”