Miscellaneous Docket No. 20-104 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. 6:18-cv-00372-ADA, Hon. Alan D. Albright APPLE INC.’S PETITION FOR REHEARING EN BANC Claudia Wilson Frost ORRICK, HERRINGTON & SUTCLIFFE LLP 609 Main Street, 40th Floor Houston, TX 77002 Melanie L. Bostwick ORRICK, HERRINGTON & SUTCLIFFE LLP 1152 15th Street NW Washington, DC 20005 (202) 339-8400 Travis Jensen ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Counsel for Petitioner Case: 20-104 Document: 37 Page: 1 Filed: 01/21/2020
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I THE United States Court of Appeals for the Federal Circuit...Apple’s and NXP’s Austin-based employees and the ancillary, non-accused NFC technology. See Pet. 8-10, 28-29. The
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Miscellaneous Docket No. 20-104
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. 6:18-cv-00372-ADA, Hon. Alan D. Albright
APPLE INC.’S PETITION FOR REHEARING EN BANC
Claudia Wilson Frost ORRICK, HERRINGTON & SUTCLIFFE LLP 609 Main Street, 40th Floor Houston, TX 77002
Melanie L. Bostwick ORRICK, HERRINGTON & SUTCLIFFE LLP 1152 15th Street NW Washington, DC 20005 (202) 339-8400 Travis Jensen ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
v.
Case No.
CERTIFICATE OF INTEREST
Counsel for the: (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
certifies the following (use “None” if applicable; use extra sheets if necessary):
1. Full Name of Party Represented by me
2. Name of Real Party in interest (Please only include any real party
in interest NOT identified in Question 3) represented by me is:
3. Parent corporations and publicly held companies that own 10% or more of
stock in the party
4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court (and who have not or will not enter an appearance in this case) are:
In re Apple Inc.
20-104
Apple Inc.
Apple Inc. Apple Inc. None
Orrick, Herrington & Sutcliffe LLP: Tyler S. MillerKelly Hart & Hallman LLP: John R. Johnson, J. Stephen Ravel
5. The title and number of any case known to counsel to be pending in this or any other court or agency that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir. R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
Date Signature of counsel Please Note: All questions must be answered Printed name of counsel cc:
I. The Panel’s Order Endorses A Clearly Erroneous Legal Approach To § 1404(a) Venue-Transfer Motions. ................... 8
II. The Panel’s Order Improperly Faults Apple For Requesting Lesser Alternative Relief In The Form Of An Intradistrict Transfer. ...................................................... 17
warranted to correct “clear abuse of discretion”); Koon v. United States,
518 U.S. 81, 100 (1996) (“A district court by definition abuses its
discretion when it makes an error of law.”).2 That approach to the
§ 1404(a) analysis has no basis in law and is at odds with the very
nature of the inquiry. It erects an impossible obstacle for defendants
seeking transfer, by allowing plaintiffs to defeat such requests with
nothing more than baseless allegations and attorney argument. Under
2 As Apple explained, mandamus is also warranted based on the district court’s patently erroneous analysis of the § 1404(a) factors. See Pet. 22-40. Apple’s rehearing petition focuses on the legal error because, as stated above (at 1), it presents a sufficiently important question to justify en banc review.
have pertinent information; or why AppleCare customer support
employees might have relevant knowledge. The district court avoided
any such discussion by resorting to the inappropriate Weatherford
presumption.
To the extent the panel’s order suggests that the district court did
not merely rely on Weatherford but made actual findings about the
§ 1404(a) factors, that is incorrect. The district court’s key “findings” all
depended on the Weatherford principle:
The district court expressly relied on Weatherford in finding, without regard to Apple’s sworn evidence, that there was a likely Apple witness in Austin. Appx7 n.2 (“the Court resolved factual conflicts in favor of Fintiv” to find Ruotao Wang a potential witness). Contrary to Apple’s sworn declaration that no Austin-based employee had involvement with the accused technology, the district court accepted Fintiv’s representation that Mr. Wang did—even though the only basis for that representation was that Mr. Wang’s LinkedIn profile listed a project related to NFC that he performed as an undergraduate student, not anything he did at Apple or concerning the accused technology.
It did so implicitly in finding, again contrary to sworn
evidence, that AppleCare customer support employees in Austin might have relevant information. Appx7. This was the only way the Court found the location of party witnesses “neutral” instead of favoring transfer. Appx7-8. Worse still, the district court relied here on mere representations by Fintiv’s counsel, even though “[a]ttorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017).
The district court found the compulsory-process factor
neutral by “resolv[ing] factual conflicts in favor of the non-movant” to conclude that “there may be some NXP employees in WDTX with relevant information.” Appx11. Again, as Apple pointed out (Pet. 33-34), the very declaration NXP provided here would easily allow it to quash a subpoena from Fintiv to an Austin-based NXP employee who knows nothing about the accused technology. Yet Weatherford allowed the district court to deny transfer on the basis that such witnesses might testify.
The district court again relied on Weatherford in finding that
local interest weighed against transfer, by resolving in Fintiv’s favor the dispute about whether Apple’s Austin operations had any connection to this case. Appx15.
These were the decisive factors. And they were all infected by the
erroneous Weatherford approach. The panel’s order allows this clearly
unlawful approach to stand. And, if the en banc Court does not act, this
decision will raise the bar for venue transfer in patent cases to an
essentially insurmountable height. The Court should grant rehearing
to undo the panel’s order, grant Apple’s mandamus petition, and
prevent that unlawful outcome.
II. The Panel’s Order Improperly Faults Apple For Requesting Lesser Alternative Relief In The Form Of An Intradistrict Transfer.
En banc rehearing is warranted here for an additional reason.
Fintiv’s opposition to Apple’s mandamus petition rested heavily on the
United States Court of Appeals for the Federal Circuit
______________________
In re: APPLE INC., Petitioner
______________________
2020-104 ______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:18-cv-00372-ADA, Judge Alan D. Albright.
______________________
ON PETITION ______________________
Before MOORE, O’MALLEY, and STOLL, Circuit Judges.
O’MALLEY, Circuit Judge. O R D E R
Apple Inc. petitions this court 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. Fin-tiv, Inc. opposes the petition. Apple replies.
BACKGROUND This petition arises out of a patent infringement com-plaint filed by Fintiv against Apple in the Waco Division of the Western District of Texas. Fintiv’s infringement
allegations target Apple Wallet, a software application pre-sent in iPhones and Apple Watches, which allows users to store electronic representations of wallet contents, such as credit cards. The technology relies, in part, on an NFC chip supplied by a Netherlands-based company called NXP. Fintiv, a Delaware corporation, has its principal place of business at a WeWork co-working space in Austin, Texas, from which six employees work. Apple is headquartered in Cupertino, California, but maintains a campus in Austin, Texas. NXP has employees who work on the chip in San Jose, California as well as Austin-based employees who fo-cus on the company’s microprocessor business.
Apple moved to transfer the case pursuant to 28 U.S.C. § 1404(a) to the Northern District of California or alterna-tively to transfer to the Austin Division of the Western Dis-trict of Texas. The district court denied-in-part and granted-in-part Apple’s motion. Although the court noted that Apple had identified several employees in the North-ern District of California with relevant information, the court concluded that the venues were equally convenient for the parties because Fintiv identified two of its employ-ees in Austin, Texas as potential witnesses; some Apple-Care employees in Austin that “may have knowledge of Ap-ple Pay and Apple Wallet that could support Fintiv’s indi-rect infringement claims”; and, after resolving factual conflicts in Fintiv’s favor, at least one Austin Apple engi-neer “who may have relevant information.”
The district court concluded that the compulsory pro-cess factor also did not weigh in favor of or against transfer from the Western District of Texas. The district court noted that Fintiv had identified several employees of NXP who may have relevant information based on their back-grounds, and Fintiv’s attorney represented at the hearing on the motion that these individuals could be relevant wit-nesses. Although the district court acknowledged Apple’s assertion that some NXP employees in Northern California could be relevant to this case and that Apple disagreed that
any NXP employee in Austin may have relevant infor-mation, the district court again decided to resolve that fac-tual dispute in Fintiv’s favor.
In addition, the district court found that the local in-terest factor in having localized interests decided at home weighed against transferring the case. In this regard, the court noted that “Apple is likely one of the largest employ-ees in both NDCA and WDTX,” that “Fintiv has identified at least one Apple employee in WDTX who may have rele-vant information” to the case, and Fintiv maintains its only U.S. office in Austin from where multiple employees work. The court therefore concluded that Apple had not shown that the Northern District of California was clearly more convenient. However, given the connections between the case and Austin, the district court granted Apple’s request to transfer the case from Waco to Austin.
DISCUSSION Apple bears a heavy burden to overturn the district
court’s transfer decision. We may grant mandamus under such circumstances only upon a showing of a clear abuse of discretion that produced a patently erroneous result. In re TS Tech USA Corp., 551 F.3d 1315, 1318-19 (Fed. Cir. 2008); see also Cheney v. U.S. Dist. Ct. for Dist. of Colum-bia, 542 U.S. 367, 380 (2004) (requiring that a petitioner seeking mandamus establish that the right to relief is “clear and indisputable” (internal quotation marks and ci-tations omitted)). Where the district court has considered all the applicable factors and its balancing of these factors is “reasonable,” its decision is entitled to “substantial def-erence.” Piper Aircraft Co. v. Reyno, 454 U.S. 235, 257 (1981)(citations omitted).
Apple does not dispute that the district court consid-ered all the relevant transfer factors. Nor can Apple now take back its previous assertion to the district court that the Austin Division “is clearly more convenient for both parties.” Instead, Apple primarily complains that in not
transferring to the Northern District of California, the dis-trict court erred in giving any weight to Apple and NXP employees who reside in Austin, Texas. Specifically, Apple contends that its affidavits demonstrated that these indi-viduals are not potential witnesses and the district court’s failure to reach that conclusion, by resolving factual dis-putes in Fintiv’s favor, was an abdication of its role of fact-finder.
We have said that a “district court should assess the relevance and materiality of the information the witness may provide.” In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009). However, in making such determinations, the district court enjoys considerable discretion. See In re Amazon.com Inc., 478 F. App’x 669, 671 (Fed. Cir. 2012). As we have explained generally, “[o]ur reluctance to inter-fere is not merely a formality, but rather a longstanding recognition that a trial judge has a superior opportunity to familiarize himself or herself with the nature of the case and the probable testimony at trial, and ultimately is bet-ter able to dispose of these motions.” In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). Those principles ap-ply with particular force to a district court’s evaluation of whether an individual is deserving of consideration in the willing witness or compulsory process factors.
Here, the district court wrestled with the complicated task of determining whether it should consider employees of Apple and NXP that Apple and NXP assert should not be considered witnesses but that Fintiv believes may have information that could assist Fintiv in supporting its claims. It found that certain Apple and NXP employees in Austin were deserving of weight, while other employees of other companies were not. While Apple argues that its sub-mitted affidavits demonstrated that these individuals could not be witnesses, Fintiv introduced at least some ev-idence and argument connecting the backgrounds of these individuals to relevant issues. We conclude that there was at least a plausible basis for the district court to find that
these individuals may have relevant information. The court’s ruling was thus not a clear abuse of discretion.
Whatever may be said about the validity of drawing in-ferences and resolving factual disputes in favor of the non-moving party in the context of a transfer motion, we cannot say that Apple’s right to relief here is indisputably clear. In any event, it is undisputed that Apple bore the burden of proof here. See In re Volkswagen of Am., Inc., 545 F.3d 304, 314–15 (5th Cir. 2008) (en banc) (stating that the bur-den of proof rests with the party seeking transfer to show that the transferee venue would be clearly more convenient than the venue chosen by the plaintiff). Accordingly, IT IS ORDERED THAT: The petition is denied. FOR THE COURT December 20, 2019 /s/ Peter R. Marksteiner
I hereby certify that I electronically filed the foregoing with the
Clerk of the Court for the United States Court of Appeals for the
Federal Circuit by using the appellate CM/ECF system on January 21,
2020.
I certify that all counsel of record in the case are registered
CM/ECF users and that service will be accomplished by the appellate
CM/ECF system.
A copy of the foregoing was served upon the district court judge
via UPS:
Hon. Alan D. Albright United States District Court for the Western District of Texas 800 Franklin Avenue, Room 301, Waco, Texas 76701 Telephone: (254) 750-1501
ORRICK, HERRINGTON & SUTCLIFFE LLP /s/ Melanie L. Bostwick Melanie L. Bostwick Counsel for Petitioner