Case: 20-127    Document: 16     Page: 1    Filed: 06/16/2020




           NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                   In re: APPLE INC.,
                         Petitioner
                  ______________________

                         2020-127
                  ______________________

    On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 1:20-
cv-00351-ADA, Judge Alan D. Albright.
                  ______________________

                      ON PETITION
                  ______________________

 Before O’MALLEY, WALLACH, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
                        ORDER
    Apple Inc. petitions for a writ of mandamus directing
the United States District Court for the Western District of
Texas to direct transfer of this action to the United States
District Court for the Northern District of California.
STC.UNM opposes the petition. Apple replies. For the fol-
lowing reasons, we deny Apple’s petition.
                        BACKGROUND
   This petition arises out of a complaint filed by
STC.UNM in the Waco Division of the Western District of
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2                                           IN RE: APPLE INC.




Texas, alleging that STC.UNM’s asserted patents are in-
fringed by various Apple products supporting the IEEE
802.11ac wireless networking standard. According to
STC.UNM, the asserted patents “read on” that wireless
network standard and the accused devices infringe by be-
ing compliant with the standard. Resp. at 4. Apple indi-
cates that its accused products support the wireless
standard via semiconductor chips developed by Broadcom
Inc., a company with offices in San Jose, Irvine, and San
Diego, California, as well as in the Western District in Aus-
tin, Texas.
    The district court granted Apple’s motion to transfer
this case pursuant to 28 U.S.C. § 1404(a) in part, holding
that Apple had demonstrated trial in the Austin Division
of the Western District of Texas was clearly more conven-
ient than the Waco Division, but that Apple had not clearly
established that the Northern District of California was
more suitable for trial than Austin, Texas. In doing so, the
district court relied on Weatherford Tech. Holdings, LLC v.
Tesco Corp., No. 2:17-CV-00456-JRG, 2018 WL 4620636
(E.D. Tex. May 22, 2018) for the proposition that a court
must draw all reasonable inferences and resolve all factual
conflicts in favor of the non-moving party when assessing
a § 1404(a) transfer for convenience.
     The district court acknowledged that the Northern Dis-
trict of California would be more convenient for the Apple
employees and Broadcom employees who were specifically
identified in the declarations in support of Apple’s motion
and that it would be easier to access or transfer any docu-
mentary sources from Apple or Broadcom that were located
in the Northern District of California or other parts of Cal-
ifornia. However, the district court found that the presence
of the Wi-Fi Alliance in the Western District of Texas mit-
igated against weighing the pertinent convenience factors
strongly in favor of transfer, because it was “possible—if
not likely—that STC.UNM could require the Wi-Fi Alli-
ance as a significant source of proof.” A. 7. The district
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IN RE: APPLE INC.                                                 3



court also weighed against transfer a pending suit in the
same district in which STC.UNM asserted the same claims
of the same patents against another defendant, determin-
ing that there was a shorter time to trial in the Western
District of Texas on the current schedule for this case as
compared to the median time to trial in the Northern Dis-
trict of California.
     The district court also found that the local interest fac-
tor did not weigh in favor of Northern California. The dis-
trict court explained that, like the Northern District of
California, the Western District of Texas had a significant
interest because Apple was likely “one of the largest em-
ployers in each District.” A. 14. Despite Apple’s assertions
that only its employees in Northern California had rele-
vant and material information, the district court noted that
Apple had issued a job posting for engineers with
knowledge of the 802.11ac standard for its Austin campus,
which the court found showed that “business Apple con-
ducts within this District will be affected” by the case. Id.
The court added that one of the accused products is made
in Austin, Texas, “giving those involved with its manufac-
ture a localized interest in determinations made regarding
the infringement—or lack thereof—found in this case.”
A. 15.
    The court, moreover, concluded that the localized inter-
ests of third parties weighed in favor of Western Texas.
The court noted that the Wi-Fi Alliance, an organization
that promotes, certifies, and ensures uniform adoption of
Wi-Fi standards, including the 802.11ac standard, was lo-
cated in Austin, Texas and had “a heavy localized interest
in this case because infringement based on compliance
with the 802.11ac standard would affect the Wi-Fi
[A]lliance[’]s promotions and certifications” and hinder its
“goal of spreading use and adoption of the standard.” Id.
The court added that Broadcom also had a significant pres-
ence in Austin. The court acknowledged that Broadcom
was headquartered in the Northern District of California.
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4                                             IN RE: APPLE INC.




However, it found that it was “more reasonable to assume
that the chips [that were at issue in this case] were de-
signed in the Central or Southern Districts of California.”
Id.
                         DISCUSSION
    Apple now seeks for this court to issue a writ of man-
damus to compel transfer to the Northern District of Cali-
fornia. Such a request requires 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, 381 (2004) (requiring that a petitioner
seeking mandamus establish that the right to relief is
“clear and indisputable” (internal quotation marks and ci-
tations omitted)). We issue such relief sparingly and only
in “extraordinary” circumstances. Cheney, 542 U.S. at 380
(quoting Ex parte Fahey, 332 U.S. 258, 259–260 (1947)) (in-
ternal quotation marks omitted). Apple has not met that
demanding standard here.
    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” than the
Waco Division. A. 121. Instead, Apple primarily com-
plains that in not transferring to the Northern District of
California, the district court erred in assessing and weigh-
ing the relevant transfer factors. But the district court’s
grant of the alternative relief that Apple requested coun-
sels against the extraordinary remedy of mandamus.
Given that Apple received a transfer to its second-most con-
venient venue, it is difficult to accept Apple’s assertion that
the result here is patently erroneous.
    We do question the propriety of the district court’s reli-
ance on Weatherford to hold that a court must draw all rea-
sonable inferences and resolve all factual conflicts in favor
of the non-moving party when assessing a § 1404(a)
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IN RE: APPLE INC.                                                5



transfer for convenience. We are not convinced that this
standard, which sounds like summary judgment, should
apply to a transfer motion. The plaintiff’s choice of forum
is already protected by the elevated “clearly more conven-
ient” standard that the movant must meet. Nonetheless,
whatever may be said about the validity of drawing infer-
ences 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.
     Apple has not clearly and indisputably established the
right to transfer to Northern California based on the con-
venience of witnesses. We agree with Apple that “[t]he con-
venience of the witnesses is probably the single most
important factor in transfer analysis.” In re Genentech,
Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (internal quota-
tion marks and citation omitted). We also share Apple’s
concern with the district court’s reliance on ADS Security
for the discordant proposition that the convenience of party
witnesses is given “little weight.” A. 10 (citing ADS Sec.
L.P. v. Advanced Detection Sec. Servs., Inc., No. A-09-CA-
773-LY, 2010 WL 1170976, at *4 (W.D. Tex. Mar. 23,
2010)); see also, e.g., Genentech, 566 F.3d at 1343–45 (con-
sidering convenience of party and non-party witnesses
alike). Nevertheless, Apple’s right to relief is not clear and
indisputable here. The district court held that, as a whole,
the convenience of party and non-party witnesses weighed
in favor of transfer. In support of its holding, the district
court determined that the convenience of the identified
non-party witnesses was neutral overall. Thus, it is not as
if the district court applied ADS Security to tip the scales
in favor of non-party witnesses while giving party wit-
nesses little weight. Instead, the convenience of the party
witnesses was the determinative consideration here—and
indeed, determinative in Apple’s favor.
    Nor has Apple clearly and indisputably established the
right to transfer to Northern California based on counter-
vailing convenience or localized interest considerations.
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6                                             IN RE: APPLE INC.




Whether individuals or organizations may have relevant
information and whether a certain forum has a localized
connection to the relevant conduct and activities in a case
are fact-intensive matters often subject to reasonable dis-
pute. Cf. Van Cauwenberghe v. Biard, 486 U.S. 517, 528
(1988). Those determinations are generally entrusted to
the discretion of the district court. See Vistaprint, 628 F.3d
at 1346 (“Our reluctance to interfere is not merely a for-
mality, 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 testi-
mony at trial, and ultimately is better able to dispose of
these motions.”). When those factors are meaningfully con-
sidered by the district court, and the court’s balancing of
all the relevant factors is “reasonable,” its decision is enti-
tled to “substantial deference.” Piper Aircraft Co. v. Reyno,
454 U.S. 235, 257 (1981) (citations omitted).
    The district court did not clearly abuse that discretion
here. The court’s conclusion that the Wi-Fi Alliance’s loca-
tion in Austin, Texas could be a source of relevant infor-
mation in this case does not seem unreasonable in light of
STC.UNM’s stated theory of infringement. In that regard,
the court fairly could find that a test or certification that
the Wi-Fi Alliance has in its possession concerning whether
the products comply or are interoperable with the 802.11ac
standard could be relevant even if, as Apple contends, some
of the features targeted by the patents are considered op-
tional under the standard. Although Apple contends that
STC.UNM is likely unable to demonstrate infringement
here merely by showing compliance or interoperability
with the wireless standard, the question of whether it has
committed infringement is a merits issue, not one that
should be decided on mandamus review in the context of a
motion to transfer venue.
    Nor has Apple shown that Northern California has a
clearly more compelling local concern in adjudicating the
issues. Although Broadcom is headquartered in the
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IN RE: APPLE INC.                                                7



Northern District of California, the affidavit from Broad-
com’s employee that Apple submitted in support of the mo-
tion to transfer merely stated that the Broadcom chips at
the center of this dispute were developed “in California,”
within a business unit that “has members located in San
Jose, Irvine, and San Diego, California” with “[s]ome engi-
neering support . . . provided by Broadcom employees in
India.” A. 139, ¶8. Indeed, the Broadcom executive who
submitted the declaration, and who is presumably most
likely to be asked by Apple to testify, works outside the
Northern District of California in San Diego, California.
Thus, any suggestion by Apple that the Northern District
of California has a unique connection to the accused prod-
ucts in this case is not clearly convincing. Under these cir-
cumstances, the district court’s decision to try this case in
the Austin Division over Northern California did not
amount to a clear abuse of discretion.
      Accordingly,
      IT IS ORDERED THAT:
      The petition is denied.
                                   FOR THE COURT

          June 16, 2020            /s/ Peter R. Marksteiner
              Date                 Peter R. Marksteiner
                                   Clerk of Court

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