Federal Circuit grants writ of mandamus to transfer case from Texas to California. IN RE APPLE

Federal Circuit grants writ of mandamus to transfer case from Texas to California. IN RE APPLE

In the United States the federal rules of civil procedure govern the filing of law suits in federal courts, including lawsuits related to patent infringement.

The venue statute, 28 U. S. C. §1400(b), provides that “any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” In TC HEARTLAND LLC v. KRAFT FOODS GROUP BRANDS LLC.  No. 16–341 (US 2017) the United States Supreme Court clarified the definition of the word “reside” with respect to patent infringement defendants.

28 U.S. Code § 1404 allows for a Change of venue.  Specifically 28 U.S. Code § 1404(a) states: For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.  The question then becomes where this permissive language, that a court may transfer a case, becomes compulsory when a patent infringement case is filed in a District Court that has little contact with the parties.

IN RE: APPLE INC.,  20-135 (C.A.F.C. 2020) is a case where the Federal Circuit found that the District Court abused its discretion by not granting a change of venue.

This case began when Uniloc was granted U.S. Patent No. 6,467,088 (“the ’088 patent”) entitled “Reconfiguration manager for controlling upgrades of electronic devices.”  In September 2019, Uniloc sued Apple in the Waco Division of Western District of Texas, alleging that several Apple products infringe the ’088 patent.  According to Uniloc, 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, under 28 U.S.C. § 1404(a), to Northern District of California on the basis that it would be more convenient to litigate the case in that district. The District Court denied the motion and said a written decision denying the order would be issued.  A Markman hearing was held and discovery order were issued by the District Court.  Apple then filed a writ of mandamus with the Court of Appeals for the Federal Circuit.  The District Court issued its order denying the transfer a week later.

In its opinion, the Federal Circuit noted that a writ of mandamus is an extraordinary remedy available to correct a clear abuse of discretion or usurpation of judicial power. A district court abuses its discretion if it: (1) relies on clearly erroneous factual findings; (2) relies on erroneous conclusions of law; or (3) misapplies the law to the facts. The primary question for the Federal Circuit was whether Apple has shown a clear and indisputable right to issuance of the writ.

Transfer requests under 28 U.S.C. § 1404(a) are assessed using several private and public interest factors. The private interest factors are: (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive. The public interest factors are: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign law.

The Federal Circuit found that the sources of proof, cost of attendance for witnesses, the local interest and the familiarity of the forum all favored the California court over the Texas court.  Based on these findings the Federal Circuit granted Apples writ of mandamus to have the case transferred to Northern District of California.

It is relatively rare that an appeals court will transfer a case which has already begun from one court to another.  It will be interesting to see if Uniloc appeal this ruling further.

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