Case: 20-104 Document: 36 Page: 1 Filed: 12/20/2019
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`NOTE: This order is nonprecedential.
`
`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-
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`plaint filed by Fintiv against Apple in the Waco Division of
`the Western District of Texas. Fintiv’s infringement
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`Case: 20-104 Document: 36 Page: 2 Filed: 12/20/2019
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`IN RE: APPLE INC.
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`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
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`Case: 20-104 Document: 36 Page: 3 Filed: 12/20/2019
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`IN RE: APPLE INC.
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`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
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`Case: 20-104 Document: 36 Page: 4 Filed: 12/20/2019
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`IN RE: APPLE INC.
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`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
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`Case: 20-104 Document: 36 Page: 5 Filed: 12/20/2019
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`IN RE: APPLE INC.
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`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:
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`The petition is denied.
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` December 20, 2019
` Date
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`s29
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`
`FOR THE COURT
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