Case: 21-181 Document: 2-1 Page: 1 Filed: 09/08/2021
`
`Miscellaneous Docket No. ___
`
`
`
`IN THE
`UUnited 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. 6:19-cv-00505-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S PETITION FOR
`WRIT OF MANDAMUS
`
`
`
`Betty H. Chen
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`(650) 839-5070
`
`Benjamin C. Elacqua
`FISH & RICHARDSON P.C.
`1221 McKinney Street,
` Suite 2800
`Houston, TX 77010
`(713) 654-5300
`
`
`Melanie L. Bostwick
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Edmund R. Hirschfeld
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`
`Counsel for Petitioner
`
`
`
`
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2016 - Page 1
`
`

`

`Case: 21-181 Document: 2-1 Page: 2 Filed: 09/08/2021
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 1)
`July 2020
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`Case Number
`Short Case Caption
`Filing Party/Entity
`
`
`In re Apple Inc.
`
`Apple Inc.
`
`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`Date: (cid:19)(cid:28)(cid:18)(cid:19)(cid:26)(cid:18)(cid:21)(cid:19)(cid:21)(cid:20)
`
`
`
`Signature:
`
`/s/ Melanie L. Bostwick
`
`
`
`
`
`Name:
`
`Melanie L. Bostwick
`
`
`
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2016 - Page 2
`
`

`

`Case: 21-181 Document: 2-1 Page: 3 Filed: 09/08/2021
`
`FORM 9. Certificate of Interest
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Form 9 (p. 2)
`July 2020
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`(cid:1798) None/Not Applicable (cid:1798) None/Not Applicable
`
`Apple Inc.
`
`Apple Inc.
`
`None
`
`Additional pages attached
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2016 - Page 3
`
`

`

`Case: 21-181 Document: 2-1 Page: 4 Filed: 09/08/2021
`
`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
`
`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`See Attachment
`
`
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`None/Not Applicable
`
`Additional pages attached
`
`✔
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2016 - Page 4
`
`

`

`Case: 21-181 Document: 2-1 Page: 5 Filed: 09/08/2021
`
`Attachment
`4.(cid:3)Legal Representatives. List all law firms, partners, and associates(cid:3)
`that (a)appeared for the entities in the originating court or agency or (b)(cid:3)
`are expected to appear in this court for the entities. Do not include(cid:3)
`those who have already entered an appearance in this court. Fed. Cir.(cid:3)
`R.(cid:3)47.4(a)(4).
`
`Fish & Richardson P.C.: (cid:46)(cid:68)(cid:87)(cid:75)(cid:85)(cid:92)(cid:81)(cid:3)(cid:36)(cid:17)(cid:3)(cid:52)(cid:88)(cid:76)(cid:86)(cid:72)(cid:81)(cid:69)(cid:72)(cid:85)(cid:85)(cid:92)(cid:15)(cid:3)(cid:45)(cid:68)(cid:85)(cid:72)(cid:71)(cid:3)(cid:36)(cid:17)(cid:3)(cid:54)(cid:80)(cid:76)(cid:87)(cid:75)(cid:3)(cid:9)(cid:3)
`(cid:36)(cid:80)(cid:76)(cid:85)(cid:3)(cid:36)(cid:17)(cid:3)(cid:46)(cid:68)(cid:93)(cid:76)(cid:17)
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
`Neonode Ex. 2016 - Page 5
`
`

`

`Case: 21-181 Document: 2-1 Page: 6 Filed: 09/08/2021
`
`TABLE OF CONTENTS
`
`Page
`
`CERTIFICATE OF INTEREST ................................................................. i
`TABLE OF AUTHORITIES .................................................................... vii
`INTRODUCTION ...................................................................................... 1
`RELIEF SOUGHT ..................................................................................... 2
`ISSUE PRESENTED ................................................................................ 3
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY ................ 3
`Neonode, a Wyoming Company, Sues Apple for Patent
`Infringement in the Western District of Texas Despite
`Having No Connection to That District. ................................. 3
`Neonode’s Suit Targets Technology Designed and Developed
`in the Northern District Of California.................................... 5
`Apple Moves to Transfer the Case to the Northern District of
`California. ................................................................................ 8
`The Western District of Texas Denies Apple’s Transfer
`Motion. ................................................................................... 10
`REASONS FOR ISSUING THE WRIT .................................................. 13
`I.
`The District Court Contradicted Precedent And Clearly
`Abused Its Discretion In Assessing the Private-Interest
`Factors. .................................................................................. 16
`A.
`The district court abused its discretion in finding
`that the relative ease of access to sources of proof
`does not strongly favor of transfer. .............................. 16
`The district court abused its discretion in refusing
`to weigh the compulsory-process factor strongly in
`favor of transfer. ........................................................... 21
`The district court abused its discretion in refusing
`to weigh the witness-convenience factor strongly in
`favor of transfer. ........................................................... 27
`
`B.
`
`C.
`
`v
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`IPR2021-01041 (US 8,095,879)
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`Case: 21-181 Document: 2-1 Page: 7 Filed: 09/08/2021
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`D. The district court abused its discretion in
`according undue weight to Neonode’s separate
`lawsuit against Samsung. ............................................ 34
`II. The District Court Contradicted Precedent And Clearly
`Abused Its Discretion In Assessing the Public-Interest
`Factors. .................................................................................. 36
`A.
`The district court abused its discretion in
`concluding that the local-interest factor only
`slightly, rather than strongly, favors transfer. ........... 36
`The district court drastically overstated concerns
`about court congestion. ................................................ 39
`CONCLUSION ........................................................................................ 42
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`B.
`
`vi
`
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`IPR2021-01041 (US 8,095,879)
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`

`

`Case: 21-181 Document: 2-1 Page: 8 Filed: 09/08/2021
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2011) ..................................................... 17, 37
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ................................................. 40, 42
`In re Apple Inc.,
`743 F.3d 1377 (Fed. Cir. 2014) ........................................................... 24
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ...... 14, 15, 18, 21, 37, 38, 39, 40, 41, 42
`In re Apple Inc.,
`581 F. App’x 886 (Fed. Cir. 2014) ........................................... 21, 24, 27
`Cheney v. U.S. Dist. Ct.,
`542 U.S. 367 (2004) ............................................................................. 13
`In re DISH Network L.L.C.,
`--- F.App’x ---, 2021 WL 3574047 (Fed. Cir. Aug. 13, 2021) ............... 36
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ................................... 16, 21, 22, 27, 33
`Hoffman v. Blaski,
`363 U.S. 335 (1960) ............................................................................. 20
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ........................................................... 26
`In re HP Inc.,
`826 F. App’x 899 (Fed. Cir. 2020) ................................................. 15, 24
`In re Hulu, LLC,
`--- F.App’x ---, 2021 WL 3278194
`(Fed. Cir. Aug. 2, 2021) ..................................................... 15, 23, 39, 41
`
`vii
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`Case: 21-181 Document: 2-1 Page: 9 Filed: 09/08/2021
`
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ................................................. 36, 40
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009) ..................................................... 15, 16
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) ............................................................... 18
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ............... 13, 15, 29, 35, 36, 37, 39, 40, 41
`In re TracFone Wireless, Inc.,
`852 F. App’x 537 (Fed. Cir. 2021) ................................................. 13, 15
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) ............................................... 13, 14, 26
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ............................................................................. 26
`In re Verizon,
`635 F.3d 559 (Fed. Cir. 2011) ............................................................. 36
`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) ......................................................... 25, 31
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .......... 13, 14, 15, 16, 17, 18, 21, 25, 26, 34
`In re Zimmer Holdings, Inc.,
`609 F.3d 1378 (Fed. Cir. 2010) ........................................................... 35
`Statutes & Rules
`28 U.S.C. § 1404(a) ........... 1, 2, 8, 13, 15, 19, 20, 25, 26, 27, 29, 31, 37, 42
`
`viii
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`
`

`

`Case: 21-181 Document: 2-1 Page: 10 Filed: 09/08/2021
`
`Fed. R. Civ. P. 45(c)(1)(A) ........................................................................ 22
`Fed. R. Civ. P. 45(c)(1)(B) ........................................................................ 22
`Other Authorities
`Complaint, Neonode Smartphone LLC v. Samsung Elects. Co.,
`No. 6:20-cv-00507 (W.D. Tex. June 8, 2020), Dkt. No. 1 ...................... 4
`
`
`
`ix
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
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`

`

`Case: 21-181 Document: 2-1 Page: 11 Filed: 09/08/2021
`
`INTRODUCTION
`Petitioner Apple Inc. respectfully requests that this Court issue a
`
`writ of mandamus to correct the district court’s refusal to transfer this
`
`case from the Western District of Texas to the Northern District of
`
`California. The Court has granted similar mandamus relief several
`
`times in recent years. Along the way, it has admonished the same
`
`district court to correct a range of clear errors in the way it applies
`
`28 U.S.C. § 1404(a)’s transfer standard. Yet those same clear errors
`
`recurred here, yielding a patently erroneous result.
`
`The case for transfer is overwhelming. Plaintiff Neonode
`
`Smartphone LLC, a Wyoming entity, accuses Apple’s iPhone and iPad
`
`products of infringing its patents, including through the use of
`
`applications provided by third parties such as Google. The Northern
`
`District of California is where Apple designed and developed the
`
`accused products; where all relevant party witnesses reside; where
`
`several third-party witnesses are subject to compulsory process; and
`
`where the relevant documentary evidence is located. The Western
`
`District of Texas, in contrast, has absolutely no connection to the
`
`lawsuit. The § 1404(a) analysis could hardly be more one-sided.
`
`1
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`IPR2021-01041 (US 8,095,879)
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`Case: 21-181 Document: 2-1 Page: 12 Filed: 09/08/2021
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`In holding otherwise, the district court repeated abuses of
`
`discretion that this Court has already identified and rejected. Among
`
`other things, it gave no weight to the location of electronically stored
`
`evidence or the convenience of specifically identified party witnesses.
`
`And it assessed each venue’s local interest based on general contacts
`
`with the parties rather than specific connections to this litigation. That
`
`constellation of familiar missteps warrants mandamus in its own right.
`
`Making matters worse, the district court also introduced a new
`
`error. It acknowledged Apple’s relevant witnesses and documents in
`
`the Northern District of California. But rather than credit them in
`
`favor of transfer, the court turned § 1404(a) on its head by first
`
`assuming the case should proceed in the Western District of Texas, then
`
`hypothesizing various ways to justify Neonode’s venue selection—such
`
`as speculating that Apple could pick different witnesses and relocate its
`
`evidence. That is not how the statute works.
`
`RELIEF SOUGHT
`Apple respectfully requests that the Court issue a writ of
`
`mandamus directing the district court to transfer this case to the
`
`Northern District of California.
`
`2
`
`Google v. Neonode
`IPR2021-01041 (US 8,095,879)
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`
`

`

`Case: 21-181 Document: 2-1 Page: 13 Filed: 09/08/2021
`
`ISSUE PRESENTED
`Whether Apple is entitled to a writ of mandamus to compel the
`
`district court to transfer the underlying litigation to the Northern
`
`District of California.
`
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY
`
`Neonode, a Wyoming Company, Sues Apple for Patent
`Infringement in the Western District of Texas Despite Having No
`Connection to That District.
`Neonode Smartphone LLC is a recently formed patent-holding
`
`company incorporated and headquartered in Wyoming. Appx25. It
`
`does not design, sell, or manufacture any product. Instead, Neonode’s
`
`only operations are its ongoing efforts to license patents or assert them
`
`in litigation. Those operations are linked to two California-based
`
`entities. Neonode’s parent company, Aequitas Technologies LLC, is
`
`located in Irvine, California. Appx152-153. Aequitas, in turn, has
`
`ongoing profit-sharing agreements with the original assignee of the
`
`patents at issue here: Neonode Inc., a Delaware corporation. As of the
`
`time the complaint was filed, Neonode Inc.’s principal place of business
`
`was in Stockholm, Sweden, and its U.S. office was located in San Jose,
`
`in the Northern District of California. Appx108; Appx120, Appx122.
`
`3
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`IPR2021-01041 (US 8,095,879)
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`
`

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`Case: 21-181 Document: 2-1 Page: 14 Filed: 09/08/2021
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`Just two months after its formation, Neonode sued Apple for
`
`patent infringement in the Waco Division of the Western District of
`
`Texas. See Appx24-26. Its complaint alleged that Apple’s iPhone and
`
`iPad devices, running Apple’s iOS operating system software and
`
`certain third-party software applications, infringe two patents: U.S.
`
`Patent Nos. 8,095,879 and 8,812,993. Both patents relate to the use of
`
`swiping gestures to operate the touch-sensitive screen of a mobile
`
`computing device. See Appx27. The ’879 patent claims swiping to
`
`activate a function, see Appx36, while the ’993 patent claims swiping to
`
`transition from a state where “tap-activatable icons” are absent to one
`
`where they are present, Appx57. The patents were prosecuted by a firm
`
`headquartered in the Northern District of California. Appx153.
`
`Neonode also filed a distinct patent-infringement lawsuit in the
`
`Waco Division of the Western District of Texas against Samsung. See
`
`Complaint, Neonode Smartphone LLC v. Samsung Elecs. Co., No. 6:20-
`
`cv-00507 (W.D. Tex. June 8, 2020), Dkt. No. 1. That suit alleges that
`
`the native software on certain Samsung devices—which is Android
`
`software, in contrast to Apple’s iOS software—infringes the ’879 and
`
`’993 patents. The suit accuses distinct features not found on Apple
`
`4
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`IPR2021-01041 (US 8,095,879)
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`

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`Case: 21-181 Document: 2-1 Page: 15 Filed: 09/08/2021
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`devices, including Samsung’s interface for accepting or declining a call.
`
`See id. ¶¶ 32, 49-54. And, unlike here, Neonode’s allegations center
`
`primarily on Samsung’s native software, rather than third-party
`
`applications (or Apple’s software).
`
`Neonode’s Suit Targets Technology Designed and Developed in
`the Northern District Of California.
`Neonode’s suit accuses nearly all iPhone and iPad products of
`
`infringement. Appx36, Appx38, Appx39-40, Appx42.1 Neonode alleges,
`
`for instance, that the accused Apple devices infringe the ’879 patent
`
`when a user downloads third-party keyboard applications that
`
`purportedly enable users to enter text by touching a letter and gliding
`
`away from that letter. Appx38-55. The complaint identifies two
`
`examples of these accused third-party applications: GBoard, provided
`
`by Google, Appx40-41, and Swype, provided by Nuance, Appx34-35,
`
`Appx52. Neonode also asserts that certain newer iPhone and iPad
`
`devices provide this functionality through the QuickPath feature of
`
`Apple’s native iOS software. Appx38. And Neonode alleges that certain
`
`
`1 Apple cites Neonode’s infringement contentions to help the Court
`understand the subject matter of this dispute and what evidence will
`likely be relevant. Apple does not admit the truth of any allegation or
`characterization.
`
`5
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`IPR2021-01041 (US 8,095,879)
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`Case: 21-181 Document: 2-1 Page: 16 Filed: 09/08/2021
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`iPhone and iPad products infringe the ’993 patent by enabling users to
`
`access certain features by swiping up or down on the device’s lock
`
`screen. See Appx36-37, Appx56-63.
`
`Apple, a California corporation, designed and developed the
`
`accused features of the iPhone and iPad products within the Northern
`
`District of California. Apple’s global headquarters are located there.
`
`Appx93-101. So are its primary research and development facilities.
`
`Appx93-94. Apple’s primary marketing, sales, and finance decisions
`
`also occur in the Northern District of California, and its product-
`
`revenue business records are stored there. Appx93-94. Not
`
`surprisingly, nearly all of the design, development, and marketing of
`
`the allegedly infringing technology took place in the Northern District
`
`of California. Appx96-101. No such activity occurred in the Western
`
`District of Texas. Appx96-101.
`
`The Apple employees who participated in and are most
`
`knowledgeable about the accused activities are likewise in the Northern
`
`District of California. For instance, Apple engineers and managers
`
`responsible for designing and developing the accused features have
`
`confirmed that their primary workplaces are in the Northern District of
`
`6
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`Case: 21-181 Document: 2-1 Page: 17 Filed: 09/08/2021
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`California, and that no one on the relevant teams worked in the
`
`Western District of Texas. Appx96-99. Apple employees responsible for
`
`marketing, licensing, and promoting the accused features and devices
`
`have confirmed the same. Appx99-100. Although Apple also has a
`
`campus in Austin, which is within a different division of the Western
`
`District of Texas, sworn testimony demonstrates that Austin-based
`
`Apple employees are not meaningfully involved in the research, design,
`
`development, or marketing of the accused features. Appx99-100.
`
`As a result, nearly all of the paper and electronic records relevant
`
`to the allegedly infringing products are in the Northern District of
`
`California. Appx96, Appx99, Appx100-101. Some of the electronic
`
`information resides on local computers, id., such as the computers of the
`
`Apple employees in the Northern District of California who worked on
`
`the accused functionalities, Appx320; Appx330. Other information
`
`resides on secure servers located in the Northern District of California,
`
`accessible to employees with the requisite credentials, nearly all of
`
`whom are in California. Appx96.
`
`The two third-party keyboard applications that Neonode has
`
`highlighted, GBoard and Swype, are likewise connected to the Northern
`
`7
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`Case: 21-181 Document: 2-1 Page: 18 Filed: 09/08/2021
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`District of California. Google, which provided GBoard, is
`
`headquartered in the district. Appx155. And Nuance, which provided
`
`Swype, has significant operations there. Appx161. There is no record
`
`evidence of any witnesses or documentation in Texas that are relevant
`
`to these third-party applications.
`
`Apple Moves to Transfer the Case to the Northern District of
`California.
`In light of the strong connections between this case and
`
`California, and the corresponding lack of any connection to Texas, Apple
`
`moved to transfer this case to the Northern District of California
`
`pursuant to 28 U.S.C. § 1404(a). Appx67-68. Apple supported its
`
`transfer motion with extensive documentation and a sworn declaration
`
`from Mark Rollins, a corporate representative at Apple. See Appx92-
`
`185. That evidence established that the § 1404(a) factors clearly favor
`
`transfer. Nearly every relevant witness, including each Apple employee
`
`likely to testify, is located in the Northern District of California.
`
`Appx77-79. Several relevant third-party witnesses would, if necessary,
`
`be subject to compulsory process in that district. Appx80-81. By
`
`contrast, not a single likely witness is located in, or subject to
`
`compulsory process from, the Western District of Texas. Appx82.
`
`8
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`Case: 21-181 Document: 2-1 Page: 19 Filed: 09/08/2021
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`Relevant documents are also overwhelmingly located in the Northern
`
`District of California, some accessible only by credentialed employees
`
`working there. Appx78-80; Appx330. Overall, the Northern District of
`
`California’s close connections to the entities and activities at issue give
`
`it a strong local interest in the case, while the Western District of Texas
`
`has no link to the dispute. Appx85. On top of all that, the Northern
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`District of California’s docket is substantially less congested, clearing
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`the way for a faster resolution. Appx84.
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`Instead of attempting to use discovery to identify a legitimate
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`connection to its chosen venue, Neonode searched the Internet to
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`identify a handful of Austin-based Apple employees within the Western
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`District of Texas whose LinkedIn profiles mentioned the accused
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`devices—that is, iPhones or iPads. Appx198-199 see also Appx308-313;
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`Appx314-315. Mr. Rollins confirmed through sworn testimony that
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`those cherry-picked employees were unlikely to have information
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`relevant to this litigation, and Neonode made no effort to dispute this
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`testimony or otherwise probe the potential knowledge of its randomly
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`selected targets. Appx335-338. Instead, Neonode fell back on Apple’s
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`general presence in Austin, untethered to the facts of this litigation.
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`Appx204-205.
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`Neonode also urged the district court to disregard the presence of
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`relevant electronic documents in the Northern District of California on
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`the theory that electronic files are “generally accessible.” Appx194.
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`And it contended that transferring this case without transferring
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`Neonode’s separate suit against Samsung would create undue judicial
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`inefficiencies. Appx191. Neonode did not acknowledge the significant
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`differences between the accused features and products in each case.
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`The Western District of Texas Denies Apple’s Transfer Motion.
`The district court denied Apple’s transfer motion. Appx1-14.
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`Following Neonode’s lead, the court inexplicably ignored Apple’s
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`evidence and relied on a range of legally erroneous principles.
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`To begin with, the district court ignored Fifth Circuit precedent by
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`dismissing any “focus on physical location of electronic documents” in
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`the Northern District of California as “out of touch with modern patent
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`litigation,” given the relative ease of moving electronic files. Appx4. As
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`for the undisputed fact that certain documents are accessible only by
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`credentialed employees located in the Northern District of California,
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`10
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`the district court sua sponte suggested that Apple could simply provide
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`access to those documents in the Western District of Texas by granting
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`employees in its Austin office the necessary credentials. Appx5. On
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`those grounds, the court concluded that access to sources of proof was
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`neutral despite the absence of any identified documents within the
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`Western District of Texas. Appx6.
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`Turning to witness convenience and availability, the district court
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`diminished the significance of witnesses in the Northern District of
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`California by presuming—contrary to this Court’s guidance—that “the
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`convenience of party witnesses is given little weight” and that “no more
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`than a few party witnesses … will testify live at trial.” Appx8. The
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`court also reasoned, without any apparent basis, that the Austin-based
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`Apple employees Neonode found through LinkedIn were “equally [as]
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`qualified” to testify as the teams in California that actually worked on
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`the accused technology. Appx8-9. The district court thus concluded
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`that witness convenience and availability were neutral factors in the
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`transfer analysis, despite the clear concentration of witnesses in the
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`Northern District of California. Appx9.
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`11
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`The district court next considered each venue’s local interest in
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`the case. Again defying this Court’s instructions, the district court
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`evaluated only how the total size of Apple’s Northern California
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`operations compares to the total size of its Austin campus, without
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`considering the link between either site and the specific events at issue
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`here. The court concluded that the local-interest factor only “slight[ly]
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`favors transfer” because Apple’s Northern California operations in total
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`are “relatively bigger” than all its activities in Austin. Appx13
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`Finally, the district court found that administrative and practical
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`considerations weigh strongly against transfer. Relying on its own
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`capacity to push aggressive trial schedules, the court concluded that the
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`Western District of Texas is less congested than the Northern District of
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`California, despite Apple’s data to the contrary. Appx12. The district
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`court also found that Neonode’s suit against Samsung “strongly weighs
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`against transfer,” emphasizing that some claim construction issues
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`would overlap. Appx10-11. The court downplayed the various
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`differences between the suits, including that the Samsung action
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`involved distinct accused software and hardware.
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`12
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`All told, the district court concluded that two factors (court
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`congestion and inefficiencies associated with Neonode’s case against
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`Samsung) weigh strongly against transfer; one factor (local interest)
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`weighs slightly in favor of transfer; and all other factors, including
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`witness convenience and availability, are neutral. It deemed those
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`findings insufficient to satisfy § 1404(a)’s transfer standard. Appx14.
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`REASONS FOR ISSUING THE WRIT
`A petitioner seeking mandamus relief must (1) show a “clear and
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`indisputable” right to the writ; (2) have “no other adequate means to
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`attain the relief he desires”; and (3) demonstrate that “the writ is
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`appropriate under the circumstances.” In re Volkswagen of Am., Inc.,
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`545 F.3d 304, 311 (5th Cir. 2008) (en banc) (“Volkswagen II”) (quoting
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`Cheney v. U.S. Dist. Ct., 542 U.S. 367, 380-81 (2004)). “In transfer
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`cases, those requirements generally coalesce into one inquiry: whether
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`the district court’s denial of transfer amounted to a clear abuse of
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`discretion under governing legal standards.” In re TracFone Wireless,
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`Inc., 852 F. App’x 537, 538 (Fed. Cir. 2021) (citing In re TS Tech USA
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`Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008)); see also In re Samsung
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`Elecs. Co., 2 F.4th 1371, 1375, 1379-81 (Fed. Cir. 2021). A district court
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`commits such an abuse of discretion by relying on clearly erroneous
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`factual findings, erroneous conclusions of law, or clear misapplications
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`of law to fact to reach a “patently erroneous result.” Volkswagen II, 545
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`F.3d at 310-12, 318-19; see In re Apple Inc., 979 F.3d 1332, 1346 (Fed.
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`Cir. 2020) (“District courts have no discretion to make” “erroneous
`
`conclusions of law[] or misapplications of law to fact.”).
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`In reviewing the district court’s decision to deny transfer, “this
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`court applies the laws of the regional circuit in which the district court
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`sits, in this case the Fifth Circuit.” TS Tech., 551 F.3d at 1319. Under
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`Fifth Circuit precedent, transfer is required when a movant “clearly
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`demonstrate[s] that [it] is ‘[f]or the convenience of parties and
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`witnesses, [and] in the interest of justice.” Volkswagen II, 545 F.3d at
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`315. That analysis turns on several private- and public-interest factors.
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`The private-interest factors include: “(1) the relative ease of access to
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`sources of proof; (2) the availability of compulsory process to secure the
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`attendance of witnesses; (3) the cost of attendance for willing witnesses;
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`and (4) all other practical problems that make trial of a case easy,
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`expeditious and inexpensive.” Id. The public-interest factors include:
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`“(1) the administrative difficulties flowing from court congestion; (2) the
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`local interest in having localized interests decided at home; (3) the
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`familiarity of the forum with the law that will govern the case; and
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`(4) the avoidance of unnecessary problems of conflict of laws [or in] the
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`application of foreign law.” Id. (alteration in original).
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`In this case, the § 1404(a) analysis reveals the type of “stark
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`contrast in relevance, convenience, and fairness between the two
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`venues” that compels transfer. In re Nintendo Co., 589