Case: 22-137
`
`Document: 16
`
`Page: 1
`
`Filed: 05/26/2022
`
`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`
`______________________
`
`In re: APPLE INC.,
`Petitioner
`______________________
`
`2022-137
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:21-
`cv-00528-ADA, Judge Alan D. Albright.
`______________________
`
`ON PETITION
`______________________
`
`Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
`
`LOURIE, Circuit Judge.
`
`O R D E R
`
`Apple Inc. petitions for a writ of mandamus to direct
`the United States District Court for the Western District of
`Texas to transfer this patent infringement suit to the
`United States District Court for the Northern District of
`California. BillJCo, LLC opposes the petition. For the rea-
`sons that follow, we grant Apple’s petition.
`
`BillJCo is a Texas company headquartered in Flower
`Mound, within the Eastern District of Texas. BillJCo was
`founded by Bill Johnson to pursue opportunities relating to
`patents focusing on distributed mobile applications.
`
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`EXHIBIT 1012 - PAGE 0001
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`Case: 22-137
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`Document: 16
`
`Page: 2
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`Filed: 05/26/2022
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`2
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`IN RE: APPLE INC.
`
`BillJCo owns six patents concerning beacon technology, all
`naming Mr. Johnson as the sole inventor or as co-inventor
`along with his son, Jason Johnson, who resides in Waco.
`
`In May 2021, BillJCo filed this action in the Western
`District of Texas, Waco Division, to assert those patents
`based on Apple’s use of its iBeacon protocol. Apple moved
`to transfer the action to the Northern District of California
`under 28 U.S.C. § 1404(a), arguing that Apple researched,
`designed, and developed the accused technology from its
`headquarters within the transferee venue; that evidence
`and witnesses would likely be in Northern California; and
`that neither BillJCo nor this litigation had any meaningful
`connection to Western Texas. The district court denied the
`motion, finding that this case could have been brought in
`the Northern District of California, but disagreeing with
`Apple that that forum was clearly more convenient.
`
`We apply regional circuit law on transfer motions. See
`In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir.
`2008). In deciding whether the district court should have
`transferred under § 1404(a), we ask whether “the movant
`demonstrate[d] that the transferee venue is clearly more
`convenient” based on an evaluation of the private and pub-
`lic interest factors. In re Radmax, Ltd., 720 F.3d 285, 288
`(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc., 545
`F.3d 304, 315 (5th Cir. 2008) (en banc)) (internal quotation
`marks omitted). Mindful that the district court is generally
`better positioned to evaluate the evidence, we review a
`transfer ruling for a clear abuse of discretion. See In re
`Vistaprint Ltd., 628 F.3d 1342, 1344–46 (Fed. Cir. 2010).
`
`The district court clearly abused its discretion in con-
`cluding that the private and public factors did not favor
`transfer here. We begin with the private factors: (1) the
`relative ease of access to sources of proof; (2) the availabil-
`ity of compulsory process to secure the attendance of wit-
`nesses; (3) the cost of attendance for willing witnesses; and
`(4) all other practical problems that make a trial easy,
`
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`Case: 22-137
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`Document: 16
`
`Page: 3
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`Filed: 05/26/2022
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`IN RE: APPLE INC.
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`3
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`expeditious, and inexpensive. Volkswagen, 545 F.3d at 315
`(citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6
`(1981)). Those factors clearly support transfer to Northern
`California.
`
`The district court correctly found that the access to
`sources of proof and willing witness factors both favor the
`transferee venue. Apple stated that its documents relating
`to the research, design, development and operation of the
`accused products were generated in Northern California
`and that its source code was developed, and is accessible
`for inspection, from Northern California and controlled on
`a need-to-know basis, which favors transfer even if Apple
`in theory could offer access to that information at its offices
`in Austin, Texas. See In re Apple Inc., No. 2021-181, 2021
`WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021). Furthermore,
`the court plausibly found that Northern California would
`be more convenient overall for the party witnesses.
`
`Among the private factors, the district court’s only ba-
`sis for discounting the convenience of the transferee forum
`was its general ability to compel the testimony of Jason
`Johnson. Appx10. But that conclusion clearly overlooks
`the record in two key respects. First, BillJCo has all along
`indicated that Jason Johnson is willing to testify in the
`Western District of Texas, rendering it error to give such
`weight to the court’s ability to compel his testimony. See
`Appx104 (“Mr. Johnson’s son, Jason Johnson, is a co-inven-
`tor for one of the patents at issue . . . . Another willing non-
`party witness is . . . .”); Resp. 16 (“[W]hile Jason Johnson
`may be a willing witness to a trial mere miles from his
`home (the WDTX), he may not be willing witness at a trial
`thousands of miles from his home . . . .”). Second, the
`weight placed on Jason Johnson’s presence in Waco by the
`district court is too great in the context of the record as a
`whole, given the numerous potential witnesses Apple iden-
`tified in Northern California. Under these circumstances,
`the private transfer factors clearly favor transfer.
`
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`Case: 22-137
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`Document: 16
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`Page: 4
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`Filed: 05/26/2022
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`4
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`IN RE: APPLE INC.
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`We now turn to the public interest factors: (1) the ad-
`ministrative 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 prob-
`lems of conflict of laws or in the application of foreign law.
`Volkswagen, 545 F.3d at 315 (citing Piper Aircraft, 454 U.S.
`at 241 n.6). These factors generally focus on any potential
`administrative and legal problem or advantage offered by
`one forum over another in handling the case. Piper Air-
`craft, 454 U.S. at 241. In this case, none of these consider-
`ations is sufficient to override the striking imbalance in
`favor of transfer on the private interest factors.
`
`While recognizing that the Northern District of Califor-
`nia had a local interest in resolving this matter because the
`accused products were researched, designed, and devel-
`oped from that district, the district court nonetheless con-
`cluded that the local interest factor weighed slightly in
`favor of the Western District of Texas. There are two fun-
`damental problems with the district court’s analysis that
`demonstrate a clear abuse of discretion even under the
`highly deferential standard of review. First, the court in-
`correctly gave equal consideration to the fact that “BillJCo
`is headquartered in Flower Mound, Texas” where the pa-
`tented invention was developed. Appx18. Since Flower
`Mound is in the Eastern District of Texas, not the Western
`District of Texas, BillJCo’s office in Texas gives plaintiff’s
`chosen forum no comparable local interest. See In re
`Google LLC, No. 2021-171, 2021 WL 4592280, at *6 (Fed.
`Cir. Oct. 6, 2021) (finding error with district court’s reli-
`ance on plaintiff’s incorporation and office in Texas, where
`the office was located outside the Western District).
`
`Second, the court assigned too much weight to Apple’s
`“substantial general presence in this District.” Appx19. As
`our precedent has made clear, an assessment of the local
`interest factor must focus on whether there are “‘signifi-
`cant connections between a particular venue and the events
`
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`Case: 22-137
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`Document: 16
`
`Page: 5
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`Filed: 05/26/2022
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`IN RE: APPLE INC.
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`5
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`In re Apple Inc., 979 F.3d 1332,
`that gave rise to a suit.’”
`1345 (Fed. Cir. 2020) (quoting In re Acer Am. Corp., 626
`F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in Apple)).
`Nothing in the court’s opinion or the record offers any indi-
`cation that Apple’s in-district offices had any involvement
`in the research, design, or development of the accused tech-
`nology. The court’s reliance on these offices, which lack
`such a connection to the locus of the events giving rise to
`the dispute, amounts to a clear abuse of discretion. The
`upshot is that this factor also favors transfer.
`
`The district court also weighed the court congestion
`factor here against transfer based on its faster time to trial.
`But precedent does not permit giving such speculation
`about whether a court can reach trial faster more weight
`than all the remaining factors. See In re Genentech, Inc.,
`566 F.3d 1338, 1347 (Fed. Cir. 2009) (holding that when
`other relevant factors weigh in favor of transfer or are neu-
`tral, “then the speed of the transferee district court should
`not alone outweigh all of those other factors”).
`
`Under the circumstances in this case, we conclude that
`the district court’s ruling that Apple had failed to show that
`the transferee venue was
`clearly more convenient
`amounted to a clear abuse of discretion.
`
`Accordingly,
`
`IT IS ORDERED THAT:
`
`The petition is granted to the extent that the district
`court’s order denying Apple’s motion is vacated and the dis-
`trict court is directed to grant a transfer of the case to the
`Northern District of California.
`
`May 26, 2022
`Date
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
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