Case 6:22-cv-00149-ADA Document 78 Filed 02/02/23 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`SPACETIME3D, INC.,
`Plaintiff
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`-vs-
`APPLE INC.,
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`Defendant
`
`§
`§
`§
`§
`§
`§
`§
`§
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`6-22-CV-00149-ADA
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`MEMORANDUM OPINION AND ORDER DENYING APPLE INC.’S MOTION STAY
`[ECF No. 55]
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`Before the Court is Defendant Apple Inc.’s (“Apple”) Motion to Stay Pending Transfer.
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`ECF No. 55 (the “Motion”). The Court heard oral argument on the Motion on January 30, 2023.
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`ECF No. 74. As ordered by the Court during the January 30 hearing, the Court DENIES Apple’s
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`Motion. This Order reflects those rulings from the bench. After careful consideration of the briefs
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`and applicable law, the Court is of the opinion that Apple’s Motion should be DENIED.
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`BACKGROUND
`I.
`On February 10, 2022, Plaintiff SpaceTime3D, Inc. (“SpaceTime”) sued Apple by alleging
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`infringement of three patents: U.S. Patent Nos. 8,881,048 (the “’048 Patent”), 9,304,654 (the “’654
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`Patent”), and 9,696,868 (the “’868 Patent”) (collectively “the Asserted Patents”). See ECF No. 1 ¶¶
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`16–19 (the “Complaint”). The Asserted Patents are alleged to cover “improvements to then-existing
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`computer graphical user interfaces (‘GUIs’), by providing an interactive computing interface and
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`sorting interface comprising information from real-time and static sources.” Id. ¶ 21. SpaceTime
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`alleges that Apple both indirectly and willfully infringed the Asserted Patents. Id. ¶¶ 57, 82, 109,
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`135.
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`On July 14, 2022, Apple moved for intra-district transfer to the Austin Division of the
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`Western District of Texas. ECF No. 34. On November 14, 2022, fact discovery opened for all
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`purposes. ECF No. 31 at 3. The Markman hearing in this case was originally scheduled for
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`Case 6:22-cv-00149-ADA Document 78 Filed 02/02/23 Page 2 of 10
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`November 17, 2022. ECF No. 51. But on November 16, 2022, Apple filed the present Motion to
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`stay the proceedings in this case pending the Court’s ruling on Apple’s motion for intra-district
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`transfer. ECF No. 55. The Court postponed the Markman hearing in this case so that the parties
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`could conduct full briefing on the Motion. See ECF Nos. 62, 66. The Court then heard oral
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`argument on the Motion on January 30, 2023, ECF No. 74, in which the Court denied the Motion
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`for the reasons explained during that hearing (ECF No. 75) and as explained in more detail below.
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`II.
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`LEGAL STANDARDS
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`In determining whether to issue a stay of proceedings, courts consider four factors: (1)
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`whether the movant has made a showing of likelihood of success on the merits; (2) whether the
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`movant will suffer irreparable injury if the stay is not granted; (3) whether granting the stay would
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`substantially harm the other parties; and (4) whether the stay would serve the public interest. United
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`States v. McKenzie, 697 F.2d 1225, 1226 (5th Cir. 1983); Nken v. Holder, 556 U.S. 418, 434 (2009).
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`District courts possess an inherent power to manage their own docket, including the
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`discretionary power to stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997); In re Ramu
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`Corp., 903 F.2d 312, 318 (5th Cir. 1990). Stays are not awarded as a matter of right. Nken, 556 U.S.
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`at 427. The “standard is a demanding one” because a stay “is an intrusion into the ordinary
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`processes of administration and judicial review.” Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No.
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`2:19-cv-00259-JRG-RSP, 2020 WL 1433960, at *2-3 (E.D. Tex. Mar. 24, 2020). The movant has
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`the burden to “make out a clear case of hardship or inequity.” Neodron Ltd. v. Dell Techs. Inc., No.
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`1:19-CV-819, 2019 WL 9633629, at *1 (W.D. Tex. Dec. 16, 2019). To meet this burden, “the
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`moving party should show that its motion is supported by ‘genuine necessity.’ A court should not
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`decide a motion to stay based on a party’s speculative concerns.” Sierra Club v. Fed. Emergency
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`Mgmt. Agency, No. CIV. A. H-07-0608, 2008 WL 2414333, at *7 (S.D. Tex. June 11, 2008).
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`III. ANALYSIS
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`Apple’s motion to stay is premised on an erroneous assumption that motions for inter-
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`district and intra-district transfers should be treated no differently. That premise ignores caselaw
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`affording district courts more discretion and deference in adjudicating intra-district transfers than
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`inter-district transfers. See, e.g., True Chem. Sols., LLC v. Performance Chem. Co., No. 7-18-CV-
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`00078-ADA, 2021 WL 860009, at *1 (W.D. Tex. Mar. 8, 2021) (“It is well-settled that trial courts
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`have even greater discretion in granting intra-district transfers than they do in the case of inter-
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`district transfers.”). Apple has not cited a single authority that instructs district courts to stay cases
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`pending the resolution of intra-district transfer motions. Moreover, Apple has failed to show they
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`will suffer any prejudice should this Court wait to rule on its motion to transfer until closer to trial.
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`To be clear, the Court is not refusing to consider Apple’s motion for intra-district transfer. Instead,
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`the Court finds that it does not have to stay the proceedings or decide whether to transfer the case
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`intra district until closer to trial since this Court has the power to retain this case on its trial docket
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`regardless of whether the Court grants transfer or not—unlike in a motion for inter-district transfer.1
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`Accordingly, the Court DENIES Apple’s motion to stay for the following reasons.
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`A. Courts Treat Intra-District and Inter-District Transfer Motions Differently
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`In urging this Court to give “top priority” to its motion for intra-district transfer, Apple cites
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`only to cases involving inter-district transfers and says, without legal support, that “the need to
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`prioritize transfer motions applies equally to intra-district transfer.” Motion at 1. Apple fails to
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`identify a single case in which the Federal Circuit or Fifth Circuit instructed district courts to stay
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`cases pending the resolution of intra-district transfer motions—or even merely to prioritize them
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`1 Pursuant to the Standing Order for Discovery Hearings in Patent Cases; Standing Order Governing
`Proceedings 4.2 – Patent Cases (“OGP”), the Second Amened Standing Order Regarding Motions
`for Inter-District Transfer, and the Court’s typical practice, the Court rules on pending motions to
`transfer venue inter-district prior to Markman hearing in all cases.
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`before addressing other substantive issues. Apple’s position further ignores caselaw from both the
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`Fifth Circuit and this Court recognizing that trial courts enjoy greater discretion in deciding intra-
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`district transfer motions than inter-district motions. This alone weighs against Apple’s motion to
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`stay.
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`In Sundell v. Cisco Sys. Inc., 111 F.3d 892 (5th Cir. 1997) (per curiam), the Fifth Circuit
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`affirmed the district court’s denial of an intra-district transfer motion and observed: “Under 28
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`U.S.C. § 1404(b), the district court has broad discretion in deciding whether to transfer a civil action
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`from a division in which it is pending to any other division in the same district.” Indeed, citing
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`Sundell, this Court has recognized that “[i]t is well-settled that trial courts have even greater
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`discretion in granting intra-district transfers than they do in the case of inter-district transfers.” True
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`Chem., 2021 WL 860009, at *1. The greater discretion accorded to district courts makes sense “in
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`light of the absence of a divisional filing requirement and given a district court’s discretion in
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`deciding where court is to be held.” Smith v. Michels Corp., No. 2:13-CV-00185-JRG, 2013 WL
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`4811227, at *2 (E.D. Tex. Sept. 9, 2013) (denying intra-district transfer motion and finding that the
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`court “is allowed greater deference when considering § 1404(a) motions for intra-district change of
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`venue as opposed to inter-district transfer”). For this reason, the Eastern District of Texas has
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`repeatedly cautioned against motions for intra-district change of venue.2
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`Apple’s cited cases are not to the contrary. Apple primarily relies on the Fifth Circuit’s
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`opinion in In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013). Yet that decision merely held that
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`“[t]he § 1404(a) factors apply as much to transfers between divisions of the same district as to
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`transfers from one district to another.” Id. The Court does not disagree that the section 1404(a)
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`2 See, e.g., Rios v. Scott, No. 1:02-CV-136, 2002 WL 32075775, at *4 (E.D. Tex. July 13, 2002);
`Morrow v. City of Tenaha Deputy City Marshal Washington, No. CIV.A. 2:08-CV-288, 2008 WL
`5203843, at *2 (E.D. Tex. Dec. 11, 2008); Liles v. TH Healthcare, Ltd., No. 2:11- CV-528-JRG,
`2012 WL 3930616, at *6 (E.D. Tex. Sept. 10, 2012); Verde v. Stone Ridge, Inc., No. 6:14-CV-157,
`2014 WL 12489758, at *2 (E.D. Tex. Aug. 25, 2014).
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`factors apply as much to transfers between divisions of the same district as to transfers from one
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`district to another. But nowhere in In re Radmax does the Fifth Circuit hold that a district court must
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`prioritize resolution of a motion for intra-district transfer before a Markman hearing. Nor do the
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`several Federal Circuit cases that Apple relies on in support of its Motion. See, e.g., In re Apple Inc.,
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`52 F.4th 1360, 1361 (Fed. Cir. 2022); In re Apple Inc., No. 2022-163, 2022 WL 16754376 (Fed.
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`Cir. Nov. 8, 2022); In re Apple Inc., No. 2022-164, 2022 WL 16754153 (Fed. Cir. Nov. 8, 2022); In
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`re Apple Inc., 979 F.3d 1332, 1337 (2020). Each of these cases dealt with an inter-district motion to
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`transfer venue—not intra district. Accordingly, the Court rejects Apple’s arguments that these cases
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`compel the Court to prioritize intra-district transfer motions and stay this case.
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`B. Likelihood of Success Assumed
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`As to the first factor in the stay analysis, the Court does not substantively reach this factor
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`because even if Apple’s motion for intra-district transfer is likely to succeed, the other three factors
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`weigh strongly against a stay and collectively outweigh this factor. For purposes of this decision,
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`the Court assumes this factor favors Apple.
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`C. Apple fails to show an irreparable injury if the stay is not granted
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`Apple will not suffer irreparable harm absent a stay. Apple puts forth two complaints about
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`the hardship that it will purportedly suffer if this case were to proceed. Both are unpersuasive to the
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`Court.
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`First, Apple complains that it is “suffering continued prejudice” by preparing for a
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`Markman hearing and “embarking on what is expected to be intensive fact discovery.” Motion at 7.
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`But a Markman hearing is a fundamental component of any patent case no matter where a case is
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`litigated, and discovery is also a fundamental component of any case. And Apple waited to file its
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`motion to stay until only hours before the originally scheduled Markman hearing—after the Court
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`had already expended its resources to issue preliminary constructions and after the parties had
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`already prepared for the hearing. The discovery requests that SpaceTime has served cover topics
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`like infringement and validity of the asserted patents, Apple’s licensing practices, and Apple’s
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`development of the accused functionalities. They are foundational discovery requests to which
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`Apple would have to respond no matter the division in which the case was litigated. In short, the
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`fact that Apple will have participate in a Markman hearing and in discovery hardly shows that it
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`will suffer hardship, let alone “a clear case of hardship or inequity.” WSOU Invs. LLC v. ZTE Corp.,
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`No. 6:20-CV-00487-ADA, 2022 WL 479131, at *1 (W.D. Tex. Feb. 16, 2022) (quoting Neodron,
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`2019 WL 9633629, at *1).
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`That is all the more so where the Waco Division and the Austin Division are both within the
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`Western District of Texas and share the same local rules that govern discovery. See Rule CV-26, 30,
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`33, 36, Civil Rules, Local Court Rules for the Western District of Texas; accord Hogan v. Ford
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`New Holland, Inc., No. 95 C 53, 1995 WL 360466, at *3 (N.D. Ill. June 15, 1995) (observing that
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`while different federal districts have their own local rules that “lend them their own brands of
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`‘jurisdiction,’” that is not the case for two divisions within the Northern District of Illinois).
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`Tellingly, although Apple generally and noncommittedly observes that the Austin Division “has its
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`own procedures for cases that can differ significantly from those employed by this Court,” Motion
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`at 8, it fails to pinpoint what exact procedures it refers to and how, if at all, such procedures would
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`impact the discovery proceedings in this case.
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`Apple’s one example of supposed prejudice—that because certain judges in the Austin
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`Division of the Western District of Texas may have different procedures—is unavailing. According
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`to Apple, it is prejudiced because each Austin Division Judge has its own Proposed Scheduling
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`Order, which includes different rules regarding discovery. According to Apple, these differences
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`have wide implications for cost, time, and resources in pursuing discovery disputes through the
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`course of extensive fact discovery. Apple cites various supposed differences between this Court and
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`two of the Judges in the Austin division. ECF No. 66 at 5. According to Apple, Judge Yeakel
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`includes in his order that “there will be no intervention by the Court except in extraordinary
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`circumstances” for discovery matters, and that “no trial setting will be vacated because of
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`information obtained in post-deadline discovery.” Id. (citing Proposed Scheduling Order for Judge
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`Yeakel at 3). But then Apple concedes that “Judge Pittman [sic], on the other hand, has no such
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`language in his Scheduling Order.” Id. (citing Proposed Scheduling Order for Judge Pitman). Thus,
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`Apple argues that it is somehow prejudiced because “this Court also has its own discovery
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`procedures, which significantly differ from both Judge Yeakel and Judge Pittman’s [sic]
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`procedures.” Id. (citing Standing Order for Discovery Hearings in Patent Cases; Standing Order
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`Governing Proceedings 4.2 – Patent Cases). Apple fails to understand that it is highly speculative,
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`which Judge it will be assigned in the Austin Division and that I may still be the Judge assigned to
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`this case. And Apple fails to recognize that both Judge Yeakel and Pitman routinely transfer cases
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`assigned to them to two other Senior U.S. District Court Judges in the Western District of Texas,
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`Judge Ezra and Judge Nowlin. Apple presents no analysis of any differences between the
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`procedures of these judges and this Court that would require the conclusion that it is prejudiced by
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`not staying this case.
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`Although Apple notes different procedures for discovery with certain judges in the Austin
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`division, Apple fails to articulate any particularized prejudice it will suffer because of these
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`differences. Apple merely states that these differences will have generic implications on “cost, time,
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`and resources in pursuing discovery disputes.” ECF No. 66 at 5. But that is sheer speculation on
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`Apple’s part, and “[a] court should not decide a motion to stay based on a party’s speculative
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`concerns.” Sierra Club, 2008 WL 2414333, at *7. Moreover, Apple fails to even recognize that this
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`Court has held many patent and non-patent trials in the Austin Division of the U.S. District Court
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`for the Western District of Texas. Whether I am presiding over the instant Action or another Judge
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`would be assigned to this case is of no moment—it is a decision that is committed to the discretion
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`of the Judges within the Western District of Texas—not Apple. Apple is not entitled to a transfer at
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`this point in the case because it thinks it has a right to be assigned to a particular judge in Austin.
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`Apple’s attempt to gamify the law of intra-district transfer is unpersuasive, and the Court finds that
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`this heavily weighs against stay
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`Second, Apple says that “a transferee court may wish to conduct its own claim construction
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`analysis, thus causing additional burden and expense.” Motion at 8. But that is sheer speculation on
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`Apple’s part, and “[a] court should not decide a motion to stay based on a party’s speculative
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`concerns.” Sierra Club, 2008 WL 2414333, at *7. This factor also weighs against a stay.
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`In sum, Apple has failed to demonstrate that it would suffer any prejudice should the Court
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`deny its Motion to stay. Thus, this factor weighs against stay.
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`D. Granting the stay would harm SpaceTime
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`Apple argues that granting the stay will not prejudice SpaceTime because SpaceTime has
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`not adequately shown that the stay requested would interfere with “timely enforcement of its patent
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`right.” ECF No. 66 at 4. The Court disagrees.
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`It is not SpaceTime’s burden to prove Apple’s Motion. Neodron, 2019 WL 9633629, at *1.
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`Indeed, as shown below, the Court finds that Apple has not met its burden to show that SpaceTime
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`would not be prejudiced. In its reply to SpaceTime’s response, Apple argues that SpaceTime will
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`not be prejudiced by a stay merely because SpaceTime relies on case law on stay motions pending
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`inter partes examination. ECF No. 66 at 4. According to Apple, those motions require a different
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`analysis. Id. Apple argues that it merely seeks a brief stay for this Court to resolve its transfer
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`motion. Id. But that is sheer speculation on Apple’s part, and “[a] court should not decide a motion
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`to stay based on a party’s speculative concerns.” Sierra Club, 2008 WL 2414333, at *7.
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`Instead, the Court finds that SpaceTime has shown that it will suffer a particularized harm
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`because any stay would interfere with its “‘interest in the timely enforcement of its patent right.’”
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`MiMedx Grp., Inc. v. Tissue Transplant Tech. Ltd., No. SA-14-CA-719, 2015 WL 11573771, at *2
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`(W.D. Tex. Jan. 5, 2015); see also VideoShare, LLC v. Meta Platforms Inc., No. 6-21-CV-00254-
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`ADA, 2022 WL 2718986, at *2 (W.D. Tex. July 12, 2022), reconsideration denied, No. 6-21-CV-
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`00254- ADA, 2022 WL 3142622 (W.D. Tex. Aug. 5, 2022); see also Intell. Ventures I LLC v. T
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`Mobile USA, Inc., et al., No. 2:17-cv-00577-JRG, 2018 WL 11363370, at *2 (E.D. Tex. Dec. 13,
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`2018) (“It is well established that Plaintiff’s timely enforcement of its patent rights is entitled to
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`some weight, even if that factor is not dispositive.”). This recognition of a patent owner’s interest in
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`timely enforcements of its patent rights is consistent with the Federal Circuit’s long-held
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`recognition of the “strong public policy favoring expeditious resolution of litigation.” Kahn v.
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`GMC, 889 F.2d 1078, 1080 (Fed. Cir. 1989). This factor weighs against a stay.
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`E. Granting the stay would not serve the public interest
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`A stay here would greatly disserve the public interest, and Apple has not met its burden to
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`show otherwise. Apple regurgitates the same assertions about “duplicative proceedings” and
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`“different rules and procedures [] in the transferee forum” to argue that a stay will conserve judicial
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`resources. Not so. First, Apple has no substantive basis for its speculation that there may be
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`“duplicative proceedings in both the transferor and transferee courts.” Motion at 8. Likewise, as
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`explained above, while Apple gestures at some differences between rules and procedures in this
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`Court versus those of two judges in the Austin Division, it fails to specify what difference would
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`disserve the public interest or judicial efficiency. As the movant, Apple cannot rely on conjecture to
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`meet the “demanding” standard to show that a stay is necessary. WSOU Invs., 2022 WL 479131, at
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`*1. Moreover, Apple has already wasted judicial resources in this proceeding by playing games
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`with this Motion. As discussed above, Apple waited to file this Motion to stay until only hours
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`before the originally scheduled Markman hearing—after the Court had already expended its
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`resources to issue preliminary constructions and after the parties had already prepared for the
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`hearing. Accordingly, this factor also weighs against a stay.
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`IV.
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`CONCLUSION
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`For the foregoing reasons and the reasons stated by the Court during oral argument (ECF
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`No. 75), the Court DENIES Apple’s Motion to stay pending this Court’s decision on its motion to
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`transfer to the Austin Division of the U.S. District Court for the Western District of Texas.
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`SIGNED this 2nd day of February, 2023.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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