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`Case: 18-151 Document: 20 Page: 1 Filed: 10/16/2018Case 2:17-cv-00516-JRG Document 82 Filed 10/16/18 Page 1 of 5 PageID #: 1402
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`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: APPLE INC.,
`Petitioner
`______________________
`
`2018-151
`______________________
`
`On Petition for Writ of Mandamus to the United
`States District Court for the Eastern District of Texas in
`No. 2:17-cv-00516-JRG, Judge J. Rodney Gilstrap.
`______________________
`
`ON PETITION
`______________________
`
`Before PROST, Chief Judge, NEWMAN and LOURIE, Circuit
`Judges.
`
`
`LOURIE, Circuit Judge.
`
`O R D E R
`Apple Inc. petitions for a writ of mandamus directing
`the United States District Court for the Eastern District
`of Texas to transfer this case for the convenience of the
`parties to the United States District Court for the North-
`ern District of California under 28 U.S.C. § 1404(a). AGIS
`Software Development LLC (“AGIS Software”) opposes
`the petition.
`
`

`

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`Case: 18-151 Document: 20 Page: 2 Filed: 10/16/2018Case 2:17-cv-00516-JRG Document 82 Filed 10/16/18 Page 2 of 5 PageID #: 1403
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`2
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`
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` IN RE: APPLE INC.
`
`This petition arises out of a complaint by AGIS Soft-
`ware against Apple at the Eastern District of Texas in
`June 2017. AGIS Software is a subsidiary of AGIS Inc.,
`which develops
`software
`solutions
`for
`enabling
`smartphone, tablet, and computer users to establish
`secure ad hoc digital networks. AGIS Inc. has offices in
`Austin, Texas, Kansas, and Florida. AGIS Software rents
`office space in Marshall, Texas. AGIS Inc. assigned the
`patents-in-suit to AGIS Software. Malcolm Beyer is the
`CEO of AGIS Software, the founder of AGIS Inc., and the
`first-named inventor of the patents.
`Apple answered, asserting an affirmative defense of
`AGIS Software’s alleged failure to mark under 35 U.S.C.
`§ 287. Apple subsequently moved under section 1404(a)
`to transfer venue to the Northern District of California.
`Apple’s motion noted that it had significant ties to the
`proposed transferee venue. Apple further argued that
`AGIS Software had no meaningful connection to the
`Eastern District of Texas, noting that it had registered to
`do business in Texas and rented its office space in the
`Eastern District of Texas only a month before filing this
`lawsuit. Apple additionally suggested that AGIS Soft-
`ware was created for the purpose of filing suits in a pre-
`ferred forum, noting that AGIS Inc. previously had
`unsuccessfully asserted its patents against another com-
`pany in another forum.
`In its opposition to Apple’s transfer motion, AGIS
`Software noted that it maintained its documents in the
`Eastern District of Texas. It also identified as a potential
`important non-party witness Eric Armstrong, a resident
`of the Eastern District of Texas, who consulted for AGIS
`Software and formerly worked as a software developer for
`AGIS Inc. AGIS Software also argued that its connections
`to the Eastern District of Texas were not merely to make
`that district appear more convenient. To that end, Mr.
`Beyer submitted a declaration attesting to the fact that
`the decision to establish AGIS Software was part of a
`
`

`

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`Case: 18-151 Document: 20 Page: 3 Filed: 10/16/2018Case 2:17-cv-00516-JRG Document 82 Filed 10/16/18 Page 3 of 5 PageID #: 1404
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`IN RE: APPLE INC.
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` 3
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`corporate restructuring that began as far back as 2013
`and that the Eastern District of Texas was chosen be-
`cause Mr. Beyer had preexisting connections to that area,
`including he and his family owning a large amount of
`property in the Eastern District of Texas.
`In its order denying transfer, the district court ana-
`lyzed the motion by considering the relevant public and
`private interest factors first enunciated in Gulf Oil Corp.
`v. Gilbert, 330 U.S. 501, 508 (1947). The district court
`found that two factors—the sources of proof and the
`willing witness factors—favored transferring the case to
`the Northern District of California. The district court
`found that two factors favored retaining the case in the
`Eastern District of Texas. The district court found that
`the court congestion factor favored the Eastern District of
`Texas because case statistics indicated the median time
`for cases to go to trial was shorter in the Eastern District
`of Texas than in the Northern District of California. The
`district court also found that the compulsory process
`factor favored retaining the case, finding that Mr. Arm-
`strong had been shown to have relevant information
`relating to, among other things, Apple’s marking defense.
`The district court found that the other factors favored
`neither venue. On balance, the court concluded that
`Apple had not shown that the Northern District of Cali-
`fornia was clearly more convenient and therefore denied
`the motion to transfer.
`The court’s review on mandamus of district court
`transfer orders is “only for clear abuses of discretion that
`produce patently erroneous results.” In re Volkswagen of
`Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (en banc); In
`re TS Tech USA Corp., 551 F.3d 1315, 1318 (Fed. Cir.
`2008). Apple has not shown such an abuse here. The
`district court could fairly find that a shorter time to trial
`in its district was worthy of some consideration here. Cf.
`Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S. 71, 73
`(1963). Apple has also asserted a § 287 defense, which
`
`

`

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`4
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` IN RE: APPLE INC.
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`implicates a non-party witness and information in that
`individual’s possession located in the Eastern District of
`Texas.* Apple contends that AGIS Software’s connections
`to the Eastern District of Texas should be disregarded
`given it only registered to do business and rented office
`space a month before filing this suit. But the district
`court itself weighed the factors concerning the location of
`relevant evidence and employee witnesses in favor of
`transfer, not in favor of retaining the case. Apple also
`contends that the convenience factors favoring transfer
`outweigh the factors against transfer. While a district
`court could have reached that result, we see no basis for
`saying that it must do so under these circumstances.
`Finally, considering the convenience of the parties, while
`the Eastern District of Texas may not be especially con-
`venient for Apple, the Northern District of California
`would seem equally inconvenient for AGIS Software. No
`clear abuse of discretion therefore occurred.
`Accordingly,
`
`
`
`
`* Contrary to Apple’s contentions, this court cannot
`conclude that the district court erred in considering Mr.
`Armstrong an unwilling witness from the perspective of
`the Northern District of California because when there is
`no indication that a non-party witness is a willing wit-
`ness, courts in the Fifth Circuit generally consider that
`witness under the compulsory process factor. See AGIS
`Software Dev., LLC v. Huawei Device USA Inc., No. 2:17-
`cv-00513-JRG, 2018 WL 2329752, at *6 (E.D. Tex. May
`23, 2018) (“Absent any indication that the third-party . . .
`witnesses are willing, the Court . . . must presume utiliza-
`tion of the Court’s subpoena power will be required.”).
`
`
`

`

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`Case: 18-151 Document: 20 Page: 5 Filed: 10/16/2018Case 2:17-cv-00516-JRG Document 82 Filed 10/16/18 Page 5 of 5 PageID #: 1406
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`IN RE: APPLE INC.
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`IT IS ORDERED THAT:
`The petition is denied.
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`s31
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` FOR THE COURT
`
`
`
` /s/ Peter R. Marksteiner
`Peter R. Marksteiner
` Clerk of Court
`
`