Case: 20-127 Document: 16 Page: 1 Filed: 06/16/2020
`NOTE: This order is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`In re: APPLE INC.,
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 1:20-
`cv-00351-ADA, Judge Alan D. Albright.
`Before O’MALLEY, WALLACH, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`O R D E R
`Apple Inc. petitions for a writ of mandamus directing
`the United States District Court for the Western District of
`Texas to direct transfer of this action to the United States
`District Court for the Northern District of California.
`STC.UNM opposes the petition. Apple replies. For the fol-
`lowing reasons, we deny Apple’s petition.
`This petition arises out of a complaint filed by
`STC.UNM in the Waco Division of the Western District of


`Case: 20-127 Document: 16 Page: 2 Filed: 06/16/2020
`Texas, alleging that STC.UNM’s asserted patents are in-
`fringed by various Apple products supporting the IEEE
`802.11ac wireless networking standard. According to
`STC.UNM, the asserted patents “read on” that wireless
`network standard and the accused devices infringe by be-
`ing compliant with the standard. Resp. at 4. Apple indi-
`cates that its accused products support the wireless
`standard via semiconductor chips developed by Broadcom
`Inc., a company with offices in San Jose, Irvine, and San
`Diego, California, as well as in the Western District in Aus-
`tin, Texas.
`The district court granted Apple’s motion to transfer
`this case pursuant to 28 U.S.C. § 1404(a) in part, holding
`that Apple had demonstrated trial in the Austin Division
`of the Western District of Texas was clearly more conven-
`ient than the Waco Division, but that Apple had not clearly
`established that the Northern District of California was
`more suitable for trial than Austin, Texas. In doing so, the
`district court relied on Weatherford Tech. Holdings, LLC v.
`Tesco Corp., No. 2:17-CV-00456-JRG, 2018 WL 4620636
`(E.D. Tex. May 22, 2018) for the proposition that a court
`must draw all reasonable inferences and resolve all factual
`conflicts in favor of the non-moving party when assessing
`a § 1404(a) transfer for convenience.
`The district court acknowledged that the Northern Dis-
`trict of California would be more convenient for the Apple
`employees and Broadcom employees who were specifically
`identified in the declarations in support of Apple’s motion
`and that it would be easier to access or transfer any docu-
`mentary sources from Apple or Broadcom that were located
`in the Northern District of California or other parts of Cal-
`ifornia. However, the district court found that the presence
`of the Wi-Fi Alliance in the Western District of Texas mit-
`igated against weighing the pertinent convenience factors
`strongly in favor of transfer, because it was “possible—if
`not likely—that STC.UNM could require the Wi-Fi Alli-
`ance as a significant source of proof.” A. 7. The district


`Case: 20-127 Document: 16 Page: 3 Filed: 06/16/2020
` 3
`court also weighed against transfer a pending suit in the
`same district in which STC.UNM asserted the same claims
`of the same patents against another defendant, determin-
`ing that there was a shorter time to trial in the Western
`District of Texas on the current schedule for this case as
`compared to the median time to trial in the Northern Dis-
`trict of California.
` The district court also found that the local interest fac-
`tor did not weigh in favor of Northern California. The dis-
`trict court explained that, like the Northern District of
`California, the Western District of Texas had a significant
`interest because Apple was likely “one of the largest em-
`ployers in each District.” A. 14. Despite Apple’s assertions
`that only its employees in Northern California had rele-
`vant and material information, the district court noted that
`Apple had issued a job posting for engineers with
`knowledge of the 802.11ac standard for its Austin campus,
`which the court found showed that “business Apple con-
`ducts within this District will be affected” by the case. Id.
`The court added that one of the accused products is made
`in Austin, Texas, “giving those involved with its manufac-
`ture a localized interest in determinations made regarding
`the infringement—or lack thereof—found in this case.”
`A. 15.
`The court, moreover, concluded that the localized inter-
`ests of third parties weighed in favor of Western Texas.
`The court noted that the Wi-Fi Alliance, an organization
`that promotes, certifies, and ensures uniform adoption of
`Wi-Fi standards, including the 802.11ac standard, was lo-
`cated in Austin, Texas and had “a heavy localized interest
`in this case because infringement based on compliance
`with the 802.11ac standard would affect the Wi-Fi
`[A]lliance[’]s promotions and certifications” and hinder its
`“goal of spreading use and adoption of the standard.” Id.
`The court added that Broadcom also had a significant pres-
`ence in Austin. The court acknowledged that Broadcom
`was headquartered in the Northern District of California.


`Case: 20-127 Document: 16 Page: 4 Filed: 06/16/2020
`However, it found that it was “more reasonable to assume
`that the chips [that were at issue in this case] were de-
`signed in the Central or Southern Districts of California.”
`Apple now seeks for this court to issue a writ of man-
`damus to compel transfer to the Northern District of Cali-
`fornia. Such a request requires 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, 381 (2004) (requiring that a petitioner
`seeking mandamus establish that the right to relief is
`“clear and indisputable” (internal quotation marks and ci-
`tations omitted)). We issue such relief sparingly and only
`in “extraordinary” circumstances. Cheney, 542 U.S. at 380
`(quoting Ex parte Fahey, 332 U.S. 258, 259–260 (1947)) (in-
`ternal quotation marks omitted). Apple has not met that
`demanding standard here.
`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” than the
`Waco Division. A. 121. Instead, Apple primarily com-
`plains that in not transferring to the Northern District of
`California, the district court erred in assessing and weigh-
`ing the relevant transfer factors. But the district court’s
`grant of the alternative relief that Apple requested coun-
`sels against the extraordinary remedy of mandamus.
`Given that Apple received a transfer to its second-most con-
`venient venue, it is difficult to accept Apple’s assertion that
`the result here is patently erroneous.
`We do question the propriety of the district court’s reli-
`ance on Weatherford to hold that a court must draw all rea-
`sonable inferences and resolve all factual conflicts in favor
`of the non-moving party when assessing a § 1404(a)


`Case: 20-127 Document: 16 Page: 5 Filed: 06/16/2020
` 5
`transfer for convenience. We are not convinced that this
`standard, which sounds like summary judgment, should
`apply to a transfer motion. The plaintiff’s choice of forum
`is already protected by the elevated “clearly more conven-
`ient” standard that the movant must meet. Nonetheless,
`whatever may be said about the validity of drawing infer-
`ences 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.
`Apple has not clearly and indisputably established the
`right to transfer to Northern California based on the con-
`venience of witnesses. We agree with Apple that “[t]he con-
`venience of the witnesses is probably the single most
`important factor in transfer analysis.” In re Genentech,
`Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009) (internal quota-
`tion marks and citation omitted). We also share Apple’s
`concern with the district court’s reliance on ADS Security
`for the discordant proposition that the convenience of party
`witnesses is given “little weight.” A. 10 (citing ADS Sec.
`L.P. v. Advanced Detection Sec. Servs., Inc., No. A-09-CA-
`773-LY, 2010 WL 1170976, at *4 (W.D. Tex. Mar. 23,
`2010)); see also, e.g., Genentech, 566 F.3d at 1343–45 (con-
`sidering convenience of party and non-party witnesses
`alike). Nevertheless, Apple’s right to relief is not clear and
`indisputable here. The district court held that, as a whole,
`the convenience of party and non-party witnesses weighed
`in favor of transfer. In support of its holding, the district
`court determined that the convenience of the identified
`non-party witnesses was neutral overall. Thus, it is not as
`if the district court applied ADS Security to tip the scales
`in favor of non-party witnesses while giving party wit-
`nesses little weight. Instead, the convenience of the party
`witnesses was the determinative consideration here—and
`indeed, determinative in Apple’s favor.
`Nor has Apple clearly and indisputably established the
`right to transfer to Northern California based on counter-
`vailing convenience or localized interest considerations.


`Case: 20-127 Document: 16 Page: 6 Filed: 06/16/2020
`Whether individuals or organizations may have relevant
`information and whether a certain forum has a localized
`connection to the relevant conduct and activities in a case
`are fact-intensive matters often subject to reasonable dis-
`pute. Cf. Van Cauwenberghe v. Biard, 486 U.S. 517, 528
`(1988). Those determinations are generally entrusted to
`the discretion of the district court. See Vistaprint, 628 F.3d
`at 1346 (“Our reluctance to interfere is not merely a for-
`mality, 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 testi-
`mony at trial, and ultimately is better able to dispose of
`these motions.”). When those factors are meaningfully con-
`sidered by the district court, and the court’s balancing of
`all the relevant factors is “reasonable,” its decision is enti-
`tled to “substantial deference.” Piper Aircraft Co. v. Reyno,
`454 U.S. 235, 257 (1981) (citations omitted).
`The district court did not clearly abuse that discretion
`here. The court’s conclusion that the Wi-Fi Alliance’s loca-
`tion in Austin, Texas could be a source of relevant infor-
`mation in this case does not seem unreasonable in light of
`STC.UNM’s stated theory of infringement. In that regard,
`the court fairly could find that a test or certification that
`the Wi-Fi Alliance has in its possession concerning whether
`the products comply or are interoperable with the 802.11ac
`standard could be relevant even if, as Apple contends, some
`of the features targeted by the patents are considered op-
`tional under the standard. Although Apple contends that
`STC.UNM is likely unable to demonstrate infringement
`here merely by showing compliance or interoperability
`with the wireless standard, the question of whether it has
`committed infringement is a merits issue, not one that
`should be decided on mandamus review in the context of a
`motion to transfer venue.
` Nor has Apple shown that Northern California has a
`clearly more compelling local concern in adjudicating the
`issues. Although Broadcom is headquartered in the


`Case: 20-127 Document: 16 Page: 7 Filed: 06/16/2020
` 7
`Northern District of California, the affidavit from Broad-
`com’s employee that Apple submitted in support of the mo-
`tion to transfer merely stated that the Broadcom chips at
`the center of this dispute were developed “in California,”
`within a business unit that “has members located in San
`Jose, Irvine, and San Diego, California” with “[s]ome engi-
`neering support . . . provided by Broadcom employees in
`India.” A. 139, ¶8. Indeed, the Broadcom executive who
`submitted the declaration, and who is presumably most
`likely to be asked by Apple to testify, works outside the
`Northern District of California in San Diego, California.
`Thus, any suggestion by Apple that the Northern District
`of California has a unique connection to the accused prod-
`ucts in this case is not clearly convincing. Under these cir-
`cumstances, the district court’s decision to try this case in
`the Austin Division over Northern California did not
`amount to a clear abuse of discretion.
`The petition is denied.
`June 16, 2020
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court

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