Case: 20-135 Document: 34 Page: 1 Filed: 07/01/2020
`
`
`Misc. No. 2020-135
`United States Court of Appeals
`for the Federal Circuit
`
`IN RE APPLE, INC.
`
`
` On Petition for a Writ of Mandamus from the United States District Court
`for the Western District of Texas, Case No. 6:19-CV-00532-ADA,
`Judge Alan Albright
`UNILOC 2017 LLC NON-CONFIDENTIAL RESPONSE TO
`APPLE INC.’S PETITION FOR WRIT OF MANDAMUS
`WILLIAM E. DAVIS, III
`CHRISTIAN JOHN HURT
`DAVIS FIRM PC
`DAVIS FIRM PC
`213 N. Fredonia Street
`213 N. Fredonia Street
`Suite 230
`Suite 230
`Longview, Texas 75601
`Longview, Texas 75601
`(903) 230-9090
`(903) 230-9090
`bdavis@bdavisfirm.com
`churt@bdavisfirm.com
`Counsel for Plaintiff-Respondent
`Counsel for Plaintiff-Respondent
`
`
`
`
`JULY 1, 2020
`
`
`
`
`
`
`
`
`
`
`

`

`Case: 20-135 Document: 34 Page: 2 Filed: 07/01/2020
`
`CERTIFICATE OF INTEREST
`
`Counsel for Plaintiff-Respondent, Christian Hurt, certifies the following:
`
`1.
`
`2.
`
`
`
`3.
`
`4.
`
`5.
`
`The full name of every party or amicus represented by me
`is:
`
`Uniloc 2017, LLC
`
`The name of the real party in interest (if the party named in the caption
`is not the real party in interest) represented by me is:
`
`None.
`
`All parent corporations and any publicly held companies that own 10
`percent or more of the stock of the party or amicus curiae represented
`by me are:
`
`CF Uniloc Holdings, LLC
`
`The names of all law firms and partners or associates that appeared
`for the party or amicus now represented by me in the trial court or
`agency or are expected to appear in this court are:
`
`William Ellsworth Davis, III, Christian J. Hurt, Debra Coleman,
`Edward K. Chin, and Ty Wilson, Davis Firm, P.C.;
`
`The title and number of any case known to counsel to be pending in
`this or any other court agency that will directly affect or be directly
`affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47.4(a)(5) and 47.5(b). (The parties should attach continuation
`pages as necessary):
`
`No other appeal from these proceedings was previously before this
`Court or any other appellate court. There is no case pending in this
`Court or any other court that will directly affect or be directly affected
`by the Court’s decision here.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case: 20-135 Document: 34 Page: 3 Filed: 07/01/2020
`
`DATED: July 1, 2020
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/Christian John Hurt
` Christian John Hurt
`Counsel for Plaintiff-Respondent
`
`
`

`

`Case: 20-135 Document: 34 Page: 4 Filed: 07/01/2020
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`INTRODUCTION ..................................................................................................... 1
`
`STATEMENT OF RELIEF SOUGHT ..................................................................... 2
`
`STATEMENT OF ISSUE ......................................................................................... 3
`
`STATEMENT OF THE CASE ................................................................................. 3
`
`
`
`
`
`REASONS FOR DENYING THE PETITION ......................................................... 6
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`I.
`
`II.
`
`
`
`The ’088 Patent ..................................................................................... 3
`
`The District Court Litigation ................................................................ 3
`
`The Standard for Mandamus is Exacting—Requiring a Clear Abuse
`of Discretion That Produced a Patently Erroneous Result .................... 6
`
`It is Proper for Apple to Face This Suit in the WDTX—Where
`Apple is Poised to Be the Largest Private Employer in the
`District ................................................................................................... 6
`
`III. The District Court Did Not Clearly Abuse Its Discretion When It
`Found that Apple Failed to Meet its Heightened Transfer Burden ..... 10
`
`A. The Decisions of Other Courts to Transfer Other Uniloc Cases Was
`Not Binding, as Apple Admitted Below ........................................ 11
`
`B. Apple Does Not Show Error in the District Court’s Findings on the
`Private-Interest Factors .................................................................. 13
`
`1. The Court Reasonably Found That the Convenience of Willing
`Witnesses Factor Was Neutral .................................................. 13
`
`2. The Court Did Not Hold That Uniloc’s Choice of Forum Was a
`Distinct Factor .......................................................................... 20
`
`
`
`
`
` i
`
`

`

`Case: 20-135 Document: 34 Page: 5 Filed: 07/01/2020
`
`3. The Court Reasonably Found That the Compulsory Process
`Factor Was Neutral ................................................................... 20
`
`4. The Court Reasonably Found That the Location of Sources of
`Proof Only Slightly Weighed in Favor of Transfer .................. 22
`
`5. The Court Reasonably Found That Judicial Economy Weighed
`Heavily Against Transfer .......................................................... 25
`
`C. Apple Does Not Show Error in the District Court’s Analysis of the
`Public-Interest Factors ................................................................... 28
`
`1. The Court Reasonably Concluded That the Local Interest Factor
`Was Neutral .............................................................................. 28
`
`2. The Court Reasonably Found That the Time to Trial Factor
`Weighed Against Transfer ........................................................ 30
`
`D. The District Court Was Well Within Its Discretion to Deny Apple’s
`Motion in View of These Factual Findings ................................... 32
`
`
`
`
`
`
`
`
`
`
`CONCLUSION ....................................................................................................... 33
`
`
`
`
`CONFIDENTIAL MATERIAL OMITTED
`
`The redacted material on pages 19 and 22 of this Response includes confidential
`information subject to the Protective Order entered by the district court on June 5,
`2020.
`
`
`
`
`
`
`
`
`
`
`
` ii
`
`

`

`Case: 20-135 Document: 34 Page: 6 Filed: 07/01/2020
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Action Indus., Inc. v. U.S. Fid. & Guar. Co.
`358 F.3d 337 (5th Cir. 2004) ......................................................................... 10
`
`
`Allied Chem. Corp. v. Daiflon, Inc.
`
`449 U.S. 33 (1980) .......................................................................................... 6
`
`Anderson v. Bessemer City
`
`470 U.S. 564 (1985) ...................................................................................... 12
`
`Georgia-Pacific Corp. v. United States Plywood Corp.
`
`318 F. Supp. 1116 (S.D.N.Y. 1970) .............................................................. 22
`
`Golden Bridge Tech., Inc. v. Nokia, Inc.
`
`527 F.3d 1318, 1322 (Fed. Cir. 2008) ........................................................... 10
`
`In re Affymetrix, Inc.,
`
`2010 U.S. App. LEXIS 7968, (Fed. Cir. Apr. 13, 2010) .............................. 18
`
`In re Apple Inc.
`
`No. 2020-104 (Dkt. 36) (Fed. Cir. Dec. 20, 2019) ........................ 8, 18, 19, 22
`
`In re Apple Inc.
`
`No. 2020-104, (Dkt. 52)(Fed. Cir. Mar. 30, 2020) ......................................... 8
`
`In re Apple Inc.
`
`No. 2020-115, 2020 U.S. App. LEXIS 14317
`
`(Fed. Cir. Apr. 22, 2020) ............................................................................... 21
`
`In re Apple Inc.
`
`No. 2020-127, 2020 U.S. App. LEXIS 18899
`
`(Fed. Cir. June 16, 2020) ............................................................... 8, 17, 19, 32
`
`In re ASM Int'l, N.V.
`
`774 F. App’x 650 (Fed. Cir. 2019) ................................................................ 26
`
` iii
`
`

`

`Case: 20-135 Document: 34 Page: 7 Filed: 07/01/2020
`
`
`In re Google Inc.
`
`No. 2017-107, 2017 U.S. App. LEXIS 4848
`
`(Fed. Cir. Feb. 23, 2017) ............................................................................... 27
`
`
`In Re TS Tech. USA Corp.
`
`551 F.3d 1315 (Fed. Cir. 2008) ....................................................................... 7
`
`In re Vistaprint Ltd.
`
`628 F.3d 1342 (Fed. Cir. 2010) ....................................................................... 6
`
`In re Volkswagen of Am., Inc.
`
`545 F.3d 304 (5th Cir. 2008) ............................................................... 6, 10, 20
`
`In re ZTE (USA) Inc
`
`890 F.3d 1008 (Fed. Cir. 2018) ....................................................................... 7
`
`Kearns v. Chrysler Corp.
`
`32 F.3d 1541 (Fed. Cir. 1994) ....................................................................... 12
`
`RCA Corp. v. Data Gen. Corp.
`
`887 F.2d 1056 (Fed. Cir. 1989) ..................................................................... 12
`
`TC Heartland v. Kraft Foods Group Brands LLC
`
`137 S. Ct. 1514 (2017) .................................................................................... 7
`
`Singleton v. Wulff
`
`428 U.S. 106, 96 S. Ct. 2868, 49 L. Ed. 2d 826 (1976) ................................ 10
`
`Statutes & Rules
`
`28 U.S.C. § 271 ....................................................................................................... 17
`
`28 U.S.C. § 1391 ....................................................................................................... 7
`
`28 U.S.C. § 1400(b) ........................................................................................... 1, 7, 8
`
`28 U.S.C. § 1404(a) .......................................................................................... passim
`
`
` iv
`
`

`

`Case: 20-135 Document: 34 Page: 8 Filed: 07/01/2020
`
`INTRODUCTION
`
`Apple seeks a writ of mandamus, an extraordinary remedy, to order U.S.
`
`District Judge Alan Albright to transfer this case to the Northern District of
`
`California (“NDCA”). Apple claims that it is inconvenient to litigate this case in a
`
`district where it has a billion-dollar, 130-acre campus and where it employs
`
`approximately 8,000 people across all aspects of its business, including finance,
`
`marketing, technical support, and product engineering. And Apple demands this
`
`extraordinary remedy even though relevant Apple witnesses and third-party
`
`witnesses such as Flextronics, which manufactures the accused Mac Pro, are in the
`
`Western District of Texas (“WDTX”). Furthermore, both inventors of the asserted
`
`patent reside in New York, making the NDCA less convenient for those witnesses.
`
`Apple’s statement that “[o]nce again, a non-Texas plaintiff has sued Apple for
`
`patent infringement in the Waco Division of the Western District of Texas in a case
`
`having no connections to that venue” is simply untrue. Apple has a substantial
`
`connection to the WDTX as it relates to this case. Apple already enjoys a threshold
`
`level of convenience and fairness provided by Section 1400(b) because Apple has
`
`committed acts of infringement and possesses an incredibly large place of business
`
`in WDTX. Apple’s WDTX presence more than satisfies Section 1400(b) in this
`
`case, and Apple admits as much. Moreover, Uniloc is registered to do business in
`
`Texas, maintains an office, documents, and employees in Texas, and third-party
`
`1
`
`

`

`Case: 20-135 Document: 34 Page: 9 Filed: 07/01/2020
`
`witnesses such as Flextronics and prior art witnesses are also located in the District.
`
`It is therefore disingenuous for Apple to proclaim that this case has no connection to
`
`WDTX.
`
`In seeking a writ of mandamus under Section 1404(a), Apple must show that
`
`the District Court abused its discretion in refusing to transfer a properly venued case
`
`to Apple’s chosen forum. But Apple filed its Petition before the Court issued its
`
`written opinion. Consequently, the Petition neither addresses the Court’s 1404(a)
`
`analysis nor the underlying factual findings. Merely presuming that the Court
`
`abused its discretion fails to meet the exacting standard for obtaining a writ. And
`
`Apple’s Petition is a rehash of its Fintiv and STC.UNM Petitions that this Court
`
`recently denied.
`
`Showing a clear abuse of discretion is an exacting task. It requires, at a
`
`minimum, reading the opinion before rushing to this Court. Likewise, unsupported
`
`and misguided allegations of venue manipulation do not satisfy Apple’s burden.
`
`Because the District Court followed established precedent and was within its
`
`discretion to deny transfer, Uniloc respectfully requests denial of Apple’s Petition.
`
`STATEMENT OF RELIEF SOUGHT
`
`Uniloc respectfully requests that the Court deny Apple’s Petition.
`
`2
`
`

`

`Case: 20-135 Document: 34 Page: 10 Filed: 07/01/2020
`
`STATEMENT OF ISSUE
`
`Did Apple’s Petition show that the District Court clearly abused its discretion
`
`when it held that Apple failed to show that the NDCA was a clearly more convenient
`
`forum than the WDTX?
`
`STATEMENT OF THE CASE
`
`I.
`
`The ’088 Patent
`
`This case involves one Patent, U.S. Patent No. 6,467,088 (“the ’088 Patent”).
`
`The ’088 Patent discloses a reconfiguration manager to control the reconfiguration
`
`of software or other components of an electronic device, such as a desktop, laptop,
`
`and personal digital assistant (PDAs). The manager receives a reconfiguration
`
`request, e.g., a software upgrade request from the electronic device. It determines
`
`one or more device components that are required to implement the reconfiguration
`
`request, e.g., the upgraded software. The manager utilizes information about the
`
`current configuration of the device, such as the current hardware and software, to
`
`determine if the requested upgrade would or would not be compatible with that
`
`existing configuration. If so, the device receives the software upgrade; if not, the
`
`manager blocks the upgrade. The invention thus ensures that upgrades are
`
`compatible with the configuration of a given device before they are implemented in
`
`that device, thereby avoiding problems associated with inconsistent upgrades.
`
`3
`
`

`

`Case: 20-135 Document: 34 Page: 11 Filed: 07/01/2020
`
`II. The District Court Litigation
`
`Uniloc alleges that Apple’s software download functionality, including how
`
`Apple determines compatibility for application and operating system software
`
`updates through the App Store, infringes the ’088 Patent. The Accused Products
`
`include Apple devices that run iOS and macOS-based operating systems, including
`
`computers (e.g., Mac Pro, iMac, and Macbook), iPhones, iPads, and other devices
`
`(e.g., Apple TV and Apple Watch).
`
`The accused functionality is critical to how Apple seamlessly integrates
`
`software (e.g., apps) into its devices, such as the iPhone. Part of the reason is because
`
`apps heavily rely on functionality embedded in Apple’s operating systems. Often,
`
`app developers can only use this embedded functionality in order for Apple to
`
`approve their apps for sale through the App Store. Apple, however, frequently
`
`updates the operating system (adding, deleting, and changing those embedded
`
`frameworks).
`
`It is thus vital for Apple and app developers to ensure that the applications are
`
`compatible with the capabilities of the user’s device prior to installation—otherwise
`
`the application may crash, not run properly, or possibly damage the device. It is
`
`likewise critical to ensure that updates will function properly on the device. Apple
`
`tells developers that “[r]egular app updates can help you stay competitive on the App
`
`Store, as each new release is an opportunity to reengage existing users and attract
`
`4
`
`

`

`Case: 20-135 Document: 34 Page: 12 Filed: 07/01/2020
`
`new users.”1 Apple earns substantial revenue from the App Store, and has paid
`
`significant royalties to third-party developers.2 To achieve these goals, Apple uses
`
`the technology claimed in the ’088 Patent.
`
`Apple employs approximately 8,000 people in the WDTX, in areas relevant
`
`to the accused technology, such as engineers, sales and marketing personnel,
`
`technical support, and financial personnel.3 Apple ’s contract manufacturer,
`
`Flextronics, assembles the Accused Mac Pro (which contains the macOS and App
`
`Store software) in the District. Apple’s WDTX-based engineers also work on the
`
`functionality that ensures delivery of the updates. And Apple’s WDTX campuses
`
`handle payments to third-party developers.
`
`Apple moved to transfer this case to the NDCA. The District Court held a
`
`hearing on Apple’s Motion on May 12, 2020, and orally denied Apple’s Motion.
`
`Apple then filed this Petition on June 15, 2020, before the District Court issued a
`
`written decision (which it issued on June 22, 2020). Uniloc files this response to
`
`Apple’s Petition.
`
`
`
` 1
`
` See, e.g., https://developer.apple.com/app-store/app-updates/.
`2 E.g., https://developer.apple.com/videos/play/wwdc2017/101/
`1:15:00).
`3 As the District Court noted, SAppx11–12, Apple began expanding its presence in
`2019 to employ up to 15,000 people at its new 3-million-square-foot Austin campus
`See, e.g., https://www.apple.com/newsroom/2019/11/apple-expands-in-austin/.
`
`(at 1:14:43–
`
`5
`
`

`

`Case: 20-135 Document: 34 Page: 13 Filed: 07/01/2020
`
`REASONS FOR DENYING THE PETITION
`
`I.
`
`The Standard for Mandamus is Exacting—Requiring a Clear
`Abuse of Discretion That Produced a Patently Erroneous Result
`
`“Mandamus is an extraordinary remedy,” and it is available only if the
`
`Petitioner demonstrates a “clear and indisputable” right to the relief sought. In re
`
`Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010) (quoting Allied Chem. Corp.
`
`v. Daiflon, Inc., 449 U.S. 33, 35 (1980)). Th is standard requires Apple to
`
`“demonstrate that the court’s denial of transfer was so patently erroneous as to
`
`amount to a clear abuse of discretion.” Vistaprint, 628 F.3d at 1344 (quoting In re
`
`Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc) (Volkswagen
`
`I)). Apple’s Petition does not meet this high standard.
`
`II.
`
`It is Proper for Apple to Face This Suit in the WDTX—Where
`Apple is Poised to Be the Largest Private Employer in the District
`
`Apple devotes a substantial portion of its Petition to accusing Uniloc of venue
`
`manipulation and “judge shopping.” The bulk of those arguments were not
`
`presented below, and they are a distraction from the Section 1404(a) issues.
`
`The facts—which Apple ignores—show why it is appropriate for Apple to
`
`face suit in the WDTX in this case: Apple employs around 8,000 people in the
`
`District and is expanding one facility to accommodate up to 15,000 employees
`
`(which will make it the largest private employer in the District). And Apple’s
`
`WDTX facilities run the full range of Apple’s business.
`
`6
`
`

`

`Case: 20-135 Document: 34 Page: 14 Filed: 07/01/2020
`
`That presence is important, and it rebuts Apple’s allegations of venue
`
`manipulation. After the Supreme Court’s TC Heartland decision, plaintiffs have a
`
`narrow set of options. 137 S. Ct. 1514, 1516–17 (2017); 28 U.S.C. § 1400(b). Patent
`
`venue under Section 1400(b) is now more restrictive than the broad venue provisions
`
`of Section 1391 (which applied pre-TC Heartland). In re ZTE (USA) Inc., 890 F.3d
`
`1008, 1014 (Fed. Cir. 2018). Before TC Heartland, Section 1404(a) played a
`
`significant role to ensure that a plaintiff’s chosen venue was convenient for the
`
`parties and witnesses. See, e.g., In TS Tech. USA Corp., 551 F.3d 1315, 1321 (Fed.
`
`Cir. 2008) (issuing writ where “[n]one of the companies have an office in the Eastern
`
`District of Texas; no identified witnesses reside in the Eastern District of Texas; and
`
`no evidence is located within the venue.”).
`
`Section 1400(b) now performs much of that work post-TC Heartland. It limits
`
`a plaintiff’s choice of venue to those that are presumed convenient for a defendant,
`
`viz., either the venue of its place of incorporation or those venues in which (1) it has
`
`committed acts of infringement and (2) has a regular and established place of
`
`business. If a defendant chooses to establish a regular place of business in a district
`
`and commits acts of infringement, the law says that they may fairly be required to
`
`answer claims of patent infringement there.
`
`Apple did not contest that venue is proper in the WDTX under Section
`
`1400(b). SAppx36, at ¶ 5. Because Apple is a California corporation, that means
`
`7
`
`

`

`Case: 20-135 Document: 34 Page: 15 Filed: 07/01/2020
`
`that Apple did not contest (1) that Apple itself has committed the acts that Uniloc
`
`alleges infringes in the WDTX; and (2) that it has a regular and established place of
`
`business in the WDTX. That admission shows that, contrary to the Petition, Apple
`
`has a relevant connection to this District.
`
`Rather than accept that presence, Apple has moved to transfer, under 1404(a),
`
`each recent case against it in the WDTX to NDCA asserting that NDCA is clearly
`
`more convenient in each instance. SAppx5–8. That assertion is facially implausible.
`
`And, as the District Court found, Apple seeks through its Section 1404(a) litigation
`
`strategy to only face suit in its preferred forum and refuses to accept that transfer
`
`under Section 1404(a) is only permissible when the requested forum is clearly more
`
`convenient for all concerned. See id . Apple attempts to “effectively—but
`
`incorrectly—transmute[] plaintiff’s choice of forum into defendant’s choice of
`
`forum.” SAppx7. This Court recently rejected Apple’s mandamus attempts in Fintiv
`
`and STC.UNM.4 The same outcome should apply here.
`
`To distract from its extraordinary presence in WDTX, Apple accuses Uniloc
`
`of “venue manipulation” and “judge shopping.” It claims that Uniloc dismissed a
`
`prior lawsuit assert asserting the ’088 Patent before Judge Yeakel in 2018, while
`
`
`
` 4
`
` In re Apple Inc., No. 2020-127, 2020 U.S. App. LEXIS 18899 (Fed. Cir. June 16,
`2020) (non-precedential) (STC.UNM); In re Apple Inc., No. 20-104 (Dkt. 36) (Fed.
`Cir. Dec. 20, 2019) (non-precedential) (Fintiv) and (Dkt. 52) (Fed. Cir. Mar. 30,
`2020) (non-precedential order denying en banc review petition in Fintiv).
`
`8
`
`

`

`Case: 20-135 Document: 34 Page: 16 Filed: 07/01/2020
`
`Apple’s transfer motion was pending, and then refiled the case in 2019 (where it was
`
`assigned to Judge Albright) in order to avoid a presumed transfer by Judge Yeakel
`
`and “judge shop.” No evidence support s Apple’s bold assertions, and Apple’s
`
`assertions are not relevant to any Section 1404(a) factor. And the evidence shows
`
`that they are without merit.
`
`Uniloc filed twelve cases against Apple in the WDTX in 2018. That included
`
`one case asserting infringement of the ’088 Patent (the -296 case). Uniloc dismissed
`
`the -296 case, but not to manipulate venue. It voluntarily dismissed the -296 case
`
`without prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(A)(i) so that it could verify
`
`transfer of the ’088 patent to Uniloc from the prior owner. In the interim, Apple
`
`filed a Petition for Inter Partes Review of the ’088 Patent. See SAppx3. The Patent
`
`Trial and Appeal Board denied institution. See SAppx4. Uniloc then filed this case.5
`
`Uniloc did not dismiss the other eleven cases in the WDTX. If Uniloc
`
`dismissed the -296 case to manipulate venue and shop judges, then why did Uniloc
`
`dismiss only one of its cases in 2018 and not all twelve? The simplest explanation
`
`is correct: Uniloc’s dismissal had nothing to do with venue or shopping judges.
`
`Uniloc believed then, as it does now, that Judge Yeakel should have declined
`
`
`
` 5
`
` Given the filing of the case after the Inter Partes Review decision, Uniloc’s counsel
`initially believed that the -296 case was dismissed during the pendency of the Inter
`Partes Review proceedings. Appx269–270. It later confirmed the above facts.
`
`9
`
`

`

`Case: 20-135 Document: 34 Page: 17 Filed: 07/01/2020
`
`to transfer the other cases. But it is speculation to guess how Judge Yeakel might
`
`have ruled on the -296 case. And the answer to that question does not matter in this
`
`case: Apple conceded below that Judge Yeakel’s transfer decisions were “certainly
`
`not controlling” on the District Court. Appx239.
`
`There was no venue “maneuvering.” Nor was there any improper “judge
`
`shopping.” In any event, Apple failed to raise its “judge shopping” arguments below
`
`and thus waived them for appeal. Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d
`
`1318, 1322 (Fed. Cir. 2008) (“[I]t is the general rule . . . that a federal appellate court
`
`does not consider an issue not passed upon below.”) (quoting Singleton v. Wulff, 428
`
`U.S. 106, 120, 96 S. Ct. 2868, 49 L. Ed. 2d 826 (1976)).
`
`III. The District Court Did Not Clearly Abuse Its Discretion When It
`Found that Apple Failed to Meet its Heightened Transfer Burden
`
`The standard for Apple to prevail on its motion below was to “demonstrate[]
`
`that the transferee venue is clearly more convenient.” In re Volkswagen of Am.,
`
`Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (Volkswagen II) (emphasis added);
`
`see SAppx2–3 (discussing 5th Circuit standard). The convenience analysis turns on
`
`a number of public and private interest factors, none of which have dispositive
`
`weight. SAppx2 (quoting Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 F.3d
`
`337, 340 (5th Cir. 2004)).
`
`It is undisputed that the District Court conducted a reasoned, detailed analysis
`
`of each disputed factor. The Court reached the following findings on each factor:
`
`10
`
`

`

`Case: 20-135 Document: 34 Page: 18 Filed: 07/01/2020
`Case: 20-135
`Document: 34
`Page:18
`Filed:07/01/2020
`
`the relative ease of access to sources of proof
`
`Slightly in favor of transfer
`
`the availability of compulsory process to secure Neutral
`the attendance of witnesses
`
`the cost of attendance for willing witnesses
`
`all other practical problems that make trial of case Heavily against transfer
`easy, expeditious, and inexpensive
`
`
`
`the administrative difficulties flowing from court Against transfer
`congestion
`
`interest
`the local
`decided at home
`
`in having localized interests Neutral
`
`the familiarity of the forum with the law that will Neutral (agreed)
`govern the case
`
`avoidance of unnecessary problems of conflict of Neutral (agreed)
`laws of the application of foreign law
`
`The District Court was well within its discretion to deny Apple’s Motion
`
`based on this analysis. And because Apple did not wait for the Court to issue its
`
`Order, it guessed wrong at how the Court would rule on a number of factors. Apple
`
`also does not challenge the Court’s balancing of all the factors to decide whether to
`
`transfer or retain this case. Indeed, Apple declined to challenge several findings at
`
`all. Instead, Apple argues on appeal that the decisions of other judges required this
`
`judge to transfer this case, despite admitting below that the other decisions were
`
`merely persuasive and not binding.
`
`A.
`
`The Decisions of Other Courts to Transfer Other Uniloc
`
`Cases Was Not Binding, as Apple Admitted Below
`
`Apple’s Petition does not focus on this case. Its primary complaint is that the
`
`11
`
`

`

`Case: 20-135 Document: 34 Page: 19 Filed: 07/01/2020
`
`District Court did not follow the decisions of other judges to transfer other cases.
`
`But when directly questioned on this point, Apple admitted that those decisions were
`
`only “persuasive”—and “not controlling,” Appx239—to which the District Court
`
`agreed. SAppx8 (“[T]he fact that other Texas judges transferred other Uniloc cases
`
`from Texas to NDCA is—at the most—only persuasive evidence.”). Apple’s
`
`concession is consistent with established law. See Anderson v. Bessemer City, 470
`
`U.S. 564, 574 (1985) (“Where there are two permissible views of the evidence, the
`
`factfinder’s choice between them cannot be clearly erroneous.”); Kearns v. Chrysler
`
`Corp., 32 F.3d 1541, 1547 (Fed. Cir. 1994) (quoting RCA Corp. v. Data Gen. Corp.,
`
`887 F.2d 1056, 1065 (Fed. Cir. 1989)) (“[That] we might have reached a different
`
`result or might have affirmed had the district court gone the other way are
`
`insufficient bases for reversal under the abuse of discretion standard which applies
`
`to our review of this part of the court's judgment.”). And Apple cannot now argue
`
`differently on appeal.
`
`This case also involves a different record, which Apple fails to address. The
`
`District Court detailed many differences between this case and the other cases.
`
`SAppx9–14. As it related to the EDTX cases , Apple’s presence in the WDTX
`
`greatly exceeds its presence in the EDTX. SAppx9–11. By 2019, Apple closed its
`
`only EDTX retail store; at the same time, it employed over 7,000 employees in the
`
`WDTX. SAppx 11. Much of that presence is new—after the prior cases were
`
`12
`
`

`

`Case: 20-135 Document: 34 Page: 20 Filed: 07/01/2020
`
`transferred—including a growing number of engineers. SAppx11. Apple is also
`
`greatly expanding its WDTX presence, fueled by local tax incentives, including
`
`building its own large hotel. SAppx11–12. And Apple’s WDTX-based staff covers
`
`the spectrum of Apple’s business. SAppx11–12.
`
`There are also significant differences in the locations of proof between this
`
`case and those prior cases, e.g., a number of third parties as well as the inventors
`
`were located in California in those cases; here, there is substantial WDTX proof, and
`
`the inventors are located substantially closer to the WDTX. SAppx13–14. These
`
`differences weighed against transferring this case.
`
`B. Apple Does Not Show Error in the District Court’s Findings
`on the Private-Interest Factors
`
`1.
`
`The Court Reasonably Found That the Convenience of
`Willing Witnesses Factor Was Neutral
`
`The District Court found that this factor was neutral. SAppx24–27. To assess
`
`this factor, the Court looked to both party and non-party witnesses. SAppx26. For
`
`party witnesses, the Court concluded that this factor weighs slightly in favor of
`
`transfer. SAppx26. With regard to Apple’s witnesses, the Court credited Apple’s
`
`evidence to find that “the location of Apple’s witnesses weighs in favor of transfer.”
`
`SAppx26. With regard to Uniloc’s witnesses, who the Court found are located “in
`
`or near both districts” and who additionally submitted declarations that they would
`
`willingly travel to WDTX for trial, the Court concluded that this factor was neutral.
`
`13
`
`

`

`Case: 20-135 Document: 34 Page: 21 Filed: 07/01/2020
`
`SAppx26.
`
`With regard to third party witnesses, the District Court found that this factor
`
`weighed against transfer. SAppx26–27. The Court determined that a potential prior
`
`art witness in the District (Mr. Foote) minimally moved this factor towards retention
`
`because Apple opted to omit Mr. Foote’s patent from its invalidity contentions.
`
`SAppx26. For the two inventors and the prosecuting attorney, all of whom are based
`
`in New York, the Court applied the Fifth Circuit’s “100-mile” rule and rightly
`
`concluded that NDCA would not be clearly more convenient for those witnesses
`
`than if the trial proceeded in WDTX. SAppx26–27.
`
`In total, the District Court found that the factor was neutral. That was because
`
`both Apple and Uniloc will likely have limited third party witnesses, and “[a]s one
`
`of the most important witnesses will be the inventors,” their location in New York
`
`weighed against transfer. SAppx27.
`
`Apple’s Petition does not address this reasoning. It instead rests on a false
`
`premise: “Every identified potential witness is in California—most in the Northern
`
`District.” Pet. at 18. That statement is simply incorrect, as the District Court’s
`
`careful analysis of this factor shows. And Apple does not address the New York
`
`location of the inventors and prosecuting attorney, the WDTX location of prior art
`
`witnesses, or Uniloc’s Texas-based witnesses. It waived its right to do so in Reply.
`
`Apple instead faults the District Court for supposedly finding that “the
`
`14
`
`

`

`Case: 20-135 Document: 34 Page: 22 Filed: 07/01/2020
`
`convenience of plaintiff’s witnesses should not be considered.” Pet. at 23. But the
`
`Court did not do that. And, had Apple waited for the opinion to issue before filing
`
`its Petition, it could have addressed what the Court did hold.
`
`Apple also plays up its hand-picked party witnesses that allegedly reside in
`
`California and attempts to diminish its WDTX-based activ