Case: 20-135 Document: 55 Page: 1 Filed: 11/09/2020
`United States Court of Appeals
`for the Federal Circuit
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:19-
`cv-00532-ADA, Judge Alan D. Albright.
` MELANIE L. BOSTWICK, Orrick, Herrington & Sutcliffe
`LLP, Washington, DC, argued for petitioner. Also repre-
`LLP, Austin, TX.
`Longview, TX, argued for respondent Uniloc 2017 LLC.
`Also represented by WILLIAM DAVIS.
`Before PROST, Chief Judge, MOORE and HUGHES, Circuit
`Order for the court filed by Chief Judge PROST.
`Dissent filed by Circuit Judge MOORE.
`PROST, Chief Judge.
`O R D E R


`Case: 20-135 Document: 55 Page: 2 Filed: 11/09/2020
`Apple Inc. petitions this court for a writ of mandamus
`directing the United States District Court for the Western
`District of Texas (“WDTX”) to transfer the underlying pa-
`tent infringement suit to the United States District Court
`for the Northern District of California (“NDCA”) pursuant
`to 28 U.S.C. § 1404(a). Uniloc 2017 LLC opposes. Uniloc
`also moves to file a sur-reply brief and to supplement the
`We grant Uniloc’s motions to file a sur-reply and to sup-
`plement the record. For the reasons below, we grant Ap-
`ple’s petition.
`In September 2019, Uniloc sued Apple in the Waco Di-
`vision of WDTX, alleging that several Apple products in-
`fringe U.S. Patent No. 6,467,088 (“the ’088 patent”).
`App. 16. According to Uniloc, “Apple’s software download
`functionality, including how Apple determines compatibil-
`ity for application and operating system software updates
`through the App Store, infringes the ’088 patent.” Re-
`sponse Br. 4. The “Accused Products include Apple devices
`that run iOS and macOS-based operating systems.” Id.
`In November 2019, Apple moved to transfer the case to
`NDCA on the basis that it would be clearly more conven-
`ient to litigate the case in that district. App. 84; see also
`28 U.S.C. § 1404(a). To support its motion, Apple submit-
`ted a sworn declaration from Michael Jaynes, a senior fi-
`nance manager at Apple. App. 105.
`In January 2020, Apple moved to stay all activity in the
`case unrelated to its transfer motion pending a decision on
`the motion. App. 166–73. The district court denied the
`stay motion without explanation in a text entry on the
`docket. App. 7. The parties completed briefing and discov-
`ery on transfer in February 2020. App. 4–9.
`The district court held a hearing on Apple’s motion on
`May 12, 2020, during which the court stated that it would
`deny the motion and issue a written order as soon as pos-
`sible. App. 10, 296. After the hearing, but before issuing a
`written order, the court held a Markman hearing, issued
`its claim construction order, held a discovery hearing


`Case: 20-135 Document: 55 Page: 3 Filed: 11/09/2020
` 3
`regarding the protective order in the case, and issued a cor-
`responding discovery order. App. 11. In response to these
`advances in the case, on June 15, 2020, Apple filed this pe-
`tition for a writ of mandamus. The district court issued its
`order denying transfer a week later, on June 22, 2020.
`S. App. 1–34.
`The writ of mandamus is an extraordinary remedy
`available to correct a clear abuse of discretion or usurpa-
`tion of judicial power. Cheney v. U.S. Dist. Ct., 542 U.S.
`367, 380 (2004). “In reviewing a district court’s ruling on a
`motion to transfer pursuant to § 1404(a) [on mandamus re-
`view], we apply the law of the regional circuit,” in this case
`the Fifth Circuit. See In re Barnes & Noble, Inc., 743 F.3d
`1381, 1383 (Fed. Cir. 2014). “A district court abuses its
`discretion if it: (1) relies on clearly erroneous factual find-
`ings; (2) relies on erroneous conclusions of law; or (3) mis-
`applies the law to the facts.” In re Volkswagen of Am., Inc.,
`545 F.3d 304, 310 (5th Cir. 2008) (en banc) (“Volkswagen
`II”) (quoting McClure v. Ashcroft, 335 F.3d 404, 408 (5th
`Cir. 2003)). As “the distinction between an abuse of discre-
`tion and a clear abuse of discretion cannot be sharply de-
`fined for all cases,” “[o]n mandamus review, we review for
`these types of errors, but we only will grant mandamus re-
`lief when such errors produce a patently erroneous result.”
`Id. “To determine whether a district court clearly abused
`its discretion in ruling on a transfer motion, some petitions
`for mandamus relief that are presented to us require that
`we ‘review[] carefully the circumstances presented to and
`the decision making process’ of the district court.” Id. at
`312 (alteration in original) (quoting In re Horseshoe Ent.,
`337 F.3d 429, 432 (5th Cir. 2003)).
`In general, three conditions must be satisfied for a writ
`to issue: (1) the petitioner must demonstrate a clear and
`indisputable right to issuance of the writ; (2) the petitioner
`must have no other adequate method of attaining the de-
`sired relief; and (3) the court must be satisfied that the writ
`is appropriate under the circumstances. Cheney, 542 U.S.
`at 380–81. In the § 1404(a) transfer context, however, the
`test for mandamus essentially reduces to the first factor,
`given that “the possibility of an appeal in the transferee


`Case: 20-135 Document: 55 Page: 4 Filed: 11/09/2020
`forum following a final judgment . . . is not an adequate al-
`ternative,” and that “an erroneous transfer may result in
`judicially sanctioned irreparable procedural injury.” In re
`McGraw-Hill Glob. Educ. Holdings LLC, 909 F.3d 48, 56
`(3d Cir. 2018) (internal quotation marks omitted); see also
`In re TS Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir.
`2008). Accordingly, the issue on appeal is whether Apple
`has shown a clear and indisputable right to issuance of the
`Before addressing the merits of Apple’s petition, we
`first consider Uniloc’s argument that Apple waived a num-
`ber of arguments by failing to raise them in its petition.
`Apple filed its petition on June 15, 2020—one week be-
`fore the district court issued its written order denying
`transfer and more than one month after the court held a
`hearing on the transfer motion and orally indicated that it
`would deny the motion. Apple’s reply brief, however, was
`filed after the district court issued its written order deny-
`ing transfer. Uniloc moved to file a sur-reply on the basis
`that Apple’s reply brief raised “new points of error” not
`raised in the petition because Apple incorrectly guessed in
`its pre-order petition as to the bases on which the district
`court would support its order denying transfer. See Op-
`posed Non-Confidential Motion of Respondent for Leave to
`File Sur-Reply Brief (July 13, 2020), ECF No. 39; see also
`Response Br. 11 (arguing that Apple “guessed wrong [in its
`petition] at how the [district court] would rule on a number
`of factors” and, as a result, failed “to challenge several find-
`ings at all” in the initial petition). In its sur-reply, Uniloc
`addresses the merits of the arguments it contends Apple
`first raised in its reply brief and further argues that Apple’s
`purportedly newly raised arguments are waived. See Sur-
`Reply Br. 1. Apple defends its pre-order filing, explaining
`that “[g]iven the rapid progression of this case, [it could
`not] wait any longer for a written order before seeking
`mandamus to prevent the case from moving forward in an
`inconvenient venue.” Pet. 10–11.
`Ordinarily, an appellant waives issues or arguments
`not properly raised in its opening brief. See Becton


`Case: 20-135 Document: 55 Page: 5 Filed: 11/09/2020
` 5
`Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed.
`Cir. 1990). “This practice is, of course, not governed by a
`rigid rule but may as a matter of discretion not be adhered
`to where circumstances indicate that it would result in ba-
`sically unfair procedure.” Id.; see also Harris Corp. v. Er-
`icsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (“An
`appellate court retains case-by-case discretion over
`whether to apply waiver.”). To the extent Apple raises new
`arguments in its reply brief in response to the district
`court’s order, we exercise our discretion to not apply waiver
`because doing so would be unfair under the circumstances.
`Although district courts have discretion as to how to
`handle their dockets, once a party files a transfer motion,
`disposing of that motion should unquestionably take top
`priority. E.g., In re Horseshoe, 337 F.3d at 433 (explaining
`that transfer motions should take “top priority” in the han-
`dling of a case); McDonnell Douglas Corp. v. Polin, 429 F.2d
`30, 30 (3d Cir. 1970) (“To undertake a consideration of the
`merits of the action is to assume, even temporarily, that
`there will be no transfer before the transfer issue is de-
`cided. Judicial economy requires that another district
`court should not burden itself with the merits of the action
`until it is decided that a transfer should be effected.”); In re
`Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir. 2013) (ex-
`plaining that “a trial court must first address whether it is
`a proper and convenient venue before addressing any sub-
`stantive portion of the case”); In re EMC Corp., 501 F. App’x
`973, 975 (Fed. Cir. 2013) (acknowledging the “importance
`of addressing motions to transfer at the outset of litiga-
`Instead, the district court barreled ahead on the merits
`in significant respects, prompting Apple to file its manda-
`mus petition before the district court issued its transfer or-
`der. For example, the court held a Markman hearing,
`issued its claim construction order, held a discovery hear-
`ing, and issued a corresponding discovery order. App. 11.
`These are not merely rote, ministerial tasks. Indeed, a
`Markman hearing and claim construction order are two of
`the most important and time-intensive substantive tasks a
`district court undertakes in a patent case.


`Case: 20-135 Document: 55 Page: 6 Filed: 11/09/2020
`Given Apple’s concern over the rapid progression of
`this case, Apple filed its petition before the district court
`issued its transfer order. In the petition, Apple addressed
`what it believed would be the court’s likely reasons for its
`denial of the motion. Apple was first able to directly ad-
`dress the district court’s order in its reply brief. On these
`facts, and because we grant Uniloc’s motion to file a sur-
`reply, we decline to apply waiver.1
`As to the merits, under 28 U.S.C. § 1404(a), “[f]or the
`convenience of parties and witnesses, in the interest of jus-
`tice, a district court may transfer any civil action to any
`other district or division where it might have been brought
`or to any district or division to which all parties have con-
`sented.” Under Fifth Circuit law, to prevail on its transfer
`motion before the district court, Apple bore the burden of
`demonstrating that “the transferee venue is clearly more
`convenient.” Volkswagen II, 545 F.3d at 314. The district
`court denied that motion. On mandamus review, Apple
`bears the burden of demonstrating that the court’s denial
`amounted to a clear abuse of discretion. Id. at 308.
`The Fifth Circuit assesses transfer requests using the
`well-established private and public interest factors. Id. at
`315. “The private interest factors are: ‘(1) the relative ease
`of access to sources of proof; (2) the availability of compul-
`sory process to secure the attendance of witnesses; (3) the
`cost of attendance for willing witnesses; and (4) all other
`practical problems that make trial of a case easy, expedi-
`tious and inexpensive.’” Id. (quoting In re Volkswagen AG,
`1 To the extent this order could be construed as con-
`doning pre-order mandamus petitions, we take care to em-
`phasize the particular circumstances of this case: namely,
`the district court heavily prioritized the merits of the case,
`and Uniloc was allowed a sur-reply. We also note that Ap-
`ple’s decision to file a pre-order petition was not without
`consequence to Apple. Indeed, Apple was only able to file
`one brief directly responding to the district court’s argu-
`ments, and Uniloc, through its sur-reply, received both the
`last word and extra space for briefing.


`Case: 20-135 Document: 55 Page: 7 Filed: 11/09/2020
` 7
`371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”)). And
`“[t]he public interest factors are: ‘(1) the administrative dif-
`ficulties flowing from court congestion; (2) the local interest
`in having localized interests decided at home; (3) the famil-
`iarity of the forum with the law that will govern the case;
`and (4) the avoidance of unnecessary problems of conflict of
`laws [or in] the application of foreign law.’” Id. (alteration
`in original) (quoting Volkswagen I, 371 F.3d at 203).
`The parties agree that the third and fourth public in-
`terest factors are neutral in this case but dispute whether
`the remaining factors weigh for or against transfer. See
`Pet. 34; Response Br. 11. We conclude that Apple has
`demonstrated that the district court clearly abused its dis-
`cretion in denying transfer.2 We discuss the relevant pri-
`vate and public interest factors in turn.
`A. Relative ease of access to sources of proof
`The district court concluded that the first private inter-
`est factor—the relative ease of access to sources of proof—
`“weighs slightly in favor of transfer.” S. App. 15; see also
`S. App. 22. The court divided its analysis between the lo-
`cation of witnesses and the location of relevant documents.
`The district court determined that “the location of wit-
`nesses weighs in favor of transfer,” because “Apple pro-
`vides sufficient argument that most relevant party
`witnesses are located in NDCA.” S. App. 21. Even after
`taking potential third-party witnesses into account, the
`2 The dissent states in its conclusion that Apple’s
`“petition itself does not raise many of the arguments the
`majority relies upon in its decision.” Dissent at 12. To the
`extent this statement might be misconstrued as suggesting
`that we have relied on arguments not advanced by Apple,
`that is not the case. For the reasons explained above, we
`have not applied waiver under the circumstances
`here. Therefore, we have considered all the arguments in
`the papers before us, including those in Apple’s reply brief
`and in the sur-reply we permitted Uniloc to file.


`Case: 20-135 Document: 55 Page: 8 Filed: 11/09/2020
`district court concluded that “the greater balance of wit-
`nesses . . . are located within NDCA.” S. App. 21–22.
`The court concluded that “the location of relevant doc-
`uments was neutral.” S. App. 22; see also S. App. 19. In
`reaching this conclusion, the court credited “Uniloc’s argu-
`ment concerning the physical location of its documents” in
`a different Texas district as being closer to WDTX than
`NDCA. S. App. 19. With respect to Apple, the court noted
`that Apple’s campus in Austin, Texas houses revenue and
`accounting documents that the court concluded might be
`“relevant to ascertaining what damages Uniloc could argue
`at trial and Uniloc’s inducement claim.” S. App. 20. The
`court also highlighted that Apple’s Austin campus might
`house instruction documents relevant to Uniloc’s induce-
`ment claim. Id. The court further noted that Apple owns
`content delivery network (“CDN”) servers in the Northern
`District of Texas that might be relevant because Apple uses
`the CDN “to store and distribute apps and other content of
`the accused App Store.” Id. With respect to third parties
`located within WDTX, the district court explained that
`“Flextronics, the third-party manufacturer of an Accused
`Product, may have relevant documents,” but that such doc-
`uments may be “duplicative” of what Apple will itself pro-
`duce. Id. For these reasons, the court found “that there
`are documents relevant to this case located in this District,
`such that Apple has not shown it is clearly more convenient
`to transfer this case to NDCA.” Id.
`The district court ultimately determined that because
`the location of witnesses weighs in favor of transfer, but the
`location of documents was neutral, the first private interest
`factor “weighs slightly in favor of transfer.” S. App. 15; see
`also S. App. 22.
`The district court legally erred in considering wit-
`nesses as “sources of proof” for purposes of the first private
`interest factor. This factor relates to the ease of access to
`non-witness evidence, such as documents and other physi-
`cal evidence; the third private interest factor—the cost of
`attendance for willing witnesses—relates to the conven-
`ience of each forum to witnesses. See, e.g., Volkswagen II,
`545 F.3d at 316–18; see also Duha v. Agrium, Inc., 448 F.3d
`867, 876 (6th Cir. 2006) (“Access to non-witness sources of


`Case: 20-135 Document: 55 Page: 9 Filed: 11/09/2020
` 9
`proof, including documents in particular, is properly con-
`sidered as part of the ease-of-access factor.”); In re Acer Am.
`Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (analyzing
`witness convenience under the third private interest factor
`and documentary and physical evidence under the first pri-
`vate interest factor). If witness convenience is considered
`when assessing both the first and third private interest fac-
`tors, witness convenience will be inappropriately counted
`The district court also misapplied the law to the facts
`in analyzing the location of relevant documents. Notably,
`in its substantive analysis of this factor, the district court
`failed to even mention Apple’s sources of proof in NDCA,
`much less meaningfully compare them to proof in or nearer
`to WDTX. Rather, the district court concluded that the fac-
`tor was neutral merely because there existed some “docu-
`ments relevant to this case located in the District, such
`that Apple has not shown it is clearly more convenient to
`transfer this case to NDCA.” S. App. 20. The district
`court’s analysis confuses Apple’s burden of demonstrating
`that the transferee venue is clearly more convenient with
`the showing needed for a conclusion that a particular pri-
`vate or public interest factor favors transfer. Indeed, a fac-
`tor can favor transfer even if that factor is, standing alone,
`insufficient to warrant transfer. See, e.g., Volkswagen II,
`545 F.3d at 315; Action Indus., Inc. v. U.S. Fidelity & Guar.
`Co., 358 F.3d 337, 340 (5th Cir. 2004). And although we
`credit the district court’s determination that some relevant
`documents are located in WDTX, the movant need not show
`that all relevant documents are located in the transferee
`venue to support a conclusion that the location of relevant
`documents favors transfer. Nor is this factor neutral
`merely because some sources of proof can be identified in
`the district. The district court erred in holding otherwise.
`Even to the extent the district court’s order can be in-
`terpreted as attempting to conduct an appropriate compar-
`ison of the ease of access to sources of proof in the two
`forums, the court erred by overemphasizing the sources of
`proof in or nearer to WDTX and failing to meaningfully
`consider the sources of proof in NDCA. “In patent infringe-
`ment cases, the bulk of the relevant evidence usually comes


`Case: 20-135 Document: 55 Page: 10 Filed: 11/09/2020
`from the accused infringer. Consequently, the place where
`the defendant’s documents are kept weighs in favor of
`transfer to that location.” In re Genentech, Inc., 566 F.3d
`1338, 1345 (Fed. Cir. 2009). In his sworn declaration, Mr.
`Jaynes stated that Apple stores a significant amount of rel-
`evant information in NDCA, including the relevant source
`code, Apple records relating to the research and design of
`the accused products, and marketing, sales, and financial
`information for the accused products. See, e.g., App. 115–
`16 ¶¶ 23, 30; App. 119 ¶¶ 47, 48; App. 184; Pet. 29–30. Nei-
`ther the district court nor Uniloc disputes that such records
`are located in NDCA. Mr. Jaynes also stated in his sworn
`declaration that he was unaware of any relevant docu-
`ments in WDTX. App. 119 ¶ 49. Again, although we credit
`the district court’s identification of some relevant proof lo-
`cated in or nearer to WDTX, the district court erred by fail-
`ing to meaningfully consider the wealth of important
`information in NDCA.
`While we note these errors, we need not reweigh the
`evidence (or, rather, weigh Apple’s evidence in the first in-
`stance), or otherwise disturb the district court’s ultimate
`conclusion that the location of relevant documents is neu-
`tral, because the remainder of the factors convince us that
`transfer is appropriate and that the court clearly abused
`its discretion in concluding otherwise.
`B. The availability of compulsory process to secure the at-
`tendance of witnesses
`The district court concluded that the second private in-
`terest factor—the availability of compulsory process to se-
`cure the attendance of witnesses—was neutral in this case.
`S. App. 23–24. On review, we see no reason to disturb the
`district court’s conclusion on this factor.
`C. The cost of attendance for willing witnesses
`Next we turn to “an important factor, the convenience
`for and cost of attendance of witnesses.” Genentech, 566
`F.3d at 1343. In analyzing this factor, the Fifth Circuit
`uses the “100-mile rule,” which provides that “[w]hen the
`distance between an existing venue for trial of a matter and
`a proposed venue under § 1404(a) is more than 100 miles,
`the factor of inconvenience to witnesses increases in direct


`Case: 20-135 Document: 55 Page: 11 Filed: 11/09/2020
` 11
`relationship to the additional distance to be traveled.”
`Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I, 371
`F.3d at 204–05).
`In Genentech, this court—applying Fifth Circuit law—
`held that “the ‘100-mile’ rule should not be rigidly applied”
`where “witnesses . . . will be required to travel a significant
`distance no matter where they testify.” 566 F.3d at 1344.
`Genentech specifically held that witnesses traveling from
`Europe, Iowa, and the East Coast would be only “slightly
`more inconvenienced by having to travel to California”
`than to Texas. Id. at 1348. This sensible holding stems
`from the observation that, regardless of the ultimately cho-
`sen venue, such witnesses will be required to travel a sig-
`nificant distance, will likely incur meal and lodging
`expenses, and will likely incur time away from home. See
`id. at 1344. Genentech’s interpretation of the 100-mile rule
`is consistent with the Fifth Circuit’s reasoning underlying
`the rule, which forcefully applies to witnesses who reside
`near one of the two districts but not to the circumstances
`presented here:
`Additional distance means additional travel time;
`additional travel time increases the probability for
`meal and lodging expenses; and additional travel
`time with overnight stays increases the time which
`these fact witnesses must be away from their regu-
`lar employment. Furthermore, the task of schedul-
`ing fact witnesses so as to minimize the time when
`they are removed from their regular work or home
`responsibilities gets increasingly difficult and com-
`plicated when the travel time from their home or
`work site to the court facility is five or six hours
`one-way as opposed to 30 minutes or an hour.
`Volkswagen I, 371 F.3d at 205.
`The district court concluded that this factor was neu-
`tral. S. App. 26–27. The court divided its analysis into the
`convenience to third-party witnesses and the convenience
`to party witnesses.
`The court determined that “the location of third-party
`witnesses weighs against transfer.” S. App. 26; see also
`S. App. 27 (concluding that “the inventors being located


`Case: 20-135 Document: 55 Page: 12 Filed: 11/09/2020
`closer to WDTX is a significant fact that weighs against
`transfer” (emphasis added)). The court highlighted that
`Uniloc identified three important third-party witnesses be-
`lieved to reside in New York: the attorney who prosecuted
`the asserted patent and the patent’s two named inventors.
`S. App. 25, 27. The court reasoned that because the inven-
`tors are likely to be two of the most important witnesses
`called at trial, and because these inventors live “much
`closer to WDTX than NDCA,” the location of third-party
`witnesses weighed against transfer. S. App. 26–27. The
`court also determined that “the location of party witnesses
`slightly weighs in favor of transfer to NDCA.” S. App. 26.
`In sum, the court concluded that the factor was neutral.
`S. App. 26–27.
`The district court misapplied the law to the facts of this
`case by too rigidly applying the 100-mile rule. As a result,
`the district court gave too much significance to the fact that
`the inventors and patent prosecutor live closer to WDTX
`than NDCA. Although it might be true that these individ-
`uals will need to travel a greater distance to reach NDCA
`than WDTX, and although a flight from New York to
`WDTX might take a bit less time than from New York to
`NDCA, in either instance these individuals will likely have
`to leave home for an extended period of time and incur
`travel, lodging, and related costs. As expressed in Genen-
`tech, the 100-mile rule “should not be rigidly applied”
`where witnesses “will be required to travel a significant
`distance no matter where they testify.” 566 F.3d at 1344.
`These witnesses will only be “slightly more inconvenienced
`by having to travel to California” than to Texas.3 See id. at
`3 The dissent argues that our determination reflects
`“mere disagreement with the district court[].” Dissent at 3.
`We are puzzled as to how our conclusion—that the district
`court misapplied the law by rigidly applying the law in a
`manner inconsistent with Genentech—amounts to a mere
`“disagreement” with the district court. We also do not un-
`derstand how this conclusion disregards our standard of
`review, considering that we are obligated to review for


`Case: 20-135 Document: 55 Page: 13 Filed: 11/09/2020
` 13
`In view of this misapplication of the law, and in view of
`the district court’s findings that “most relevant party wit-
`nesses are located in NDCA” and “it is likely that both Ap-
`ple and Uniloc will each have one or more potential trial
`witnesses from NDCA,” S. App. 27, this factor weighs at
`least slightly in favor of transfer. See Volkswagen II, 545
`F.3d at 317 (concluding that the district court “erred in ap-
`plying this factor” when, contrary to the district court’s con-
`clusion, the factor weighed in favor of transfer).
`D. All other practical problems that make trial of a case
`easy, expeditious, and inexpensive
`The district court concluded that the fourth private in-
`terest factor—all other practical problems that make trial
`of a case easy, expeditious, and inexpensive—“weighs
`heavily against transfer.” S. App. 30. The court reasoned
`that “significant steps” had already been taken in the case.
`S. App. 29. In particular, the court explained that the par-
`ties exchanged infringement and invalidity contentions,
`the parties “briefed and argued Markman claim terms,”
`and the court held a Markman hearing and “issued a claim
`construction order.” S. App. 29–30. Thus, wrote the court,
`“NDCA would have to duplicate this Court’s efforts to con-
`strue the patent unless it merely chose to accept what this
`Court has already determined and entered.” S. App. 30.
`The district court further remarked that because NDCA
`has more pending civil cases than WDTX, a transfer to
`NDCA, “a forum with a significantly higher level of case
`clear misapplications of the law. E.g., Volkswagen II,
`545 F.3d at 310. Only by giving district courts unbounded
`discretion would we defer to this misapplication of law. Fi-
`nally, we reject the dissent’s apparent invitation to discard
`or otherwise ignore Genentech.
`The dissent also appears to suggest that we have en-
`tirely dispensed with the 100-mile rule and that we “seek[]
`to eliminate the application of this rule to third-party wit-
`nesses residing a plane ride away from both districts.” Dis-
`sent at 4. To the contrary, we merely follow Genentech’s
`sensible holding that the 100-mile rule should not be rig-
`idly applied in circumstances such as these.


`Case: 20-135 Document: 55 Page: 14 Filed: 11/09/2020
`congestion,” would be “an act against judicial economy.”
`S. App. 29–30.
`Apple argued that this factor “weighs in favor of trans-
`fer because of the twenty-one cases [presenting some over-
`lapping issues] that have been transferred from districts in
`Texas to NDCA.” S. App. 28. The district court was unper-
`suaded, reasoning that many of those twenty-one cases
`were stayed, the active cases lacked set trial dates, and the
`cases related to different patents. S. App. 29–30. The court
`explained that it “disagrees that a case should be trans-
`ferred when another case with the same parties and only
`some overlapping issues such as standing and subject mat-
`ter jurisdiction are present in another district.” S. App. 30.
`The district court legally erred in its analysis of this
`factor. Aside from the service of preliminary infringement
`contentions, see App. 32–34, all the “significant steps” that
`had been taken by the court and parties in the case were
`taken after Apple moved for transfer in November 2019, as
`well as after Apple moved to stay the case in January 2020.
`For example, the parties submitted Markman briefing in
`February and March 2020. What’s more, most of the “sig-
`nificant” steps the district court relied on were taken after
`the district court’s May 12, 2020 hearing on the transfer
`motion, during which the court explained that the motion
`would be denied. In particular, after the transfer hearing
`but before issuing a transfer order, the district court held a
`Markman hearing and issued its claim construction order.
`The court also held a discovery hearing and issued a corre-
`sponding discovery order.
`As stated previously, once a party files a transfer mo-
`tion, disposition of that motion should take top priority in
`the case. E.g., In re Horseshoe, 337 F.3d at 433; McDonnell
`Douglas Corp., 429 F.2d at 30; In re Nintendo, 544 F. App’x
`at 941; In re EMC, 501 F. App’x at 975. Setting aside the
`questionable prioritization of other proceedings over the
`pending transfer motion, the district court legally erred in
`concluding that the merits-related steps it had taken
`weighed heavily against transfer. A district court’s deci-
`sion to give undue priority to the merits of a case over a
`party’s transfer motion should not be counted against that
`party in the venue transfer analysis.


`Case: 20-135 Document: 55 Page: 15 Filed: 11/09/2020
` 15
`The district court also misapplied the law to the facts
`of this case in concluding that judicial economy weighed
`against transfer because NDCA has more pending cases
`than WDTX.4 “To the extent that court congestion matters,
`what is important is the speed with which a case can come
`to trial and be resolved.” See In re Ryze Claims Sols., LLC,
`968 F.3d 701, 710 (7th Cir. 2020) (quoting In re Factor VIII
`or IX Concentrate Blood Prods. Litig., 484 F.3d 951, 958
`(7th Cir. 2007)); see also Gates Learjet Corp. v. Jensen, 743
`F.2d 1325, 1337 (9th Cir. 1984) (concluding, in assessing
`the impact of court congestion on the § 1404(a) analysis,
`that “[t]he real issue is . . . whether a trial may be speedier
`in another court because of its less crowded docket”).
`As the district court acknowledged, NDCA and WDTX
`have historically had comparable times to trial for civil
`cases (25.9 months for NDCA versus 25.3 months for
`WDTX), and, most relevantly, NDCA

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