Case: 23-120 Document: 2-1 Page: 1 Filed: 01/31/2023
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`Miscellaneous Docket No. ___
`
`
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`
`IN RE APPLE INC.,
`
`
`
`
`
`
`
`Petitioner.
`
`On Petition for Writ of Mandamus to the
`United States District Court for the
`Western District of Texas
`No. 6:22-cv-00149-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S PETITION FOR
`WRIT OF MANDAMUS
`
`
`
`Brian Rosenthal
`Katherine Q. Dominguez
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166
`
`Neema Jalali
`GIBSON, DUNN & CRUTCHER LLP
`555 Mission Street, Suite 3000
`San Francisco, CA 94105
`
`
`
`Melanie L. Bostwick
`Jonas Q. Wang
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`
`
`Counsel for Petitioner
`
`
`
`
`
`

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`Case: 23-120 Document: 2-1 Page: 2 Filed: 01/31/2023
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`FORM 9. Certificate of Interest
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`
`Form 9 (p. 1)
`July 2020
`
`
`Case Number
`Short Case Caption
`Filing Party/Entity
`
`
`
`In re Apple Inc.
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`Apple Inc.
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`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`
`
`
`
`
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`
`01/31/2023
`Date: _________________
`
`
`
`
`Signature:
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`/s/ Melanie L. Bostwick
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`
`
`
`
`Name:
`
`Melanie L. Bostwick
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
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`i
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`

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`Case: 23-120 Document: 2-1 Page: 3 Filed: 01/31/2023
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`FORM 9. Certificate of Interest
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Form 9 (p. 2)
`July 2020
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`(cid:1798) None/Not Applicable (cid:1798) None/Not Applicable
`
`✔
`
`✔
`
`Apple Inc.
`
`Additional pages attached
`
`ii
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`

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`Case: 23-120 Document: 2-1 Page: 4 Filed: 01/31/2023
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
`
`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`None/Not Applicable
`Additional pages attached
`
`Kelly Hart & Hallman LLP
`
`J. Stephen Ravel
`
`Allen Kathir
`
`Ryan K. Iwahashi
`
`Wendy W. Cai
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`None/Not Applicable
`
`Additional pages attached
`
`✔
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`iii
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`Case: 23-120 Document: 2-1 Page: 5 Filed: 01/31/2023
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`TABLE OF CONTENTS
`
`Page
`
`CERTIFICATE OF INTEREST ................................................................. i
`TABLE OF AUTHORITIES ..................................................................... vi
`INTRODUCTION ...................................................................................... 1
`RELIEF SOUGHT ..................................................................................... 4
`ISSUE PRESENTED ................................................................................ 4
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY ................ 4
`SpaceTime sues Apple for patent infringement in the Waco
`Division of the Western District of Texas despite
`having no connection to that division ..................................... 4
`Apple moves for intradistrict transfer to the Austin Division
`of the Western District of Texas, and venue discovery
`proceeds ................................................................................... 6
`Apple seeks to postpone the Markman hearing until the
`district court resolves transfer ................................................ 8
`The district court denies Apple’s motion to stay, indicating
`its intent to proceed with claim construction before
`resolving transfer .................................................................... 9
`REASONS FOR ISSUING THE WRIT .................................................. 11
`I.
`Apple Has A Clear And Indisputable Right To The
`Writ. ....................................................................................... 13
`A.
`The district court clearly abused its discretion by
`violating binding precedent requiring courts to
`prioritize transfer motions. .......................................... 13
`The district court’s stated reasons based on
`purported distinctions between inter- and
`intradistrict transfer cannot justify its departure
`from precedent. ............................................................ 18
`II. Apple Has No Other Adequate Means To Obtain Relief. ..... 25
`
`B.
`
`iv
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`Case: 23-120 Document: 2-1 Page: 6 Filed: 01/31/2023
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`III. Mandamus Is Appropriate Here Because Apple Has A
`Strong Case For Transfer And To Provide Guidance To
`The District Courts. .............................................................. 28
`A.
`The clearly superior convenience of the Austin
`Division of the Western District of Texas makes
`the court-mandated delay especially unjustified. ....... 28
`1.
`The private-interest factors strongly favor
`transfer. ............................................................... 29
`The public-interest factors also favor transfer. .. 35
`2.
`B. Mandamus is especially appropriate to provide
`guidance to district courts that intradistrict
`transfer motions are entitled to the same priority
`as interdistrict transfer motions. ................................. 37
`CONCLUSION ........................................................................................ 40
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`v
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`

`

`Case: 23-120 Document: 2-1 Page: 7 Filed: 01/31/2023
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010) ..................................................... 31, 33
`In re Apple Inc.,
`52 F.4th 1360 (Fed. Cir. 2022) ...........................1, 13, 14, 15, 17, 24, 26
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ............ 12, 14, 16, 26, 27, 29, 35, 36, 39
`In re Apple Inc.,
`No. 2022-163, 2022 WL 16754376 (Fed. Cir. Nov. 8, 2022) ........... 1, 14
`In re Apple Inc.,
`No. 2022-164, 2022 WL 16754153 (Fed. Cir. Nov. 8, 2022) ........... 1, 14
`Cheney v. U.S. Dist. Ct.,
`542 U.S. 367 (2004) ....................................................................... 12, 28
`Ex parte Collett,
`337 U.S. 55 (1949) ............................................................................... 18
`Cont’l Grain Co. v. The Barge FBL-585,
`364 U.S. 19 (1960) ............................................................................... 13
`In re EMC Corp.,
`501 F. App’x 973 (Fed. Cir. 2013) ....................................................... 13
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ......................................... 30, 32, 35, 37
`In re Google Inc.,
`No. 2015-138, 2015 WL 5294800 (Fed. Cir. July 16,
`2015) ............................................................................ 15, 17, 26, 27, 39
`In re Horseshoe Ent.,
`337 F.3d 429 (5th Cir. 2003) ............................................................... 15
`
`vi
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`Case: 23-120 Document: 2-1 Page: 8 Filed: 01/31/2023
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`In re Juniper Networks, Inc.,
`14 F.4th 1313 (Fed. Cir. 2021) .......................................... 31, 32, 36, 37
`McDonnell Douglas Corp. v. Polin,
`429 F.2d 30 (3d Cir. 1970) ...................................................... 13, 24, 39
`In re Micron Tech., Inc.,
`875 F.3d 1091 (Fed. Cir. 2017) ........................................................... 38
`In re Netflix, Inc.,
`No. 2021-190, 2021 WL 4944826 (Fed. Cir. Oct. 25, 2021) ................ 15
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ....................................................... 14
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009) ..................................................... 29, 32
`Peteet v. Dow Chem. Co.,
`868 F.2d 1428 (5th Cir. 1989) ............................................................. 14
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) ................................... 3, 19, 21, 29, 32, 34
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) .............................................................. 32
`In re SK hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ................................................. 15, 27
`In re Spalding Sports Worldwide, Inc.,
`203 F.3d 800 (Fed. Cir. 2000) ............................................................. 37
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ................................................. 15, 25
`In re TracFone Wireless, Inc.,
`852 F. App’x 537 (Fed. Cir. 2021) ................................................. 34, 35
`In re True Chem. Sols., LLC,
`841 F. App’x 240 (Fed. Cir. 2021) ................................................. 19, 33
`
`vii
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`

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`Case: 23-120 Document: 2-1 Page: 9 Filed: 01/31/2023
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`United States v. Nat’l City Lines, Inc.,
`337 U.S. 78 (1949) ......................................................................... 19, 20
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ....................................................................... 26, 39
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...................... 12, 21, 23, 24, 28, 29, 35, 40
`Weber v. Coney,
`642 F.2d 91 (5th Cir. 1981) ................................................................. 19
`In re Wyeth,
`406 F. App’x 475 (Fed. Cir. 2010) ....................................................... 14
`Statutes
`28 U.S.C. § 137(a) .................................................................................... 22
`28 U.S.C. § 1393 ...................................................................................... 18
`28 U.S.C. § 1404 ................................................................................ 19, 20
`28 U.S.C. § 1404(a) .......................................................................... passim
`Act of June 25, 1948, ch. 646, 62 Stat. 937 ............................................. 18
`Other Authorities
`Amended Order Assigning the Business of the Court, W.D.
`Texas (Dec. 16, 2022), https://tinyurl.com/3ctrfdmn .......................... 23
`14D Charles Alan Wright, Arthur R. Miller & Edward H.
`Cooper, Federal Practice and Procedure § 3809 (3d ed. 2007) .... 18, 19
`Clarence Rowland, The State of Intradistrict Venue Transfer
`in West Texas, Law360 (May 18, 2022),
`https://tinyurl.com/2p8bw5az ............................................................. 38
`Court Locations, United States District Court, Western
`District of Texas, https://www.txwd.uscourts.gov. ............................. 20
`
`viii
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`Case: 23-120 Document: 2-1 Page: 10 Filed: 01/31/2023
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`Dallas Division, United States District Court, Northern District
`of Texas, https://www.txnd.uscourts.gov/location/dallas ................... 20
`Locations, United States District Court, Eastern District of
`Texas, https://www.txed.uscourts.gov/?q=location/sherman; ............ 20
`Order Denying Motion to Transfer, North v. Radmax, Ltd., No.
`2:12-CV-00405-JRG (E.D. Tex. Mar. 25, 2013), ECF No. 24 ............. 21
`Order Dismissing Petition, In re Apple Inc., No. 2023-100,
`Dkt. 12 (Fed. Cir. Nov. 14, 2022) .......................................................... 2
`
`ix
`
`

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`Case: 23-120 Document: 2-1 Page: 11 Filed: 01/31/2023
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`INTRODUCTION
`Just recently, this Court reaffirmed what has long been the rule:
`
`motions to transfer venue under 28 U.S.C. § 1404(a) must be decided
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`promptly, at the outset of litigation, before the case has progressed
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`substantially on the merits. The purpose of § 1404(a) transfer is to
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`ensure that litigation takes place in a convenient forum with some
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`meaningful connection to the dispute. Delaying a transfer ruling while
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`proceeding to render decisions that affect the substantive issues in the
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`litigation undermines that purpose by forcing litigants and a district
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`court to spend time and resources proceeding in a forum that may not
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`ultimately try the case. Thus, this Court has granted mandamus
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`relief—including in three recent cases involving Apple—to order district
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`courts to decide transfer motions that have lingered on the docket while
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`the cases mature into substantive steps like discovery, claim
`
`construction, and other merits matters. See In re Apple Inc., 52 F.4th
`
`1360, 1362-63 (Fed. Cir. 2022); see also In re Apple Inc., No. 2022-163,
`
`2022 WL 16754376, at *1 (Fed. Cir. Nov. 8, 2022); In re Apple Inc., No.
`
`2022-164, 2022 WL 16754153, at *1 (Fed. Cir. Nov. 8, 2022).
`
`1
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`

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`Case: 23-120 Document: 2-1 Page: 12 Filed: 01/31/2023
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`The district court has recognized the obligation to give transfer
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`motions priority; without awaiting a writ of mandamus, it stayed a
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`fourth case against Apple on its own initiative. See In re Apple Inc., No.
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`2023-100, Dkt. 12 (Fed. Cir. Nov. 14, 2022). But the district court has
`
`now declared that this priority is not required where, as here, a party
`
`seeks transfer to another division of a judicial district, rather than
`
`transfer to another district altogether. Applying this principle, the
`
`district court denied Apple’s motion to stay proceedings pending
`
`resolution of its motion for intradistrict transfer, even though the
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`transfer motion has been fully briefed for nearly three months.
`
`Appx237. And the district court ordered the parties to proceed with the
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`Markman hearing, which it then scheduled to take place just three days
`
`from now, on February 3. Appx8. The district court is expected to issue
`
`claim-construction rulings no later than that hearing. And the district
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`court’s ruling has compelled the parties to continue with fact discovery
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`and otherwise press forward on the merits, including preparation for
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`final infringement and invalidity contentions due in less than a month
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`(on February 20), all in a forum that is clearly inconvenient.
`
`2
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`

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`Case: 23-120 Document: 2-1 Page: 13 Filed: 01/31/2023
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`There is no sound basis for the district court’s distinction between
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`interdistrict and intradistrict transfer. Section 1404(a) explicitly
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`provides for transfer “to any other district or division,” and “[t]he
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`§ 1404(a) factors apply as much to transfers between divisions of the
`
`same district as to transfers from one district to another.” In re
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`Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013). And the reasons for
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`affording priority to a transfer motion likewise apply equally in both
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`settings. The district court’s sole basis for drawing a distinction was
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`the theoretical possibility that the same district judge might retain the
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`case post-transfer because it would remain within the same judicial
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`district. That possibility, however, would require a departure from (or
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`amendment to) the standing order of the Western District of Texas,
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`which is binding pursuant to a federal statute. And in all events, that
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`theoretical possibility certainly does not justify affording all
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`intradistrict transfer requests lower priority as a matter of law.
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`Mandamus is urgently needed to address the district court’s
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`unlawful order denying Apple’s motion to stay and requiring the parties
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`to undergo Markman, fact discovery, and other merits proceedings. The
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`3
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`

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`Case: 23-120 Document: 2-1 Page: 14 Filed: 01/31/2023
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`Court should grant mandamus to ensure that all transfer motions,
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`whether inter- or intradistrict, receive the priority they deserve.
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`RELIEF SOUGHT
`Apple respectfully requests that the Court issue a writ of
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`mandamus directing the district court to promptly rule on Apple’s
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`pending transfer motion and stay all district-court proceedings on the
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`merits until transfer has been resolved.
`
`ISSUE PRESENTED
`Whether Apple is entitled to a writ of mandamus to correct the
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`district court’s clear abuse of discretion in denying Apple’s motion to
`
`stay proceedings pending resolution of its motion for intradistrict
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`transfer and instead requiring the parties to proceed to a Markman
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`hearing, continue with merits fact discovery, and otherwise move the
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`litigation forward on the merits before ruling on the motion to transfer
`
`this case.
`
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY
`
`SpaceTime sues Apple for patent infringement in the Waco
`Division of the Western District of Texas despite having no
`connection to that division
`SpaceTime3D, Inc., (SpaceTime) is an application software
`
`company incorporated in New York and based in San Francisco,
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`4
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`

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`Case: 23-120 Document: 2-1 Page: 15 Filed: 01/31/2023
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`California. Appx9. SpaceTime has no ties to the Waco Division of the
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`Western District of Texas. Appx91. For example, SpaceTime has no
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`known Waco Division offices or employees, nor any appointed business
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`agents or representatives for service in the Waco Division. Appx91.
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`And SpaceTime does not appear to have any connection to the Waco
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`Division through business relationships. Appx91. Indeed, SpaceTime
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`does not appear to have any connection to the Western District of Texas
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`at all. Appx9.
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`Nonetheless, in February 2022, SpaceTime filed a patent lawsuit
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`against Apple in the Waco Division of the Western District of Texas.
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`Appx9-62. SpaceTime accused Apple’s iPhone, iPad, iPod touch, and
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`Apple Watch devices of infringing its patents because, SpaceTime
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`alleges, these products display images of open applications or websites
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`in a three-dimensional space and allow users to switch between those
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`open applications or websites. Appx147; Appx22-28. Nothing about
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`this litigation has any meaningful connection to the Waco Division. All
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`of Apple’s research, design, development, marketing, and finance
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`operations for the accused products and features take place elsewhere,
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`the majority either in Cupertino, California, where Apple is
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`5
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`

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`Case: 23-120 Document: 2-1 Page: 16 Filed: 01/31/2023
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`headquartered, or at Apple’s facilities in Austin, Texas. Appx91;
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`Appx95-96; Appx99-101.
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`Apple moves for intradistrict transfer to the Austin Division of
`the Western District of Texas, and venue discovery proceeds
`Because this case lacks any connection to the Waco Division,
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`Apple filed a motion to transfer the case to the Austin Division of the
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`Western District of Texas on July 18, 2022. Appx86-106. Venue
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`discovery started shortly thereafter. See Appx111-112.
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`Venue discovery was extensive, with SpaceTime taking six
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`depositions, obtaining more than 5,500 pages of documents, and serving
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`interrogatories. Appx138. The resulting venue record shows a complete
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`lack of connection to the Waco Division. Neither Apple nor SpaceTime
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`has any relevant connections to the Waco Division. Appx90-91;
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`Appx95-97. Apple has no offices, properties, lease space, or data centers
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`located in the Waco Division, nor any suppliers headquartered there.
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`Appx109. Moreover, none of the Apple employees involved in the
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`development of the accused features is, or has ever been, based in the
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`Waco Division. Appx93-95. And the investigation has failed to uncover
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`any third parties with relevant information in the Waco Division.
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`Appx97.
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`6
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`

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`Case: 23-120 Document: 2-1 Page: 17 Filed: 01/31/2023
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`By contrast, venue discovery revealed that substantial sources of
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`proof are located in the Austin Division. Appx138-139. Three of Apple’s
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`potential trial witnesses are in Austin, while none are in Waco.
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`Appx95-96. Those Austin-based witnesses are Apple employees who
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`work on accused foundational framework software, including senior
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`software engineer Benjamin Nielsen, who is one of the leads on the
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`team that developed foundational framework software that SpaceTime
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`alleges satisfies certain limitations of the asserted patent claims.
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`Appx96; Appx138-139. The remainder of the Apple employees who
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`have worked on the accused technology are located in California, where
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`Apple is headquartered, with the exception of a single remote employee
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`in Dallas and a handful of remote employees elsewhere in the country.
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`Appx99-101; Appx103; Appx125.
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`Venue discovery closed on October 10, 2022, and SpaceTime has
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`not requested any additional venue discovery. Appx116; Appx146-147.
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`SpaceTime filed its transfer opposition on October 24. Appx118-133.
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`Apple’s transfer motion has been fully briefed since November 7.
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`Appx146.
`
`7
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`

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`Case: 23-120 Document: 2-1 Page: 18 Filed: 01/31/2023
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`Apple seeks to postpone the Markman hearing until the district
`court resolves transfer
`On November 16, 2022, Apple moved to stay all proceedings until
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`the district court resolved Apple’s motion for intradistrict transfer to
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`the Austin Division. Appx146. To that end, Apple requested that the
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`Markman hearing, then scheduled for the next day (November 17), be
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`postponed at least 14 days to allow for full briefing and a hearing on the
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`stay motion prior to any further substantive proceedings, including an
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`order on claim construction. Appx146. To minimize delay, Apple
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`offered to forgo filing a reply. Appx154.
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`The district court adopted Apple’s proposal, scheduled a hearing
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`on the stay motion for November 29, and reset the Markman hearing to
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`December 1. Appx183; Appx7.
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`On November 29, however, the district court sua sponte postponed
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`both the hearing on the stay motion and the Markman hearing “until
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`further order of the court.” Appx157-158. The court permitted Apple to
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`file a reply in support of its stay motion in the meantime, which Apple
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`did on December 2. Appx159-169.
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`On January 5, 2023, after a month elapsed without further order
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`of the district court setting a date for the postponed stay or Markman
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`8
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`Case: 23-120 Document: 2-1 Page: 19 Filed: 01/31/2023
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`hearings, Apple sought further clarification from the court regarding
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`the timeline for those hearings. Appx181-182. The district court
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`responded by resetting the stay motion hearing for February 2, 2023;
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`the district court later advanced the hearing to January 30, 2023.
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`Appx170; Appx178. The district court indicated that it would “set a
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`date for the Markman hearing at the conclusion of the Motion to Stay
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`hearing.” Appx181.
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`The district court denies Apple’s motion to stay, indicating its
`intent to proceed with claim construction before resolving
`transfer
`At the hearing on January 30, 2023, the district court denied
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`Apple’s motion to stay. Appx237. The district court first opined that it
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`was entitled to “delay making the decision on whether or not the case
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`belonged in Austin” until as late as the final pretrial conference, so as
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`“to determine, …. looking at the pretrial order and the witnesses that
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`will appear, in fact which venue really would be the most appropriate.”
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`Appx215.
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`The district court also reasoned that Apple would not be
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`prejudiced in the absence of a stay because Apple seeks intradistrict
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`rather than interdistrict transfer. Appx215. In the district court’s
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`Case: 23-120 Document: 2-1 Page: 20 Filed: 01/31/2023
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`view, this distinction mattered because the case “could remain on my
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`docket” even if intradistrict transfer were granted. Appx214. Although
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`the district court acknowledged that the current Western District of
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`Texas rules assign civil cases in the Austin Division to two other judges,
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`the district court observed that this assignment is not “jurisdictional”
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`and, in any event, “we don’t know a year from now whether or not that’s
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`the arrangement that we’ll still have.” Appx214-215. The district court
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`accordingly stated its intention to postpone ruling on Apple’s transfer
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`motion at least until after the Markman hearing, now scheduled for
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`February 3, 2023. Appx215; Appx221; Appx233; Appx8.1 And it
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`suggested that it might even defer the decision until “the pretrial
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`conference, at which time I’ll have from both sides the witness lists.”
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`Appx221.
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`Following the hearing, the district court noted its intent to issue a
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`written order denying Apple’s stay request. Appx8. No written order
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`has yet issued. In light of the urgency of Apple’s request—including the
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`imminent Markman hearing—Apple respectfully seeks this Court’s
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`1 Apple requested a postponement of this hearing in light of an
`unavoidable scheduling conflict for its lead counsel; the district court
`denied that request. Appx240.
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`Case: 23-120 Document: 2-1 Page: 21 Filed: 01/31/2023
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`mandamus review based on the reasoning laid out in the transcript of
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`the stay hearing. Appx205-238.
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`The district court’s denial of a stay means that Apple’s fully
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`briefed motion to transfer will remain unresolved while the district
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`court moves forward with holding a Markman hearing later this week,
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`and as the parties continue with fact discovery and prepare to serve
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`final infringement and invalidity contentions, which are due on
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`February 20. Appx171.
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`Fact discovery, which opened on November 14, 2022, is set to close
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`in June 2023. Appx83-84. Apple and SpaceTime have served and
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`responded to first sets of requests for production and interrogatories,
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`with ongoing requests for supplementation. Appx204. Indeed,
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`SpaceTime has requested to meet and confer, and appears to be
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`preparing to seek the district court’s intervention regarding an omnibus
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`discovery dispute. Appx187-196.
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`REASONS FOR ISSUING THE WRIT
`A petitioner seeking mandamus relief must (1) show a “clear and
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`indisputable” right to the writ; (2) have “no other adequate means to
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`attain the relief [it] desires”; and (3) demonstrate that “the writ is
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`appropriate under the circumstances.” In re Volkswagen of Am., Inc.,
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`545 F.3d 304, 311 (5th Cir. 2008) (en banc) (Volkswagen II) (quoting
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`Cheney v. U.S. Dist. Ct., 542 U.S. 367, 380-81 (2004)). All three
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`requirements are met here. First, mandamus is necessary to correct
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`the district court’s clear abuse of discretion in denying Apple’s motion to
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`stay proceedings pending resolution of Apple’s transfer motion, thus
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`requiring the parties to participate in a Markman hearing and other
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`proceedings on the merits. The Fifth Circuit2 and this Court have made
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`clear that such delay in resolving transfer is unlawful and warrants
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`mandamus relief. Contrary to the district court’s reasoning, it makes
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`no difference that Apple sought intradistrict, instead of interdistrict,
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`transfer. Second, there is no other form of relief that would allow Apple
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`to vindicate its right to seek transfer before the significant
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`inconvenience of proceeding in the original forum occurs. Finally,
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`mandamus is eminently appropriate here in view of the strong merits of
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`Apple’s transfer motion and to provide guidance to the district courts
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`
`2 On mandamus review of a district court decision concerning transfer
`pursuant to § 1404(a), this Court applies the law of the regional circuit,
`here the Fifth Circuit. See In re Apple Inc., 979 F.3d 1332, 1336 (Fed.
`Cir. 2020).
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`that intradistrict transfer motions are entitled to the same priority as
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`interdistrict transfer motions. This Court should grant mandamus and
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`direct that Apple’s intradistrict transfer motion be given top priority.
`
`I.
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`Apple Has A Clear And Indisputable Right To The Writ.
`A. The district court clearly abused its discretion by
`violating binding precedent requiring courts to
`prioritize transfer motions.
`A request for transfer is a threshold matter that a district court
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`must address at the outset of litigation. The transfer statute is
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`designed “to protect litigants, witnesses and the public against
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`unnecessary inconvenience and expense.” Cont’l Grain Co. v. The Barge
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`FBL-585, 364 U.S. 19, 27 (1960). But that goal is “thwarted” when
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`defendants must participate in protracted litigation before transfer is
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`resolved. Apple, 52 F.4th at 1361 (quoting In re EMC Corp., 501 F.
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`App’x 973, 975-76 (Fed. Cir. 2013)). Indeed, “[t]o undertake a
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`consideration of the merits of the action is to assume, even temporarily,
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`that there will be no transfer before the transfer issue is decided.”
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`McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30 (3d Cir. 1970). For
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`that reason, this Court has stressed “the importance of addressing
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`motions to transfer at the outset of litigation.” EMC, 501 F. App’x at
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`975; see also Apple, 979 F.3d at 1338 (faulting district court for
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`“barrel[ing] ahead on the merits in significant respects,” including
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`overseeing discovery disputes and claim construction, before issuing a
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`transfer decision); In re Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir.
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`2013) (“[A] trial court must first address whether it is a proper and
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`convenient venue before addressing any substantive portion of the
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`case.”). Just as defendants must file transfer motions promptly, see In
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`re Wyeth, 406 F. App’x 475, 477 (Fed. Cir. 2010) (citing Peteet v. Dow
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`Chem. Co., 868 F.2d 1428, 1436 (5th Cir. 1989)), district courts must
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`rule on them promptly, see Apple, 979 F.3d at 1337-38.
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`Indeed, just over two months ago, this Court issued writs of
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`mandamus in three cases involving Apple, directing the district court to
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`prioritize transfer motions. Apple, 52 F.4th at 1362-63; Apple, 2022 WL
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`16754376, at *1; Apple, 2022 WL 16754153, at *1. As this Court
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`explained, “precedent entitles parties to have their venue motions
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`prioritized.” Apple, 52 F.4th at 1362 (collecting authorities). “Where, as
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`here, the parties agree that no additional discovery or briefing is
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`necessary and there are clearly less time-consuming and more cost-
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`effective means for the court to resolve the motion,” then “it is a clear
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`Case: 23-120 Document: 2-1 Page: 25 Filed: 01/31/2023
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`abuse of discretion to require the parties to expend additional party and
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`court resources litigating the substantive matters of the case while
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`Apple’s motion to transfer unnecessarily lingers on the docket.” Id.
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`The Fifth Circuit has likewise instructed that transfer motions
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`must take “top priority” in litigation. In re Horseshoe Ent., 337 F.3d
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`429, 433 (5th Cir. 2003). When district courts fail to afford that priority
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`to transfer motions, this Court has repeatedly used its mandamus
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`authority to ensure that those courts do not “frustrate 28 U.S.C.
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`§ 1404(a)’s intent” by forcing litigants “to expend resources litigating
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`substantive matters in an inconvenient venue while a motion to
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`transfer lingers unnecessarily on the docket.” In re Google Inc., No.
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`2015-138, 2015 WL 5294800, at *1 (Fed. Cir. July 16, 2015); see also In
`
`re SK hynix Inc., 835 F. App’x 600, 600-01 (Fed. Cir. 2021); In re
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`TracFone Wirele