Case: 20-135 Document: 45 Page: 1 Filed: 07/29/2020
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`Orrick, Herrington & Sutcliffe LLP
`Columbia Center
`1152 15th Street, N.W.
`Washington, DC 20005-1706
`+1 202 339 8400
`orrick.com
`
`Melanie L. Bostwick
`E mbostwick@orrick.com
`D +1 202 339 8483
`F +1 202 339 8500
`
`July 29, 2020
`
`Via CM/ECF
`Peter R. Marksteiner
`Circuit Executive & Clerk of the Court
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W.
`Washington, DC 20439
`
`
`In re Apple Inc., No. 20-135
`Re:
`Dear Colonel Marksteiner:
`Pursuant to Rule 28(j), Apple submits as supplemental authority In re Adobe
`Inc., 2020 WL 4308164 (Fed. Cir. July 28, 2020). Adobe—involving the same
`district judge’s refusal to transfer patent litigation from the Western District of
`Texas to the Northern District of California—confirms that mandamus is warranted
`in Apple’s case.
`Adobe demonstrates that the linchpin of the district court’s decision was an
`abuse of discretion. A court cannot deny transfer “based solely on its perceived
`ability to more quickly schedule a trial.” Order 6. Here, this perception drove the
`only two factors the court weighed against transfer: “because the time to trial is
`significantly faster than NDCA, [the court-congestion] factor weighs against
`transfer” (SAppx30-31), and because “this court has a trial date set,” the practical-
`problems factor “weighs heavily against transfer” (SAppx29-30). And just as in
`Adobe, the record here lacks any “appreciable difference in docket congestion.”
`Order 6.
`Adobe also confirms the district court’s other errors. Adobe reaffirms that,
`when most witnesses and documents are in the transferee forum, “the compulsory
`process and sources of proof factors together tip significantly in favor of transferring
`the case.” Order 5. Adobe specifically faults the district court for weighing those
`factors only “slightly” pro-transfer. Id. The court committed the same error here: it
`acknowledged that most witnesses and documents are in California but found the
`compulsory-process factor neutral and the sources-of-proof factor only “slightly” pro-
`transfer. Reply 5-10. Adobe also makes clear that, where a party identifies “a
`significant number of its own employees as potential witnesses” in the transferee
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`July 29, 2020
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`forum, “this factor also favors transfer.” Order 5. Here too, the district court erred
`by giving little weight to the convenience of party witnesses. Pet. 22-24; Reply 10-
`11. And it further erred by improperly considering witnesses “from outside both
`districts.” Order 5; Reply 11.
`Just as in Adobe, “retaining this case in the Western District of Texas is not
`convenient for the parties and witnesses. It is not in the interest of justice or proper
`administration. And the district court’s contrary determination amounted to a clear
`abuse of discretion.” Order 7.
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`Respectfully,
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`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`Counsel for Petitioner Apple Inc.
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`cc: Counsel of record (via CM/ECF)
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`Case: 20-126 Document: 17 Page: 1 Filed: 07/28/2020Case: 20-135 Document: 45 Page: 3 Filed: 07/29/2020
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`NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: ADOBE INC.,
`Petitioner
`______________________
`
`2020-126
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:19-
`cv-00527-ADA, Judge Alan D. Albright.
`______________________
`
`ON PETITION
`______________________
`
`Before PROST, Chief Judge, MOORE and HUGHES, Circuit
`Judges.
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`PROST, Chief Judge.
`
`O R D E R
`Adobe Inc. petitions for a writ of mandamus asking this
`court to direct the United States District Court for the
`Western District of Texas to grant its motion to transfer
`pursuant to 28 U.S.C. § 1404(a) to the United States Dis-
`trict Court for the Northern District of California. Syn-
`Kloud Technologies, LLC opposes. Adobe replies.
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`IN RE: ADOBE INC.
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`BACKGROUND
`SynKloud brought this suit against Adobe, a company
`headquartered in San Jose, California, alleging infringe-
`ment of six patents by various Adobe products related to
`cloud storage. The complaint stated that SynKloud is a
`company organized under the laws of Delaware, with its
`principal place of business in Milton, Delaware.
`Adobe moved the district court to transfer the case to
`the Northern District of California where it is headquar-
`tered pursuant to § 1404(a), which authorizes transfer
`“[f]or the convenience of parties and witnesses, in the in-
`terest of justice.” Adobe argued that “[o]ther than this lit-
`igation, SynKloud does not appear to have any connection
`whatsoever to Texas,” noting that SynKloud’s President re-
`sides in New York, SynKloud was not registered to do busi-
`ness in Texas, and it did not appear to have any operations,
`employees, or customers in Texas. A.198.
`Adobe further urged that the Northern District of Cal-
`ifornia would be clearly more convenient. In support,
`Adobe submitted sworn declarations attesting to the fact
`that the teams responsible for the development, marketing,
`and sales of the accused services are primarily based in the
`Northern District of California. See, e.g., A.264–68, 405–
`08. Adobe noted that its own witnesses who would likely
`testify about the design, marketing, and sales of the ac-
`cused products overwhelmingly reside in the transferee fo-
`rum. Adobe further argued that, while it has two offices in
`Austin, Texas, those offices “have nothing to do with the
`design, development, or operation of the Accused Products”
`that were at issue in the case. A.199.
`Adobe additionally noted that the inventor of the as-
`serted patents, Sheng Tai Tsao, and his company, STT
`WebOS, Inc., which had assigned the patents to SynKloud,
`are located in the Northern District of California, and
`hence were only subject to the subpoena power of the trans-
`feree court. Adobe argued that “Mr. Tsao and STT WebOS
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`IN RE: ADOBE INC.
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`have advertised that they had ‘demonstratable’ products
`‘protected by’ most, if not all, of the patents-in-suit prior to
`the earliest filing date of the asserted patents, potentially
`invalidating them by violating the statutory on-sale bar,”
`and thus “have highly relevant information related to the
`validity issues in this case.” A.197.
`After a hearing, the district court denied Adobe’s mo-
`tion from the bench. With regard to the relative ease of
`access to sources of proof factor, the district court found
`that the convenience of having Adobe’s, the inventor’s, and
`STT WebOS’s documents in the Northern District of Cali-
`fornia outweighed SynKloud’s purported convenience in
`the location of SynKloud’s documents in New York and Vir-
`ginia. The district court acknowledged a disagreement be-
`tween the parties as to whether any Adobe employee in
`Austin, Texas had relevant knowledge. However, the court
`found that “even if I conclude and resolve this factual con-
`flict in favor of SynKloud,” it would still find “that this fac-
`tor slightly favors transfer.” A.1112.
`The district court also concluded that the compulsory
`process factor “slightly favors transfer,” noting that while
`“[w]itnesses related to the power of assignment and prior
`art rarely testify,” “it [is] almost certain that one party or
`the other would want the inventor to testify.” A.1113. The
`court noted a disagreement between the parties as to
`whether former Adobe employees in Austin, Texas had rel-
`evant information. But the court again explained that even
`if it resolved that conflict in SynKloud’s favor, it seemed
`unlikely that all four identified individuals would testify
`and did not ultimately sway the court to weigh this factor
`in favor of retaining the case. The court also found that the
`local interest factor “is neutral to slightly favors transfer,”
`given that “Adobe has facilities in both districts,” and “Syn-
`Kloud does not.” A.1114.
`The single factor that the court weighed in favor of re-
`taining the case was the court congestion factor. The court
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`IN RE: ADOBE INC.
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`noted that it “had a year and a half of experience in terms
`of setting schedules and timing of cases and trials” and had
`“an order governing proceedings that I use in virtually
`every case that specifies that the trial will occur within
`roughly 44 to 47 weeks after a Markman hearing,” and that
`“[t]o the best of my recollection,” the court had no difficulty
`“setting a trial within that anticipated window.” A.1114.
`While the court acknowledged that the Northern District
`of California “might be more convenient,” it still decided to
`deny Adobe’s motion. A.1115.
`DISCUSSION
`Applying Fifth Circuit law in cases from district courts
`in that circuit, this court has held that mandamus may be
`granted to direct transfer for convenience upon a showing
`that the transferee forum is clearly more convenient, and
`the district court’s contrary ruling was a clear abuse of dis-
`cretion. See In re Genentech, Inc., 566 F.3d 1338, 1348
`(Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315,
`1318–19 (Fed. Cir. 2008); see also In re Radmax, Ltd., 720
`F.3d 285, 287 (5th Cir. 2013); In re Volkswagen of Am., Inc.,
`545 F.3d 304, 311 (5th Cir. 2008) (en banc).
`“A motion to transfer venue pursuant to § 1404(a)
`should be granted if ‘the movant demonstrates that the
`transferee venue is clearly more convenient,’ taking into
`consideration” the relevant private and public forum non
`conveniens factors. Radmax, 720 F.3d at 288 (quoting
`Volkswagen, 545 F.3d at 315); see also In re Nintendo Co.,
`Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009) (holding that “in
`a case featuring most witnesses and evidence closer to the
`transferee venue with few or no convenience factors favor-
`ing the venue chosen by the plaintiff, the trial court should
`grant a motion to transfer”).
`In denying Adobe’s motion to transfer here, the district
`court committed several errors. First, the district court
`failed to accord the full weight of the convenience factors it
`considered and weighed in favor of transfer. Second, the
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`IN RE: ADOBE INC.
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`court overlooked that the willing witness factor also fa-
`vored transferring the case. Third, the court ran afoul of
`governing precedent in giving dispositive weight to its abil-
`ity to more quickly schedule a trial. Taken together, we
`agree that the district court’s denial of transfer here was a
`clear abuse of discretion.
`First, the district court failed to accord proper weight
`to the convenience of the transferee venue. The court, by
`its own assessment, found that no private convenience fac-
`tor here favored retaining the case in the Western District
`of Texas and several such factors favored transfer. In par-
`ticular, the court noted that in addition to Adobe, the in-
`ventor and his company were in Northern California, and
`hence transfer would make providing testimony or docu-
`mentary evidence more convenient or allow a party to sub-
`poena such information. The court also declined to credit
`any potential witness or location in the Western District of
`Texas as having relevant evidence. Clearly, “[w]hen fairly
`weighed,” here, the compulsory process and sources of proof
`factors together tip “significantly in” favor of transferring
`the case. In re Google Inc., No. 2017-107, 2017 WL 977038,
`at *3 (Fed. Cir. Feb. 23, 2017); see also In re Acer Am. Corp.,
`626 F.3d 1252, 1255 (Fed. Cir. 2010) (determining that sub-
`poena power of the transferee court “surely tips in favor of
`transfer” notwithstanding the possibility that some poten-
`tial witnesses were within subpoena range of the transferor
`court). However, the district court only weighed those fac-
`tors as “slightly” favoring the transferee forum.
`Second, and relatedly, the district court failed to weigh
`the cost of attendance for willing witnesses factor in its dis-
`cussion, yet this factor also favors transfer. Adobe identi-
`fied a significant number of its own employees as potential
`witnesses who reside in the Northern District of California.
`On the other hand, SynKloud’s own employees will be com-
`ing from outside both districts. See In re Toyota Motor
`Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014) (“The compari-
`son between the transferor and transferee forums is not
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`IN RE: ADOBE INC.
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`altered by the presence of other witnesses and documents
`in places outside both forums.”). Although SynKloud in-
`sisted that there may be Adobe employees working from its
`Austin, Texas office that may have relevant information,
`the district court found elsewhere in its analysis that, even
`if it could give SynKloud the benefit of the doubt here with
`regard to those sources of evidence, Northern California
`would still be more convenient.
`Third, the district court erred in denying transfer
`based solely on its perceived ability to more quickly sched-
`ule a trial. In Genentech, we granted mandamus where,
`like here, there was a stark contrast in convenience be-
`tween the two forums. 566 F.3d at 1348. There, the dis-
`trict court found that the court congestion factor weighed
`against transfer based solely on its assessment of the aver-
`age rate of disposition of cases between the two forums. Id.
`at 1347. We questioned whether the court congestion fac-
`tor was relevant under the circumstances and held that
`even without disturbing the court’s suggestion that it could
`dispose of this case more quickly than the transferee venue,
`where “several relevant factors weigh in favor of transfer
`and others are neutral, then the speed of the transferee dis-
`trict court should not alone outweigh all of those other fac-
`tors.” Id.
`The same conclusion follows here. Like the district
`court’s analysis in Genentech, the district court’s assess-
`ment of the court congestion factor here does not withstand
`scrutiny. The factor concerns whether there is an appre-
`ciable difference in docket congestion between the two fo-
`rums. See Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S.
`71, 73 (1963); Gates Learjet Corp. v. Jensen, 743 F.2d 1325,
`1337 (9th Cir. 1984) (“The real issue is . . . whether a trial
`may be speedier in another court because of its less
`crowded docket.”). Nothing about the court’s general abil-
`ity to set a schedule directly speaks to that issue. Nor does
`the record demonstrate an appreciable difference in docket
`congestion between the forums that could legitimately be
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`IN RE: ADOBE INC.
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`worthy of consideration under this factor.* Yet even with-
`out disturbing the court’s suggestion that it could more
`quickly resolve this case based on its scheduling order, with
`several factors favoring transfer and nothing else favoring
`retaining this case in Western Texas, the district court
`erred in giving this factor dispositive weight.
`In short, retaining this case in the Western District of
`Texas is not convenient for the parties and witnesses. It is
`not in the interest of justice or proper administration. And
`the district court’s contrary determination amounted to a
`clear abuse of discretion. We therefore grant Adobe’s peti-
`tion for a writ of mandamus to direct transfer.
`Accordingly,
`IT IS ORDERED THAT:
`The petition is granted.
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`
`FOR THE COURT
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`
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` July 28, 2020
` Date
`
`
`s35
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`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
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` SynKloud merely referred to the district court’s
`*
`own statement in another case, Fintiv, Inc. v. Apple Inc.,
`No. 6:18-cv-00372-ADA, 2019 WL 4743678, at *7 (W.D.
`Tex. Sept. 13, 2019), in which the court relied on the same
`scheduling order to state that it averaged a 25% faster time
`to trial when compared to the Northern District of Califor-
`nia.
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`