Case: 20-135 Document: 53 Page: 1 Filed: 09/17/2020
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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
`
`September 17, 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 HP
`Inc., 2020 WL 5523561 (Fed. Cir. Sept. 15, 2020).
`Like this case, HP involves a Texas district court’s refusal to transfer patent
`litigation to the Northern District of California. This Court granted mandamus
`after concluding that the district court’s reasoning on several transfer factors was
`flawed. Rather than merely accepting the district court’s characterizations, this
`Court “revisit[ed] the court’s analysis of the disputed transfer factors” and
`concluded that the district court had clearly abused its discretion. Order 4-5. For
`similar reasons, mandamus is also warranted here.
`HP particularly demonstrates the district court’s error in weighing the
`practical-problems factor against transfer. Like here, the district court in HP
`considered its own familiarity with the case as a reason to deny transfer. As this
`Court explained in HP, however, “motions to transfer venue are to be decided based
`on ‘the situation which existed when suit was instituted,’” not on subsequent
`proceedings. Order 7 (citation omitted). In this case, the district court’s error was
`even more egregious—it weighed the practical-problems factor “heavily against
`transfer” based principally on its familiarity with the asserted patent and the
`“significant steps [taken] in this case.” SAppx29-30. Many of those “significant
`steps,” however, were taken not only after “suit was instituted,” and not only after
`Apple filed its transfer motion, but after the district court orally denied Apple’s
`motion (and while Apple was waiting on the written opinion explaining that denial).
`Reply 13-14.
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`September 17, 2020
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`HP also confirms the importance of witness convenience. In that case, like
`here, several witnesses resided in the California forum and no key witnesses
`resided in the Texas forum. Order 5. The district court therefore “erred in
`weighing this factor as neutral.” Order 5. The district court committed the same
`error here, finding this factor neutral after giving little weight to the convenience of
`party witnesses and improperly considering witnesses who resided in neither forum.
`Pet. 22-24; Reply 10-11.
`As in HP, “the court’s decision lies far outside the boundaries of a reasonable
`exercise of discretion,” and mandamus is warranted. Order 5.
`Respectfully,
`
`
`
`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`Counsel for Petitioner Apple Inc.
`
`
`cc: Counsel of record (via CM/ECF)
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`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: HP INC.,
`Petitioner
`______________________
`
`2020-140
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in No. 4:19-
`cv-00696-ALM, Judge Amos L. Mazzant, III.
`______________________
`
`ON PETITION AND MOTION
`______________________
`
`Before NEWMAN, LOURIE, and HUGHES, Circuit Judges.
`PER CURIAM.
`
`O R D E R
` HP Inc. petitions for a writ of mandamus to direct the
`United States District Court for the Eastern District of
`Texas to transfer this case to the United States District
`Court for the Northern District of California. Largan Pre-
`cision Co., Ltd. opposes. HP replies. HP also moves with-
`out opposition to submit a supplemental appendix. For the
`following reasons, we grant HP’s petition.
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`IN RE: HP INC.
`
`BACKGROUND
`Largan, a Taiwanese corporation, brought this suit
`
`against two other Taiwanese corporations, Ability Opto-
`Electronics Technology Co., Ltd. (“AOET”) and Newmax
`Technology Co., Ltd, as well as against HP, for infringing
`four patents based on HP’s incorporation of AOET’s and
`Newmax’s optical lenses into HP’s laptops.
`HP, joined by AOET and Newmax, moved pursuant to
`28 U.S.C. § 1404(a) to transfer the case to the Northern
`District of California where HP is headquartered. At-
`tached to HP’s motion was a declaration filed by HP’s Sen-
`ior Litigation Manager, Anthony Baca. Baca identified ten
`HP employees residing in Northern California that had rel-
`evant knowledge regarding sales, marketing, revenue, and
`profits of the accused products. He added that no employee
`responsible for such activity works in the Eastern District
`of Texas. Baca additionally stated that documents relating
`to the design, development, marketing, and sales of the ac-
`cused products were also in the transferee district and else-
`where, but not in the Eastern District of Texas.
`HP further argued that the only state in the United
`States to which Largan has a connection is California, not-
`ing that Largan had previously filed two patent infringe-
`ment suits in the Northern District of California, including
`an action alleging infringement of one of the patents as-
`serted in this case as well as other related patents based
`on incorporation of Genius Electronic Optical Co., Ltd.’s
`lenses into Apple Inc.’s products. HP argued that Apple
`and Genius, which both have offices in Northern Califor-
`nia, likely had material information relevant to invalidity
`and damages that the transferee venue could compel. HP
`added that transfer would preserve judicial economy given
`the Northern District of California was already familiar
`with the technology and one of the patents.
`The district court denied the motion. In examining the
`factors related to the private interests of the litigants, the
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`IN RE: HP INC.
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`court acknowledged that physical sources of proof and po-
`tential willing witnesses are in the Northern District of
`California, and not the Eastern District of Texas. However,
`the court weighed those factors as neutral largely because
`more documents and witnesses would be coming from Tai-
`wan. The court also recognized that Apple and Genius
`would likely be beyond the reach of its compulsory process
`powers, but nonetheless weighed the factor against trans-
`fer because “Largan identifie[d] specific third-party wit-
`nesses, with at least two residing in Texas.” Appx24.
`The district court also addressed several factors related
`to the public’s interest. The court recognized that the local
`interest factor weighed at least slightly in favor of transfer
`given “more of the events giving rise to this suit appear to
`have occurred in the Northern District of California than
`in the Eastern District of Texas—specifically, the develop-
`ment of the accused products.” Appx30. However, the
`court weighed against transfer that it had “already gained
`familiarity with the parties and issues in this case in de-
`ciding Defendants’ personal jurisdictional challenge” and
`because “AOET indicated its plans to relitigate its personal
`jurisdictional challenge if this case is transferred to the
`Northern District of California.” Appx28.
`Finding that one factor weighed in favor of transfer,
`two weighed against transfer, and the rest neutral, the
`court concluded that the defendants had failed to show that
`transfer is clearly more convenient and in the interest of
`justice. Accordingly, the court denied the motion. HP then
`filed this petition seeking mandamus review.
`DISCUSSION
`A party seeking mandamus must: (1) show that it has
`a clear and indisputable legal right; (2) show it does not
`have any other method of obtaining relief; and (3) convince
`the court that the “writ is appropriate under the circum-
`stances.” Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367,
`380–81 (2004) (citation omitted). In the transfer context,
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`IN RE: HP INC.
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`these requirements coalesce into one, because the possibil-
`ity of an appeal after judgment is not an adequate remedy
`and mandamus is deemed an appropriate vehicle to correct
`patently erroneous transfer determinations. See In re TS
`Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir. 2008).
`We review a decision to deny transfer pursuant to
`§ 1404(a) under regional circuit law, in this case, the Fifth
`Circuit. Id. at 1319. Fifth Circuit law requires that when
`a movant “clearly demonstrate[s] that a transfer is ‘[f]or
`the convenience of parties and witnesses, [and] in the in-
`terest of justice,’” the district court “should” grant transfer.
`In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir.
`2008) (en banc) (citation omitted). That determination is
`focused on a comparison of the relative convenience of the
`two venues based on assessment of the traditional transfer
`factors. See In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir.
`2013) (noting that the critical inquiry “is relative ease of
`access, not absolute ease of access.” (emphases omitted));
`see also In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed.
`Cir. 2014) (granting mandamus, explaining that while an
`analysis of the factors in that case “may not show that the
`transferee forum is far more convenient,” such a showing
`was not required to compel transfer, because “[w]ith noth-
`ing on the transferor-forum side of the ledger, the analysis
`shows that the transferee forum is ‘clearly more conven-
`ient’” (citation and emphases omitted)).
`In reviewing that determination on mandamus, we ask
`whether the district court clearly abused its discretion. TS
`Tech, 551 F.3d at 1319. To answer that question, we may,
`under appropriate circumstances, revisit the court’s analy-
`sis of the disputed transfer factors (here, largely the willing
`witness, source of proof, compulsory process, and practical
`problems factors1), see Radmax, 720 F.3d at 288, and
`
`1 HP also argues that the district court erred in
`weighing the local interest factor only slightly in favor of
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`IN RE: HP INC.
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`“review carefully the circumstances presented to and the
`decision making process of the district court,” Volkswagen,
`545 F.3d at 312 (internal quotation marks and citation
`omitted). Given this suit was brought by a foreign plaintiff,
`HP’s presence in the transferee venue, and no readily ap-
`parent connection with the Eastern District of Texas, we
`conclude that this is one of those cases. In revisiting the
`relevant factors and taking due account of the proper in-
`quiry, we hold that HP has shown entitlement to manda-
`mus because the court’s decision lies far outside the
`boundaries of a reasonable exercise of discretion.
`A.
`1. In its consideration of the willing witness factor, the
`district court here acknowledged that “[t]he comparison be-
`tween the transferor and transferee forums is not altered
`by the presence of other witnesses and documents in places
`outside both forums.” Appx27 n.2 (quoting Toyota, 747
`F.3d at 1340). The district court’s analysis, however, failed
`to adhere to that legal principle. Specifically, because the
`district court recognized that HP had identified several
`witnesses in the Northern District of California that could
`testify at trial without having to travel away from their res-
`idences and that “no key witnesses appear to reside in the
`Eastern District of Texas,” Appx27, the district court
`should have weighed this factor at least slightly in favor of
`transfer. Instead, the court here erred in weighing this fac-
`tor as neutral on the ground “that the most numerous and
`significant witnesses reside in Taiwan, for whom travel to
`either forum is equally inconvenient.” Id.
`
`
`transfer as opposed to strongly in favor of transfer given
`HP’s presence in the transferee venue and no party or
`event giving rise to this suit in the Eastern District of
`Texas. While there is force to this contention, we find that
`making such a change would not alter the outcome here.
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`IN RE: HP INC.
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`2. The district court made a similar error in its assess-
`ment that the sources of proof factor here favored neither
`of the two venues. The district court reasoned that “HP
`will likely produce evidence from its headquarters in the
`Northern District of California, but may also [electroni-
`cally] access documents located within [other parts of]
`Texas, and the bulk of evidence in this case will likely come
`from Taiwan rather than any district in the United States.”
`Appx23. This again ignored that the critical inquiry “is rel-
`ative ease of access, not absolute ease of access.” Radmax,
`720 F.3d at 288 (emphases omitted). Since no party is in
`the Eastern District of Texas, and the existence of physical
`sources of proof in the Northern District of California
`makes that venue more convenient for trial, this factor also
`weighs at least slightly in favor of transfer.
`3. The district court likewise erred in ruling that the
`compulsory process factor weighed against transferring the
`case to Northern California. The court acknowledged the
`presence of Apple and Genius within the Northern District
`of California, which HP believes may have sold and pur-
`chased lenses covered by the patents prior to the critical
`date. As HP points out, only the transferee venue can com-
`pel those companies to provide documentary evidence and
`trial and deposition testimony without requiring any
`travel. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1337
`(Fed. Cir. 2009). By contrast, Largan only identified Texas
`residents who reside more than 100 miles outside the East-
`ern District of Texas, which means that court can only com-
`pel testimony if it would not incur a substantial expense.
`Fed. R. Civ. P. 45(c)(1)(B).
`The district court weighed this factor against transfer
`based solely on the fact that Largan had identified its third
`parties by name whereas HP identified the corporate enti-
`ties without specifying individual employees. However, we
`cannot say that should negate the potential benefits of
`transfer here with regard to Apple and Genius. To be sure,
`it
`is reasonable to reject vague and unsupported
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`IN RE: HP INC.
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`statements regarding the location of potential witnesses or
`sources of proof. See In re Apple Inc., 743 F.3d 1377, 1379
`(Fed. Cir. 2014). But here, the court recognized that the
`pertinent Apple and Genius information would likely be in
`the transferee venue. There was thus no basis to discount
`these entities just because individual employees were not
`identified. This factor therefore should have been weighed,
`at a minimum, as neutral, if not in favor of transfer.
`4. Lastly, the district court erred when it weighed the
`practical problems factor against transfer. The Eastern
`District of Texas rejected transfer to the Northern District
`of California, a court that has familiarity with the technol-
`ogy and one of the patents, based largely on the Eastern
`District of Texas’s own familiarity gained in deciding
`AOET’s and Newmax’s personal jurisdiction challenges.
`The problem with this analysis is that “[m]otions to trans-
`fer venue are to be decided based on ‘the situation which
`existed when suit was instituted,’” In re EMC Corp., 501
`F. App’x 973, 976 (Fed. Cir. 2013) (quoting Hoffman v.
`Blaski, 363 U.S. 335, 343 (1960)). At the time this suit was
`instituted, the Northern District of California had gained
`familiarity over one of the patents in presiding over Lar-
`gan’s earlier suit against Genius, while the district court
`here had no familiarity with any of the issues.2
`The district court also expressed some concern over the
`possibility that AOET would relitigate personal jurisdic-
`tion if the case were transferred. But this fear appears to
`be based entirely on the fact that AOET stated that it was
`joining HP’s motion “without waiving its defenses of lack of
`personal jurisdiction and improper venue.” Appx462.
`Given the court had already concluded that the suit could
`have been brought in the Northern District of California
`
`2 Even making this assessment at the time the
`transfer motion was filed, the transferee venue had at least
`as much, if not more, experience with relevant issues.
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`IN RE: HP INC.
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`and AOET joined the motion, we cannot say that this spec-
`ulation could justify weighing this factor against transfer.
`B.
`In summary, the district court’s ruling was clearly
`wrong. While it correctly labeled the local interest factor
`in favor of transfer, the district court incorrectly labeled
`the willing witness and sources of proof factors as neutral
`when they clearly weigh at least slightly in favor of trans-
`fer, and incorrectly weighed the compulsory process and
`practical problems factors against transfer when, at a min-
`imum, those factors are neutral.
`While mindful that mandamus “does not reach all er-
`roneous rulings of the district court,” Volkswagen, 545 F.3d
`at 315 n.11, as in previous cases where this court and the
`Fifth Circuit have decided to issue the writ, here there is
`such “a stark contrast in relevance, convenience, and fair-
`ness between the two venues,” Hoffmann, 587 F.3d at 1336,
`that the only plausible judgment that can be reached under
`these facts is that the Northern District of California is
`clearly more convenient for trial of this case.
`Several witnesses will find the Northern District of
`California a less costly and more convenient forum to ap-
`pear at trial. Apple and Genius employees can also be com-
`pelled to produce documents and trial and deposition
`testimony without having to travel. The district court itself
`found that the Northern District of California has more of
`a local interest in this case. The transferee venue has fa-
`miliarity with the underlying technology and patents. And
`the Northern District of California is also the only venue
`where any of the physical evidence is located. Meanwhile,
`the Eastern District of Texas has no direct connection to
`any witnesses, source of proof, or interest in this case.
`Even measuring against the high standard necessary
`to grant a writ of mandamus, under these facts, HP has
`established the right to a writ to direct transfer.
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`IN RE: HP INC.
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`Accordingly,
`IT IS ORDERED THAT:
`(1) The petition is granted. The district court’s June
`10, 2020 order is vacated, and it is directed to transfer this
`matter to the United States District Court for the Northern
`District of California.
`(2) The motion for leave to submit a supplemental ap-
`pendix is granted.
`
`
` September 15, 2020
`Date
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`s24
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