Case: 20-135 Document: 70 Page: 1 Filed: 12/29/2020
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`Miscellaneous Docket No. 20-135
`
`
`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. 6:19-cv-00532-ADA, Hon. Alan D Albright
`
`
`APPLE INC.’S RESPONSE TO
`PETITION FOR REHEARING EN BANC
`
`
`
`John M. Guaragna
`DLA PIPER
`401 Congress Avenue
`Suite 2500
`Austin, TX 78701
`
`Abigail Colella
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`
`Melanie L. Bostwick
`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
`
`
`
`
`
`Miscellaneous Docket No. 20-135
`
`
`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. 6:19-cv-00532-ADA, Hon. Alan D Albright
`
`
`APPLE INC.’S RESPONSE TO
`PETITION FOR REHEARING EN BANC
`
`
`
`John M. Guaragna
`DLA PIPER
`401 Congress Avenue
`Suite 2500
`Austin, TX 78701
`
`Abigail Colella
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`
`Melanie L. Bostwick
`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
`
`
`
`
`
`Case: 20-135 Document: 70 Page: 2 Filed: 12/29/2020
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`FORM 9. Certificate of Interest
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`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
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`CERTIFICATE OF INTEREST
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`
`Form 9 (p. 1)
`July 2020
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`Case Number
`Short Case Caption
`Filing Party/Entity
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`20-135
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`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).
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`
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`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
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`12/29/2020
`Date: _________________
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`
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`Signature:
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`/s/ Melanie L. Bostwick
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`Name:
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`Melanie L. Bostwick
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`i
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`Case: 20-135 Document: 70 Page: 3 Filed: 12/29/2020
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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 (cid:1798) None/Not Applicable
`
`Apple Inc.
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`Apple Inc.
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`None
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`Additional pages attached
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`ii
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`Case: 20-135 Document: 70 Page: 4 Filed: 12/29/2020
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`FORM 9. Certificate of Interest
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`Form 9 (p. 3)
`July 2020
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`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
`
`
`Brian K. Erickson, Christine K. Corbett Erik R. Fuehrer, Larissa Bifano
`
`DLA Piper LLP
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`
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`
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`Mark D. Fowler
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`Orrick, Herrington & Sutcliffe LLP
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`Michael Van Handel
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`Jeffrey T. Quilici
`
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`
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`Summer Torrez
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`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
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`Additional pages attached
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`✔
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`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
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`Additional pages attached
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`✔
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`iii
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`Case: 20-135 Document: 70 Page: 5 Filed: 12/29/2020
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`TABLE OF CONTENTS
`
`Page
`
`CERTIFICATE OF INTEREST .................................................................. i
`TABLE OF AUTHORITIES ....................................................................... v
`INTRODUCTION ....................................................................................... 1
`BACKGROUND .......................................................................................... 1
`REASONS FOR DENYING THE PETITION ........................................... 5
`I.
`There Is No Basis For En Banc Rehearing. ............................ 5
`II. The Panel Applied The Deferential Review Required
`Under Fifth Circuit Law. ......................................................... 9
`III. The Panel Decision Does Not Implicate Any
`Exceptionally Important Question Requiring En Banc
`Intervention. ........................................................................... 15
`CONCLUSION ......................................................................................... 20
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`iv
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`
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`Case: 20-135 Document: 70 Page: 6 Filed: 12/29/2020
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010) .............................................................. 8
`In re Adobe Inc.,
`823 F. App’x 929 (Fed. Cir. 2020) ........................................................ 12
`Allied Chem. Corp. v. Daiflon, Inc.,
`449 U.S. 33 (1980) .................................................................................. 7
`Bankers Life & Cas. Co. v. Holland,
`346 U.S. 379 (1953) ............................................................................ 6, 7
`Dow Chem. Co. v. Nova Chems. Corp. (Canada),
`809 F.3d 1223 (Fed. Cir. 2015) .............................................................. 8
`In re Dropbox, Inc.,
`814 F. App’x 598 (Fed. Cir. 2020) ........................................................ 13
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) .............................................................. 8
`In re Horseshoe Entm’t,
`337 F.3d 429 (5th Cir. 2003) .......................................................... 10, 14
`In re HP Inc.,
`826 F. App’x 899 (Fed. Cir. 2020) .......................................................... 8
`In re HTC Corp.,
`889 F.3d 1349 (Fed. Cir. 2018) .............................................................. 7
`La Buy v. Howes Leather Co.,
`352 U.S. 249 (1957) ................................................................................ 6
`In re Lloyd’s Register N. Am., Inc.,
`780 F.3d 283 (5th Cir. 2015) ................................................................ 13
`
`v
`
`
`
`Case: 20-135 Document: 70 Page: 7 Filed: 12/29/2020
`
`McClure v. Ashcroft,
`335 F.3d 404 (5th Cir. 2003) .................................................................. 9
`In re Microsoft Corp.,
`630 F.3d 1361 (Fed. Cir. 2011) .............................................................. 8
`Mohawk Indus., Inc. v. Carpenter,
`558 U.S. 100 (2009) ................................................................................ 7
`Panduit Corp. v. All States Plastic Mfg. Co.,
`744 F.2d 1564 (Fed. Cir. 1984) .............................................................. 6
`Piper Aircraft Co. v. Reyno,
`454 U.S. 235 (1981) ................................................................................ 8
`Stewart Org. v. Ricoh Corp.,
`487 U.S. 22 (1988) .................................................................................. 8
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) .......................................................................... 17
`In re Toyota Motor Corp.,
`747 F.3d 1338 (Fed. Cir. 2014) .............................................................. 8
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) .......................................................... 6, 8
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ........................................ 6, 7, 9, 11, 13, 17
`Statutes
`28 U.S.C. § 1400(b) ................................................................................... 19
`28 U.S.C. § 1404(a) ................................................. 2, 6, 7, 9, 15, 16, 17, 19
`28 U.S.C. § 1406(a) ................................................................................. 6, 7
`Fed. Cir. R. 35(b)(2) .................................................................................. 15
`Fed. R. App. P. 35(a) ................................................................................... 5
`
`vi
`
`
`
`Case: 20-135 Document: 70 Page: 8 Filed: 12/29/2020
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`Other Authorities
`Jonas Anderson, Reining in a “Renegade” Court, 39 Cardozo
`L. Rev. 1569 (2018) .............................................................................. 18
`Dkt. 27, 10Tales, Inc. v. TikTok, Inc., No. 6:20-cv-00810-ADA
`(W.D. Tex. Dec. 4, 2020) ...................................................................... 15
`Dkt. 52-1, 57-1, 401, MV3 Partners LLC v. Roku, Inc.,
`No. 6:18-cv-00308-ADA (W.D. Tex.) .................................................... 20
`How the West Became the East: The Patent Litigation
`Explosion in the Western District of Texas, PatentlyO
`(Sept. 15, 2020),
`https://patentlyo.com/patent/2020/09/litigation-explosion-
`district.html .......................................................................................... 19
`Daniel Klerman & Greg Reilly, Forum Selling, 89 S. Cal. L.
`Rev. 241 (2016) ..................................................................................... 18
`
`
`
`vii
`
`
`
`Case: 20-135 Document: 70 Page: 9 Filed: 12/29/2020
`
`INTRODUCTION
`Uniloc seeks a remedy this Court cannot provide. It argues that
`
`the panel applied an insufficiently deferential standard in issuing a writ
`
`of mandamus. But the panel adhered to the en banc precedent of the
`
`regional circuit—which Uniloc barely mentions, and which this Court
`
`cannot change. Regardless, Uniloc provides no reason to disturb this
`
`standard. The panel gave substantial deference to the district court.
`
`But it identified numerous clear errors that combined to make the
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`denial of transfer a clear abuse of discretion. Uniloc acknowledges that
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`the panel’s decision is in line with the precedent of this Court, and it
`
`identifies no conflict with Supreme Court or Fifth Circuit authority.
`
`The Court should decline to revisit the panel’s sound ruling.
`
`BACKGROUND
`This case is one of 24 patent-infringement actions that Uniloc filed
`
`against Apple in the Eastern or Western District of Texas. The district
`
`courts transferred 21 of those cases, finding the Northern District of
`
`California to be clearly more convenient. See Appx85-87. Two cases
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`remain stayed in the Eastern District pending appeals from inter partes
`
`review proceedings. Appx85-87.
`
`1
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`
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`Case: 20-135 Document: 70 Page: 10 Filed: 12/29/2020
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`This is the twenty-fourth case. Uniloc originally filed it in the
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`Austin Division of the Western District of Texas, but voluntarily
`
`dismissed the case during transfer briefing. Appx86. The following
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`year, Uniloc refiled in the Waco Division. As in the prior version of this
`
`case, Uniloc accuses Apple of infringing U.S. Patent No. 6,467,088.
`
`Appx14-16; Appx24. Uniloc’s infringement contentions target the
`
`software-update functionality in devices running iOS and macOS.
`
`Appx16.
`
`Like the other cases, this case has strong connections to the
`
`Northern District of California and little connection to the Western
`
`District of Texas. Apple therefore moved to transfer under 28 U.S.C.
`
`§ 1404(a). Appx78-104. Apple submitted evidence showing that nearly
`
`all sources of proof regarding the accused products and technology are
`
`in the Northern District of California; all Apple employees likely to be
`
`witnesses are in that district; and several third-party witnesses
`
`(including Uniloc’s board members) would be subject to compulsory
`
`process there. Pet. 18-33. Apple also showed that the Northern District
`
`of California has a strong local interest because the accused products
`
`2
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`Case: 20-135 Document: 70 Page: 11 Filed: 12/29/2020
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`were designed and developed there and all of Apple’s relevant
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`employees are based there. Pet. 34-37.
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`In contrast, despite receiving extensive venue discovery, Uniloc
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`could not identify any relevant witnesses in the district or any other
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`connection between the Western District of Texas and this dispute.
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`Uniloc instead emphasized Apple’s general presence in Austin and
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`tangential connections to the district, such as content-delivery networks
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`(not mentioned in the infringement contentions) and a third-party that
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`physically assembles the Mac Pro desktop computer (but does nothing
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`with the accused software). Pet. 19-21.
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`Six months after Apple moved to transfer, and having denied
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`Apple’s requested stay, the district court held a hearing on the motion
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`and announced it would deny transfer and issue a written decision soon.
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`Appx10; Appx296. But more than a month passed without that written
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`decision. During that time, the case progressed quickly—the district
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`court held a Markman hearing, issued claim constructions, held a
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`discovery hearing, and issued a decision on a protective order. Pet. 9-
`
`10.
`
`3
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`Case: 20-135 Document: 70 Page: 12 Filed: 12/29/2020
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`Given the swift progression of the case, and after inquiring about
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`the status of a written order, Apple sought mandamus, both to prevent
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`the case from continuing to move forward in an inconvenient venue and
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`to avoid being penalized for delay. See Dkt. 41 at 1 n.1. Apple’s petition
`
`showed that there was no rational basis for refusing to transfer this
`
`case. Pet. 17-40.
`
`After Apple filed its petition, the district court issued a Notice
`
`stating it would enter an order within a week, Dkt. 12 (Ex. A), followed
`
`by its written order denying transfer, SAppx1. The order confirmed
`
`that the district court’s decision to keep the case was not based on
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`relevant witnesses and evidence in the Western District of Texas.
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`Rather, it was based on Apple’s general business activities in Austin,
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`though not the activities implicated in this case. SAppx6. Although it
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`weighed the sources of proof factor “slightly” pro-transfer because “the
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`greater balance of witnesses … are located within NDCA,” SAppx21-22,
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`the district court weighed the practical-problems factor “heavily against
`
`transfer” because of the “significant steps” taken while the transfer
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`motion was pending (and even after it was orally decided), SAppx29-30.
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`The district court also weighed the court-congestion factor against
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`4
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`Case: 20-135 Document: 70 Page: 13 Filed: 12/29/2020
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`transfer because it had set a trial date. SAppx30-31. Meanwhile, it
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`found the compulsory-process, witness-convenience, and local-interest
`
`factors neutral, despite acknowledging that “most relevant party
`
`witnesses are located in NDCA” and despite failing to identify any
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`meaningful link between Apple’s Austin campus and this litigation.
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`SAppx21; SAppx24; SAppx27; SAppx32-33.
`
`Uniloc filed its opposition after the district court’s order issued.
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`Apple addressed the district court’s reasoning in its reply brief—the
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`first opportunity to do so. Uniloc then sought (and received) leave to file
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`a sur-reply. Following oral argument, a divided panel of this Court
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`granted Apple’s petition and issued a writ of mandamus directing the
`
`district court to transfer this case to the Northern District of California.
`
`Op. 1-21.
`
`REASONS FOR DENYING THE PETITION
`
`I.
`
`There Is No Basis For En Banc Rehearing.
`Uniloc identifies nothing in the majority’s opinion that meets the
`
`demanding criteria for en banc review. See Fed. R. App. P. 35(a). There
`
`is no conflict with Supreme Court precedent, and Uniloc does not even
`
`attempt to show a conflict with Fifth Circuit or Federal Circuit
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`5
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`Case: 20-135 Document: 70 Page: 14 Filed: 12/29/2020
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`precedent. Indeed, Uniloc barely acknowledges the en banc Fifth
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`Circuit precedent that governs this Court’s review.1 And it repeatedly
`
`complains that the majority followed Federal Circuit precedent
`
`applying Fifth Circuit law.
`
`Uniloc argues that mandamus is ill-suited for discretionary issues
`
`like transfer, but the Supreme Court, the Fifth Circuit, and this Court
`
`have held otherwise. See La Buy v. Howes Leather Co., 352 U.S. 249,
`
`250 (1957); In re TS Tech USA Corp., 551 F.3d 1315, 1318 (Fed. Cir.
`
`2008); In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en
`
`banc) (“Volkswagen II”).
`
`Although Uniloc argues that the panel’s ruling “conflicts with
`
`Supreme Court decisions,” Reh’g Pet. 1, it identifies no such conflict.
`
`Uniloc relies heavily on Bankers Life & Casualty Co. v. Holland, 346
`
`U.S. 379 (1953), but that case involved mandatory transfer under
`
`§ 1406(a), not discretionary transfer under § 1404(a). The Supreme
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`Court agreed with the Fifth Circuit that “in the circumstances of [that]
`
`
`1 Uniloc’s omission is notable given its (baseless) assertion that the
`panel’s ruling conflicts with Panduit Corp. v. All States Plastic Mfg. Co.,
`744 F.2d 1564, 1574-75 (Fed. Cir. 1984), which requires adherence to
`regional circuit law. See Reh’g Pet. vi, 9-10.
`
`6
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`case the writ was inappropriate.” Id. at 382. But it confirmed the
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`appellate court’s “‘power in a proper case to issue such writs’” if there is
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`a “clear abuse of discretion.” Id. at 383-84 (citation omitted). This
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`Court has followed Bankers Life and imposed a higher standard for
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`mandamus relief in § 1406(a) cases. See In re HTC Corp., 889 F.3d
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`1349, 1352-53 (Fed. Cir. 2018).
`
`But this is a § 1404(a) case. The Fifth Circuit set the standard for
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`such cases in Volkswagen II, following the Supreme Court’s guidance in
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`Bankers Life. The Fifth Circuit acknowledged the “admonition … not to
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`issue a writ to correct a mere abuse of discretion.” Volkswagen II, 545
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`F.3d at 310. But “[t]he inverse of the admonition, of course, is that a
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`writ is appropriate to correct a clear abuse of discretion.” Id. The court
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`then confirmed that a transfer denial under § 1404(a) is amenable to
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`mandamus review and granted mandamus to order transfer. Id. at 309-
`
`10.2
`
`
`2 None of the other Supreme Court cases cited by Uniloc calls
`Volkswagen II into doubt. Allied Chemical Corp. v. Daiflon, Inc., did
`not involve transfer at all. 449 U.S. 33, 36 (1980) (“A trial court’s
`ordering of a new trial rarely, if ever, will justify the issuance of a writ
`of mandamus.”). The others did not involve mandamus. Mohawk
`Indus., Inc. v. Carpenter, 558 U.S. 100, 106 (2009) (addressing
`
`
`7
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`
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`Case: 20-135 Document: 70 Page: 16 Filed: 12/29/2020
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`This Court has consistently followed this precedent in reviewing
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`mandamus petitions arising from Texas district courts’ orders. See, e.g.,
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`In re HP Inc., 826 F. App’x 899, 901 (Fed. Cir. 2020); In re Toyota Motor
`
`Corp., 747 F.3d 1338, 1339 (Fed. Cir. 2014); In re Microsoft Corp., 630
`
`F.3d 1361, 1363 (Fed. Cir. 2011); In re Acer Am. Corp., 626 F.3d 1252,
`
`1254 (Fed. Cir. 2010); In re Genentech, Inc., 566 F.3d 1338, 1341 (Fed.
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`Cir. 2009); TS Tech, 551 F.3d at 1319. The panel likewise followed this
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`precedent in deciding that mandamus was warranted here because “the
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`district court clearly abused its discretion.” Op. 7; see also Op. 3-4, 21.
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`Uniloc does not even try to show a conflict between the panel’s
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`ruling and the Volkswagen II standard. Nor does it offer a basis for this
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`Court to revisit the Fifth Circuit’s law (or this Court’s longstanding
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`application of that law). When a panel’s opinion “is not viewed as
`
`having changed the law,” disagreement with that opinion “is not a
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`sufficient reason for en banc review.” Dow Chem. Co. v. Nova Chems.
`
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`collateral-order doctrine); Stewart Org. v. Ricoh Corp., 487 U.S. 22, 32
`(1988) (holding federal law governs transfer based on forum-selection
`clause); Piper Aircraft Co. v. Reyno, 454 U.S. 235, 257 (1981) (applying
`“clear abuse of discretion” standard to forum non conveniens dismissal).
`
`8
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`Case: 20-135 Document: 70 Page: 17 Filed: 12/29/2020
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`Corp. (Canada), 809 F.3d 1223, 1228 (Fed. Cir. 2015) (Moore, J.,
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`concurring in denial of rehearing).
`
`II. The Panel Applied The Deferential Review Required
`Under Fifth Circuit Law.
`Uniloc cannot show that the panel’s decision conflicts with Fifth
`
`Circuit law, because the majority complied with Volkswagen II at every
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`turn.
`
`Although its petition is aimed squarely at the standard for
`
`reviewing a district court’s transfer decision, Uniloc never acknowledges
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`that standard. As explained above, the Fifth Circuit permits
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`mandamus “to correct a clear abuse of discretion” in § 1404(a) decisions.
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`Volkswagen II, 545 F.3d at 310. “‘A district court abuses its discretion if
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`it: (1) relies on clearly erroneous factual findings; (2) relies on erroneous
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`conclusions of law; or (3) misapplies the law to the facts.’” Id. (quoting
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`McClure v. Ashcroft, 335 F.3d 404, 408 (5th Cir. 2003)). Because an
`
`abuse of discretion must be “clear,” mandamus will issue only if “these
`
`types of errors … produce a patently erroneous result.” Id.3 To
`
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`3 Contrary to amicus U.S. Inventor’s claim (at 11), the Fifth Circuit has
`granted mandamus based on misapplications of law to fact—indeed, it
`did so in Volkswagen II. 545 F.3d at 316-18.
`
`9
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`Case: 20-135 Document: 70 Page: 18 Filed: 12/29/2020
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`determine whether such errors have occurred, the reviewing court must
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`“review[] carefully the circumstances presented to and the decision
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`making process used by” the district court. In re Horseshoe Entm’t, 337
`
`F.3d 429, 432 (5th Cir. 2003) (quoted approvingly in Volkswagen II).
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`The majority recited this test in full. Op. 3. And it applied it
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`faithfully, identifying multiple clear errors of law and misapplications of
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`law to fact that combined to produce a “patently erroneous result.” Op.
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`21. Specifically, the panel held that the district court: (1) misapplied
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`Fifth Circuit law to the facts by crediting the alleged convenience of
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`witnesses outside either forum, who must travel significant distances
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`regardless of transfer, Op. 12; (2) legally erred by advancing the case on
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`the merits after Apple’s transfer motion was filed—and decided orally—
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`and then weighing those merits-related steps against transfer, Op. 14;
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`(3) misapplied law to fact by counting the practical-problems factor
`
`against transfer despite the 21 related cases pending in the transferee
`
`forum, Op. 15-16; (4) misapplied law to fact by relying heavily on the
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`mere fact that it had set an “aggressive” trial date, Op. 16; and
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`(5) misapplied law to fact by treating Apple’s “general contacts” with
`
`10
`
`
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`Case: 20-135 Document: 70 Page: 19 Filed: 12/29/2020
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`the Western District of Texas, “untethered to the lawsuit,” as important
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`to the local-interest factor, Op. 17-18.4
`
`The panel held that these errors “accumulate[d] to produce a
`
`patently erroneous result” justifying a writ of mandamus. Op. 20.
`
`Uniloc makes no attempt to address this accumulation. Instead, Uniloc
`
`levels a series of discrete attacks against the majority’s reasoning.
`
`Each is misdirected.
`
`First, the panel did not “[i]mproperly [c]ollapse[]” the three-part
`
`mandamus test. Reh’g Pet. 6-7. It recognized, consistent with
`
`precedent, that there is no adequate alternative to a mandamus petition
`
`challenging a transfer denial. Op. 3-4; Volkswagen II, 545 F.3d at 319
`
`(deeming this “indisputable”). And it further recognized that
`
`mandamus is appropriate to prevent procedural injury when the denial
`
`of transfer amounts to a clear abuse of discretion. Op. 4. Notably,
`
`
`4 The majority also determined that the district court erred in its
`analysis of the “sources of proof” factor but did not rely on these errors
`in issuing the writ. See Op. 7-10.
`
`
`11
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`
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`Case: 20-135 Document: 70 Page: 20 Filed: 12/29/2020
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`Uniloc did not contest either of these prongs of the mandamus standard
`
`in its panel briefing.5
`
`Second, the panel did not rule on “grounds never raised below.”
`
`Reh’g Pet. 7-8. The district court did. Uniloc relied on the inventors
`
`and prosecuting attorney, who reside outside either forum, only for the
`
`compulsory-process factor. Appx187. Apple responded that the
`
`Western District of Texas did not have subpoena power over any
`
`identified third parties. Appx204. The district court instead considered
`
`these individuals under the “willing witnesses” factor, SAppx27, and
`
`Apple addressed that error. Reply 11. The other issues cited by Uniloc
`
`(at 8) were likewise raised first in the district court’s written opinion;
`
`Apple similarly addressed them in reply. See SAppx29-33; Reply 13-18.
`
`Third, the panel did not grant mandamus based on new law.
`
`Reh’g Pet. 8-9. In re Adobe Inc., 823 F. App’x 929, 932 (Fed. Cir. 2020),
`
`did not announce any new principle; it relied on this Court’s prior
`
`precedential ruling in Genentech. The Dropbox remand Uniloc cites was
`
`
`5 Contrary to Uniloc’s suggestion (at 7), the panel did address Apple’s
`“conduct” and found it appropriate, Op. 4-6, notwithstanding Uniloc’s
`suggestion that Apple should have waited “at least four to six months”
`for a written order before seeking mandamus, Oral Arg. 23:03.
`
`12
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`
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`Case: 20-135 Document: 70 Page: 21 Filed: 12/29/2020
`
`based not on Adobe announcing new law, but rather on Adobe changing
`
`the relevant facts in Dropbox’s own related case. In re Dropbox, Inc.,
`
`814 F. App’x 598, 599 (Fed. Cir. 2020) (remanding because district court
`
`had cited co-pendency of now-transferred Adobe litigation in denying
`
`Dropbox transfer).
`
`Fourth, the panel did not hold that the Fifth Circuit’s “100-mile
`
`rule does not apply as stated when a witness is traveling by airplane.”
`
`Reh’g Pet. 9. That rule recognizes that witnesses are increasingly
`
`inconvenienced when they must travel more than 100 miles to attend
`
`trial, and it favors the ability of witnesses “to testify at home.”
`
`Volkswagen II, 545 F.3d at 317. It makes no sense to apply that rule to
`
`witnesses who must travel regardless of venue, and the Fifth Circuit
`
`has never done so. The panel also declined to do so, instead giving
`
`appropriate weight to the many California-based witnesses who will be
`
`spared any travel by transfer. Op. 10-13. The panel also adhered to
`
`Fifth Circuit law by requiring a clear abuse of discretion, not merely
`
`“reversible error.” Reh’g Pet. 10; see supra 9-10; In re Lloyd’s Register
`
`N. Am., Inc., 780 F.3d 283, 290-93 (5th Cir. 2015) (following Volkswagen
`
`II and granting mandamus).
`
`13
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`
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`Case: 20-135 Document: 70 Page: 22 Filed: 12/29/2020
`
`Fifth, the panel did not “[i]mpose[]” its own judgment. Reh’g Pet.
`
`10-11. Uniloc asserts that the majority “did not find that the [district]
`
`judge failed to analyze the factors or that his analysis was
`
`unreasonable.” Id. at 10. But that is not the standard. And Uniloc’s
`
`lone example of a supposed “[l]ack of deference,” id. at 11, is no such
`
`thing. Discussing the local-interest factor, the majority correctly noted
`
`that the district court had not relied on Apple’s “CDN servers in Dallas,
`
`Texas.” Op. 19; see SAppx31-33. Of course it didn’t; Dallas is not in the
`
`Western District and thus not “local.” The district court did, however,
`
`mention Austin-based employees who work on Apple’s CDN, even
`
`though CDNs are not at issue in this case. Reply 7. But it provided no
`
`“reason to give these employees and this activity weight above and
`
`beyond other relevant employees,” particularly since it agreed that
`
`“most relevant party witnesses resided” in Northern California. Op. 19-
`
`20 & n.8.
`
`Finally, the panel did not intrude on the district court’s docket-
`
`management authority. It applied Fifth Circuit precedent—which
`
`Uniloc ignores—requiring district courts to give transfer motions “top
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`priority.” Horseshoe Entm’t, 337 F.3d at 433 (granting mandamus and
`
`14
`
`
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`Case: 20-135 Document: 70 Page: 23 Filed: 12/29/2020
`
`ordering transfer); see Op. 5. The majority did not mandate a stay in all
`
`cases, nor have parties “characterized [its] holding as requiring a stay,”
`
`Reh’g Pet 12. Apple sought a stay after the writ of mandamus issued,
`
`because Uniloc wanted this case to proceed in the Western District
`
`while it sought rehearing. Dist. Ct. Dkt. 109 (Nov. 16, 2020); see also
`
`Dkt. 27 at 2-3, 10Tales, Inc. v. TikTok, Inc., No. 6:20-cv-00810-ADA
`
`(W.D. Tex. Dec. 4, 2020) (requesting stay of substantive deadlines but
`
`not suggesting stay is required).
`
`III. The Panel Decision Does Not Implicate Any Exceptionally
`Important Question Requiring En Banc Intervention.
`Uniloc’s petition attempts to show that this case implicates
`
`“precedent-setting questions of exceptional importance.” Reh’g Pet. vi;
`
`Fed. Cir. R. 35(b)(2). As demonstrated above, there is no precedent-
`
`setting question; the panel followed long-established Fifth Circuit law.
`
`Uniloc’s petition fails the second half of the en banc test as well. Uniloc
`
`identifies no issue of such exceptional importance that it warrants this
`
`Court’s en banc review of regional circuit law.
`
`Uniloc attempts to show otherwise by warning of a deference crisis
`
`in patent cases. It argues that too many litigants are filing mandamus
`
`petitions challenging § 1404(a) rulings, and that this Court is granting
`
`15
`
`
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`Case: 20-135 Document: 70 Page: 24 Filed: 12/29/2020
`
`too many. Reh’g Pet. 2, 14-17. But there is no crisis. Writs of
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`mandamus in transfer cases remain the rare exception. Uniloc suggests
`
`that district courts resolve hundreds of transfer motions in patent cases
`
`each year. In contrast, only fifteen § 1404(a)-related mandamus
`
`petitions have been filed with the Court this year, indicating that
`
`parties are reserving mandamus requests for the small fraction of cases
`
`where it may be warranted.6 And the Court has granted the writ in
`
`only five of those cases.7 (The basis for Uniloc’s calculation of a “grant
`
`rate … over 50%,” Reh’g Pet. 16, is unclear.)
`
`Uniloc also tries to manufacture concern by suggesting that this
`
`Court’s mandamus practices changed in December 2008, when—
`
`according to Uniloc—“a shift occurred” and “this Court began routinely
`
`granting convenience-mandamus petitions.” Reh’g Pet. 2.
`
`What happened in 2008? Two critical things, both of which Uniloc
`
`avoids mentioning. First, and most obviously, the Fifth Circuit issued
`
`its en banc ruling in Volkswagen II in October 2008, confirming that
`
`“mandamus is an appropriate means of testing a district court’s
`
`
`6 Case Nos. 20-111, -112, -113, -115, -126, -127, -129, -130, -132, -134, -
`135, -140, -142; 21-103, -105.
`7 Case Nos. 20-126, -135, -140, -142, 21-105.
`
`16
`
`
`
`Case: 20-135 Document: 70 Page: 25 Filed: 12/29/2020
`
`§ 1404(a) ruling,” 545 F.3d at 309. To the extent this Court had
`
`previously expressed hesitance about its mandamus authority, see Reh’g
`
`Pet. 1-2, the law was now crystal clear for cases arising from the Fifth
`
`Circuit.
`
`Less obviously, but just as significantly, any uptick in transfer
`
`mandamus filings since 2008 can be explained as the natural
`
`consequence of patent plaintiffs beginning to file in overwhelming
`
`numbers in venues with little or no connection to the claims at issue—
`
`such as the Eastern District of Texas. In 2000, the Eastern District had
`
`23 total patent case filings, tying for 29th place among federal judicial
`
`districts.8 That number gradually crept upward until it exploded in the
`
`late 2000s. The Eastern District became the number one patent docket
`
`in the country in 2007, with 369 new cases filed. Except for a brief dip
`
`in 2009, it remained in the top spot until 2018, following the Supreme
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`C
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