throbber
Case: 21-187 Document: 19 Page: 1 Filed: 09/27/2021
`
`Miscellaneous Docket No. 21-187
`
`
`
`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. 6:21-cv-00926-ADA, Hon. Alan D Albright
`
`
`APPLE INC.’S REPLY IN SUPPORT OF
`PETITION FOR WRIT OF MANDAMUS
`
`
`
`Sean C. Cunningham
`Erin Gibson
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`
`John M. Guaragna
`DLA PIPER LLP (US)
`303 Colorado Street, Suite 3000
`Austin, TX 78701
`
`Mark D. Fowler
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`
`Melanie L. Bostwick
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Edmund R. Hirschfeld
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`Counsel for Petitioner
`
`
`
`
`
`

`

`Case: 21-187 Document: 19 Page: 2 Filed: 09/27/2021
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ........................................................................ ii
`INTRODUCTION ........................................................................................ 1
`ARGUMENT ................................................................................................ 3
`I.
`The District Court’s Order Directly Violates This
`Court’s Intel I Ruling And Is A Clear Abuse Of
`Discretion. .................................................................................. 4
`II. Even If The District Court Had Properly Applied
`§ 1404(a), Its Decision Would Be A Clear Abuse Of
`Discretion. .................................................................................. 8
`A.
`The district court’s original grounds for transfer
`still favor Austin over Waco. ........................................... 9
`B. Additional factors do not alter the § 1404(a)
`analysis. .......................................................................... 15
`CONCLUSION ........................................................................................... 20
`CERTIFICATE OF COMPLIANCE
`
`
`i
`
`

`

`Case: 21-187 Document: 19 Page: 3 Filed: 09/27/2021
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Adobe,
`823 F. App’x 929 (Fed. Cir. 2020) ......................................................... 16
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ............................................................. 16
`Cheney v. U.S. Dist. Ct.,
`542 U.S. 367 (2004) ................................................................................. 3
`In re Cragar Indus., Inc.,
`706 F.2d 503 (5th Cir. 1983) ......................................................... 7, 8, 10
`In re Hulu, LLC,
`--- F. App’x ---, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) ................ 13
`In re Intel Corp.,
`841 F. App’x 192 (Fed. Cir. 2020) ........................................... 1, 4, 5, 6, 7
`In re Juniper Networks, Inc.,
`--- F.4th ---, 2021 WL 4343309 (Fed. Cir. Sept. 24, 2021) ...... 10, 13, 15
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) ................................................................. 14
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ................................................... 10, 15, 16
`In re True Chem. Sols., LLC,
`841 F. App’x 240 (Fed. Cir. 2021) ......................................................... 17
`VLSI Tech. LLC v. Intel Corp.,
`No. 1:19-cv-00977-ADA, 2020 WL 6828034 (W.D. Tex.
`Nov. 20, 2020) ...................................................................................... 6, 7
`
`ii
`
`

`

`Case: 21-187 Document: 19 Page: 4 Filed: 09/27/2021
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 1:19-cv-00977-ADA, 2020 WL 8254867 (W.D. Tex.
`Dec. 31, 2020) ........................................................................................ 15
`Statutes
`28 U.S.C. § 1404(a) ................................... 1, 4, 5, 6, 8, 9, 14, 15, 17, 19, 20
`Rules
`Fed. R. Civ. P. 77 ......................................................................................... 6
`
`
`iii
`
`

`

`Case: 21-187 Document: 19 Page: 5 Filed: 09/27/2021
`
`INTRODUCTION
`Apple’s petition presented a straightforward case for mandamus:
`
`The district court here, having previously concluded under 28 U.S.C.
`
`§ 1404(a) that the “convenience of parties and witnesses” and the
`
`“interest of justice” warranted transfer of venue to the Austin Division
`
`of the Western District of Texas, re-transferred the case to the Waco
`
`Division shortly before trial was set to commence. It did so without
`
`citing any authority, without analyzing the § 1404(a) factors, and
`
`without identifying any change that had undermined the original
`
`rationale for transfer from Waco to Austin. In short, the district court
`
`failed to do exactly what this Court held is required when it issued a
`
`writ of mandamus to the same district court in highly similar
`
`circumstances last year. See In re Intel Corp., 841 F. App’x 192 (Fed.
`
`Cir. 2020) (“Intel I”).
`
`The district court instead relied exclusively on the effects of the
`
`COVID-19 pandemic and the fact that this case, like every other civil
`
`case pending in Austin, might not be able to go to trial on its scheduled
`
`date due to the restrictions on courthouse access that the Austin
`
`Division has put in place to deal with the ongoing public health crisis
`
`1
`
`

`

`Case: 21-187 Document: 19 Page: 6 Filed: 09/27/2021
`
`that continues to kill hundreds of people in Texas every day. That is
`
`the same rationale that this Court found insufficient to avoid
`
`mandamus in Intel I. And it has nothing to do with the district court’s
`
`original rationale for intra-district transfer, which turned on the
`
`location of parties, evidence, and witnesses, not on how quickly this case
`
`could be tried.
`
`Fintiv cannot credibly dispute any of this, and it cannot
`
`distinguish this Court’s grant of mandamus in Intel I. So Fintiv instead
`
`relies on heated rhetoric, along with numerous misrepresentations
`
`about the facts and the law. And Fintiv accuses Apple of both bad acts
`
`and bad intent. Fintiv’s accusations are unfounded. As explained
`
`below, Apple’s representations to the district court and this Court have
`
`been completely consistent. And Apple is certainly not seeking delay for
`
`its own sake. It is seeking to mitigate inconvenience to its witnesses
`
`and ensure the efficient trial of this case in the venue that the parties,
`
`the district court, and this Court have all agreed is more convenient.
`
`And it is seeking to ensure the safety of its employees, non-party
`
`witnesses, and counsel in the midst of a global pandemic that has made
`
`travel and trial especially risky.
`
`2
`
`

`

`Case: 21-187 Document: 19 Page: 7 Filed: 09/27/2021
`
`There is no urgency that requires this case to go forward in
`
`whatever venue is available earliest, regardless of convenience. Fintiv
`
`does not practice the patent it asserts. Fintiv now claims to be an
`
`operating entity that urgently needs injunctive relief. But deposition
`
`testimony from Fintiv’s President belies that assertion, Appx253, and
`
`the district court has not yet permitted Fintiv to add its late-filed
`
`injunction request to the case.
`
`In sum, there is no basis to re-transfer this case to the Waco
`
`Division. The Court should grant mandamus.
`
`ARGUMENT
`Apple’s petition made all three showings required for mandamus
`
`relief: (1) a “clear and indisputable” right to the writ; (2) that Apple has
`
`“no other adequate means to attain the relief [it] desires”; and (3) “that
`
`the writ is appropriate under the circumstances.” Cheney v. U.S. Dist.
`
`Ct., 542 U.S. 367, 380-81 (2004) (citation omitted). Fintiv does not
`
`dispute the second and third showings. Nor does it meaningfully
`
`contest the first. Apple has a clear and indisputable right to relief
`
`because here, just as in Intel I, the district court ordered a re-transfer
`
`without invoking statutory authority. And even if the district court had
`
`3
`
`

`

`Case: 21-187 Document: 19 Page: 8 Filed: 09/27/2021
`
`invoked § 1404(a), it would have been a clear abuse of discretion to
`
`conclude that the statute authorized re-transfer. Fintiv’s arguments to
`
`the contrary misrepresent the record and contradict this Court’s case
`
`law.
`
`I.
`
`The District Court’s Order Directly Violates This Court’s
`Intel I Ruling And Is A Clear Abuse Of Discretion.
`As Apple’s petition demonstrated, the district court here
`
`committed the same error as the one that led this Court to grant
`
`mandamus in Intel I. See Pet. 14-18. Fintiv does not dispute Apple’s
`
`showing that, like the petitioner in Intel I, Apple has a statutory right
`
`to have this litigation proceed in the Austin Division of the Western
`
`District of Texas. Pet. 14-15. Nor does Fintiv dispute that this Court in
`
`Intel I confronted a similar scenario and held that the district court,
`
`before re-transferring venue from Austin to Waco, must rely on proper
`
`statutory authority and address the § 1404(a) factors. 841 F. App’x at
`
`194-95; see Opp. 15.
`
`The district court failed to comply with those requirements here.
`
`Pet. 16-18. Fintiv attempts to distinguish Intel I, but each of its three
`
`arguments is based on a clear mischaracterization of either Intel I or
`
`the district court’s order.
`
`4
`
`

`

`Case: 21-187 Document: 19 Page: 9 Filed: 09/27/2021
`
`First, Fintiv argues that the “primary” problem in Intel I was that
`
`the district court there attempted to re-transfer only the trial, not the
`
`entire action. Opp. 14-15. While that is a difference between Intel I
`
`and this case, it is not a relevant difference. As Fintiv acknowledges,
`
`this Court did not find fault solely with this procedural approach.
`
`Rather, the Court also granted mandamus because “the district court
`
`did not ‘rely on’ Section 1404(a) in ordering retransfer, nor did the
`
`district court ‘find that retransfer would be for the convenience of the
`
`parties or witnesses and in the interest of justice.’” Opp. 15 (quoting
`
`Intel I, 841 F. App’x at 194-95). Indeed, this was the first of “at least
`
`two problems” that this Court identified in Intel I when it rejected the
`
`notion that § 1404(a) could justify the re-transfer order. 841 F. App’x at
`
`194. Contrary to Fintiv’s characterization, the distinction between
`
`transferring the case as a whole and transferring only the trial was a
`
`secondary consideration.
`
`Second, Fintiv argues that the re-transfer order here complied
`
`with Intel I because the district court’s analysis depended on the
`
`§ 1404(a) factors, thus supplying the statutory authority that was
`
`missing in Intel I. See Opp. 15-16. Fintiv is plainly incorrect. The
`
`5
`
`

`

`Case: 21-187 Document: 19 Page: 10 Filed: 09/27/2021
`
`district court’s short order cites § 1404(a) only once—in referring to
`
`Apple’s original motion to transfer, which was filed and resolved in
`
`2019. Appx1-2. The statute is not mentioned in connection with the re-
`
`transfer decision. Nor does the district court’s re-transfer analysis cite
`
`or discuss any of the § 1404(a) factors.
`
`Instead, Fintiv seems to be relying on the idea that the parties
`
`submitted, by email, abbreviated “argument ‘bearing on a § 1404(a)
`
`analysis.’” Opp. 16 (quoting Intel I, 841 F. App’x at 195). But that
`
`argument fails under Intel I as well. The plaintiff there had submitted
`
`a complete brief addressing several specific § 1404(a) factors. Appx254-
`
`267. But the district court did not rely on those arguments in its order.
`
`VLSI Tech. LLC v. Intel Corp., No. 1:19-cv-00977-ADA, 2020 WL
`
`6828034, at *2-3 (W.D. Tex. Nov. 20, 2020) (citing Fed. R. Civ. P. 77 and
`
`district court’s “inherent authority”). The district court’s failure to do so
`
`warranted mandamus in Intel I, 841 F. App’x at 194, and it warrants
`
`mandamus here as well.
`
`Fintiv’s third attempt to distinguish Intel I fails for similar
`
`reasons. This Court in Intel I held that, after considering the § 1404(a)
`
`factors, the district court must conclude that “‘unanticipated post-
`
`6
`
`

`

`Case: 21-187 Document: 19 Page: 11 Filed: 09/27/2021
`
`transfer events frustrated the original purpose for transfer’ of the case
`
`from Waco to Austin.” 841 F. App’x at 195 (quoting In re Cragar Indus.,
`
`Inc., 706 F.2d 503, 505 (5th Cir. 1983)). Fintiv claims that this “is
`
`precisely what the District Court concluded here.” Opp. 15 (emphasis
`
`removed). But the problem, as Apple explained, is that a “conclusory
`
`statement” was all the district court provided; it cited no actual support
`
`for that conclusion. Pet. 19.
`
`A bare conclusion is not sufficient. Again, this is what happened
`
`in Intel I. Indeed, the district court’s order there was much more
`
`extensive than the one here. The district court analyzed Cragar and
`
`concluded that “the closure of the Austin courthouse due to the
`
`pandemic has frustrated the original purpose of transferring the case to
`
`Austin.” VLSI, 2020 WL 6828034, at *4. But mandamus was
`
`warranted because the district court’s conclusion did not actually “take
`
`into account the reasons of convenience that caused the earlier transfer
`
`to the Austin division.” Intel I, 841 F. App’x at 195. Here too, the
`
`district court did not refer to any of its original transfer reasons, let
`
`alone explain how the COVID-19 pandemic might have frustrated them.
`
`7
`
`

`

`Case: 21-187 Document: 19 Page: 12 Filed: 09/27/2021
`
`See Pet. 19-20. For all its rhetoric, Fintiv fails to identify anything in
`
`the district court’s order that fulfills this clear requirement.
`
`On that basis alone, the Court can and should grant mandamus.
`
`II. Even If The District Court Had Properly Applied § 1404(a),
`Its Decision Would Be A Clear Abuse Of Discretion.
`Moreover, mandamus is particularly appropriate here because
`
`§ 1404(a) could not have authorized re-transfer. Pet. 18-26. Fintiv
`
`agrees that re-transfer is proper only if unanticipated post-transfer
`
`events have “frustrate[d] the original purpose for transfer.” Cragar, 706
`
`F.2d at 505; see Opp. 9. Fintiv makes much of the undisputed fact that
`
`the COVID-19 pandemic is an unanticipated post-transfer event. But it
`
`does not, and cannot, show that the pandemic has frustrated any of the
`
`original purposes for transferring this case from Waco to Austin.
`
`Apple showed, and Fintiv does not contest, that the original
`
`transfer decision rested on four considerations: (1) Fintiv and Apple
`
`employees in Austin whom the district court found might be witnesses;
`
`(2) NXP’s corporate presence in Austin; (3) the localized interest created
`
`by Fintiv’s, Apple’s, and NXP’s presences in Austin; and (4) the fact that
`
`“there are no sources of proof in the Waco Division.” Pet. 7. All four of
`
`those considerations still favor Austin over Waco, and no additional
`
`8
`
`

`

`Case: 21-187 Document: 19 Page: 13 Filed: 09/27/2021
`
`factors alter the outcome of the § 1404(a) analysis. Pet. 20-24. Fintiv’s
`
`opposition offers no meaningful rebuttal. Instead, it resorts to
`
`misrepresenting the record, invoking erroneous legal propositions that
`
`this Court has squarely rejected, and launching baseless attacks on
`
`Apple’s integrity.
`
`A. The district court’s original grounds for transfer still
`favor Austin over Waco.
`Employee witnesses. First, it is still the case that a Fintiv
`
`employee witness resides in Austin, while no employee witnesses reside
`
`in Waco. Pet. 20; Appx187. Contrary to Fintiv’s suggestion, the district
`
`court did originally “assess this factor,” Opp. 23, granting intra-district
`
`transfer in part because “Fintiv has … employees in Austin, but not in
`
`Waco,” Appx135. That same disparity continues to tilt the “cost of
`
`attendance for willing witnesses,” Opp. 23, substantially in Austin’s
`
`favor. Fintiv simply ignores this critical witness.
`
`Moreover, Apple’s employee witnesses will all be traveling from
`
`California. Pet. 20; Appx194. Given the surging prevalence of COVID-
`
`19 throughout Texas, flying directly to Austin—where Apple has spent
`
`months preparing safe accommodations—is far more convenient for
`
`these witnesses than landing in Austin and then traveling more than
`
`9
`
`

`

`Case: 21-187 Document: 19 Page: 14 Filed: 09/27/2021
`
`one hundred additional miles to Waco, which cannot be reached by
`
`direct commercial flight from California. See Appx208. That extra
`
`travel would be costly in any circumstance; it is even moreso given the
`
`attendant risks of exposure. The benefit of cheaper hotel rooms in
`
`Waco, Opp. 24, pales in comparison. Again, Fintiv simply ignores this
`
`additional travel demand. See id.
`
`Aside from overlooking the relevant facts, Fintiv’s only argument
`
`regarding witness convenience is that “party witnesses” must be “given
`
`little weight.” Id. That is wrong. This Court has repeatedly held that
`
`the party status of witnesses is not a “sound basis to diminish” their
`
`“conveniences,” particularly where—as here—there is “nothing on the
`
`other side of the ledger.” In re Samsung Elecs. Co., 2 F.4th 1371, 1379
`
`(Fed. Cir. 2021); accord In re Juniper Networks, Inc., -- F.4th --, 2021
`
`WL 4343309, at *4 (Fed. Cir. Sept. 24, 2021).
`
`Fintiv’s argument is also irrelevant to the re-transfer analysis.
`
`Governing Fifth Circuit precedent asks whether the district court’s
`
`original rationale for transfer—whatever it may have been—has since
`
`been frustrated. Cragar, 706 F.2d at 505. Here, part of the district
`
`court’s rationale was Austin’s relative convenience for party witnesses,
`
`10
`
`

`

`Case: 21-187 Document: 19 Page: 15 Filed: 09/27/2021
`
`Appx135, and that relative convenience is as pronounced as ever.
`
`Fintiv gets nowhere by suggesting that the district court should have
`
`adopted a different transfer rationale that improperly marginalized
`
`party witnesses.
`
`NXP. Second, the Austin Division is still superior to the Waco
`
`Division when it comes to securing the trial participation of third-party
`
`witnesses. Pet. 10-11, 20, 23. The NXP witness who will testify at trial
`
`is based in San Jose but willing to appear in Austin, Pet. 20, where the
`
`company has a “significant presence,” Appx135. Compulsory process
`
`over this witness remains unavailable in Waco. Pet. 20. The prior-art
`
`witness is also willing to appear in Austin but is not subject to Waco’s
`
`subpoena power. Pet. 10-11, 23. Apple raised these concerns during
`
`the hearing on potential re-transfer. Id. It explained that it lacked
`
`ultimate “control” over both third-party witnesses, who would be
`
`“coming voluntarily,” and that “a move to Waco would impact [Apple’s]
`
`ability to get them to trial live.” Appx180. The district court
`
`acknowledged that Apple had “a very valid point” that could justify
`
`keeping the trial “in Austin.” Appx181. It simply asked Apple for “a
`
`good faith commitment” that both witnesses “would attend in Austin if I
`
`11
`
`

`

`Case: 21-187 Document: 19 Page: 16 Filed: 09/27/2021
`
`kept it in Austin.” Appx181. There is no dispute that Apple promptly
`
`delivered that assurance, confirming—with a supporting signed letter
`
`from the prior-art witness—that both individuals would attend an
`
`Austin trial. Appx199; Appx202.
`
`Fintiv cannot dispute that these facts cut against re-transfer. So
`
`it urges that they “should not be considered,” Opp. 22, based on a
`
`misrepresentation of the record and a baseless assertion of forfeiture.
`
`Fintiv erroneously suggests that Apple never told the district court that
`
`these third-party witnesses “would be less likely to willingly appear for
`
`trial in Waco.” Id. But that is exactly what Apple said when it noted
`
`that “a move to Waco would impact [its] ability to get them to trial live.”
`
`Appx180. Fintiv next accuses Apple of “fail[ing] to provide proof in
`
`response to the District Court’s directive.” Opp. 23. But Apple provided
`
`precisely the “good faith commitment” that the district court requested.
`
`Appx199; Appx202.
`
`Ultimately, Fintiv faults Apple for “never inform[ing]” the district
`
`court in its post-hearing email, or attaching corresponding “proof,” that
`
`the third-party witnesses “would be unwilling to attend trial in Waco.”
`
`Opp. 22-23. But there was no reason for Apple to do that. The district
`
`12
`
`

`

`Case: 21-187 Document: 19 Page: 17 Filed: 09/27/2021
`
`court had already accepted that Apple’s concerns about the witnesses’
`
`attendance at a Waco trial were “very valid.” Appx181. That
`
`conclusion was consistent with governing law, which provides that
`
`concerns about unavailable compulsory process in the transferor forum
`
`favor transfer “even without a showing of unwillingness for each
`
`witness.” In re Hulu, LLC, --- F. App’x ---, 2021 WL 3278194, at *4
`
`(Fed. Cir. Aug. 2, 2021); see also Juniper, 2021 WL 4343309, at *6
`
`(district court erred in requiring a showing of unwillingness). The
`
`district court asked only for confirmation that the witnesses would
`
`willingly attend an Austin trial, which Apple promptly provided.
`
`Concern about their attendance in Waco was already established, and
`
`Apple certainly never “abandoned that concern.” Opp. 8.
`
`Localized interest. The district court’s third basis for transfer
`
`to Austin has also been unaffected by intervening events. Apple and
`
`NXP (not to mention Fintiv) still have offices in Austin, but not Waco.
`
`See Appx135. To the extent the district court deemed that sufficient to
`
`create localized interests, Appx133-134, the same is true now. Fintiv’s
`
`only response is to suggest, without citation, that local interests should
`
`be assessed only on a district-wide basis (i.e., “the Western District of
`
`13
`
`

`

`Case: 21-187 Document: 19 Page: 18 Filed: 09/27/2021
`
`Texas overall”), so that they must “weigh neutrally” when evaluating an
`
`intra-district transfer. Opp. 26 n.7. There is no authority for that
`
`proposition, which would inexplicably gut the § 1404(a) analysis
`
`regarding intra-district transfers and would defy Fifth Circuit
`
`precedent. See In re Radmax, Ltd., 720 F.3d 285, 289 (5th Cir. 2013)
`
`(weighing local interest in favor of transfer by comparing Tyler and
`
`Marshall Divisions of Eastern District of Texas). Not surprisingly, the
`
`district court never endorsed Fintiv’s unfounded approach.
`
`Sources of proof. Finally, it remains true, as the district court’s
`
`original transfer decision emphasized, that “there are no sources of
`
`proof in the Waco Division.” Pet. 7 (quoting Appx135). Contrary to
`
`Fintiv’s suggestion, Apple’s petition plainly argued “that this factor
`
`weighs against retransfer,” Opp. 21, by identifying it as one of the bases
`
`for the original transfer that had not “changed in any relevant way,”
`
`Pet. 20. Fintiv seeks to minimize the location of proof by noting that
`
`“discovery is now complete, and the parties have already marshalled
`
`their evidence for trial.” Opp. 21 n.5. But Fintiv cites no authority
`
`suggesting that discovery neutralizes this factor of the § 1404(a)
`
`analysis. If anything, the disparity in access to proof is even greater
`
`14
`
`

`

`Case: 21-187 Document: 19 Page: 19 Filed: 09/27/2021
`
`now, because the “evidence” has been “marshalled” in the Austin
`
`Division, where the parties have conducted discovery and prepared for
`
`trial.
`
`B. Additional factors do not alter the § 1404(a) analysis.
`Having failed to demonstrate any disruption to the four
`
`considerations that originally supported transfer to the Austin Division,
`
`Fintiv insists that two additional § 1404(a) factors—court congestion
`
`and “other practical problems”—should nonetheless flip the transfer
`
`analysis in favor of Waco. As Apple explained, however, even if these
`
`factors were relevant—which they are not under Cragar—they do not
`
`support re-transfer. Pet. 23-26.
`
`Court congestion. Fintiv does not contest that, under this
`
`Court’s precedent, “the prospective speed with which [a] case might be
`
`brought to trial” is not “of particular significance.” Samsung, 2 F.4th at
`
`1380; see Juniper, 2021 WL 4343309, at *7; Pet. 24. As this same
`
`district court has elsewhere acknowledged, that means the court-
`
`congestion factor “cannot receive dispositive or undue weight in a §
`
`1404(a) analysis.” VLSI Tech. LLC v. Intel Corp., No. 1:19-cv-00977-
`
`15
`
`

`

`Case: 21-187 Document: 19 Page: 20 Filed: 09/27/2021
`
`ADA, 2020 WL 8254867, at *5 (W.D. Tex. Dec. 31, 2020) (citing In re
`
`Adobe, 823 F. App’x 929, 932 (Fed. Cir. 2020)); Pet. 24.
`
`Apple’s petition demonstrated (at 24) that court congestion is
`
`particularly insignificant here. For one thing, the district court’s
`
`concern about time to trial in the Austin Division courthouse “calls for
`
`speculation” even more than usual. In re Apple Inc., 979 F.3d 1332,
`
`1344 n.5 (Fed. Cir. 2020); see Samsung, 2 F.4th at 1380. The district
`
`court noted that trials are proceeding in Austin and acknowledged “the
`
`possibility” of “being able to use a courtroom in Austin” as scheduled.
`
`Appx175-177. The court simply was not “able to tell” the parties that
`
`trial “would be absolutely able to move forward in Austin.” Appx178
`
`(emphasis added). Delay because of congestion was thus highly
`
`conjectural. Pet. 24. Fintiv has also agreed to at least three trial
`
`extensions, undercutting any plausible suggestion of urgency regarding
`
`time to trial. Id.
`
`Once more, Fintiv has no meaningful answer. It argues that court
`
`congestion is somehow not speculative here, insisting that Austin jury
`
`trials are “largely suspended.” Opp. 27. But, contrary to Fintiv’s talk of
`
`an “effective closure,” Opp. 2, public docket data show that five civil jury
`
`16
`
`

`

`Case: 21-187 Document: 19 Page: 21 Filed: 09/27/2021
`
`trials have been conducted in Austin in the last three months. That is
`
`why the district court was not “able to tell” whether there would be any
`
`delay at all if the case remained in Austin. Appx178. Fintiv also cites
`
`other district court decisions where court congestion played a role in the
`
`§ 1404(a) analysis. See Opp. 27-28. But those decisions are contrary to
`
`the precedent of this Court, cited above. And the one appellate decision
`
`Fintiv cites did not turn solely on the court-congestion factor. See In re
`
`True Chem. Sols., LLC, 841 F. App’x 240, 241 (Fed. Cir. 2021).
`
`Moreover, speed was more relevant there, because the plaintiff
`
`was “seeking injunctive relief.” Id. Fintiv claims that it too is seeking
`
`injunctive relief. Opp. 28 n.8. But no such claim for relief is in this
`
`case. The district court has deferred ruling on Fintiv’s belated attempt
`
`to add an injunctive request. Appx247-250 (postponing consideration of
`
`timeliness and merits of request). Regardless, Fintiv’s request to seek
`
`injunctive relief was not based on it being an “operating entity,” Opp. 28
`
`n.8, a newfound assertion that contradicts sworn testimony from
`
`Fintiv’s President, Appx253. Instead, Fintiv sought injunctive relief to
`
`protect its ability to assert and license its patents—an alleged harm
`
`17
`
`

`

`Case: 21-187 Document: 19 Page: 22 Filed: 09/27/2021
`
`that is eminently reparable by money damages. Appx223-224;
`
`Appx240-241.
`
`Other practical problems. In an effort to identify an additional
`
`factor favoring re-transfer, Fintiv turns to the catch-all for other
`
`practical problems. Opp. 24. As Apple explained, however, that factor
`
`emphatically disfavors re-transfer. Pet. 25-26. Moving the trial now
`
`would magnify the dangers posed by COVID-19, heightening exposure
`
`to the virus at a time when hospitalizations in Waco are surging. Id.
`
`Fintiv cannot dispute that re-transfer would substantially
`
`increase exposure to the virus. But it makes the puzzling assertion that
`
`“trial” could still “be achieved more safely” in Waco “than in Austin.”
`
`Opp. 26. Fintiv offers no basis for that claim. It simply notes that the
`
`district court has reportedly “conducted numerous trials safely in Waco
`
`during the pandemic,” subject to “safety measures.” Opp. 24-25
`
`(quoting Appx198). But the same is true in Austin, where—as the
`
`district court acknowledged—numerous trials have also been held,
`
`subject to enhanced safety precautions. Appx175-176. There is no
`
`evidence whatsoever that proceedings in the Waco Division courthouse
`
`are “comparatively safer” than those in the Austin Division courthouse,
`
`18
`
`

`

`Case: 21-187 Document: 19 Page: 23 Filed: 09/27/2021
`
`Opp. 25, let alone that any such advantage would make up for the
`
`additional travel-related risks to trial participants forced to relocate to
`
`Waco.
`
`Attacks on Apple’s integrity. Lacking a reasoned basis to
`
`oppose mandamus, Fintiv ultimately contends that re-transfer would be
`
`appropriate under § 1404(a) because Apple has purportedly engaged in
`
`“gamesmanship.” Opp. 29. Fintiv accuses Apple of seeking mandamus
`
`with the “ulterior motive” to “delay” trial. Opp. 29-30. It even suggests
`
`that Apple has acted deceptively by “[t]elling this Court one thing and
`
`the District Court another.” Opp. 30. None of that is true. Apple
`
`sought mandamus because the district court replicated the error that
`
`gave rise to mandamus in Intel I. Supra 4-8. As explained, Apple’s
`
`petition does not rely on any “information it failed to provide the
`
`District Court in the first instance.” Opp. 30. That is simply Fintiv’s
`
`misrepresentation of the record. Supra 12-13. And there is nothing
`
`deceptive about Apple maintaining its request to this Court for a stay
`
`after the district court moved the trial date. When Apple applied for a
`
`stay, jury selection was scheduled to start on October 4, 2021. See Stay
`
`Mot. 5. It is now scheduled to start on October 5. See Dkt. 17. Those
`
`19
`
`

`

`Case: 21-187 Document: 19 Page: 24 Filed: 09/27/2021
`
`extra 24 hours have not eliminated the need for a stay to ensure this
`
`Court has time to resolve Apple’s petition before trial takes place, and
`
`Fintiv has no basis to suggest that Apple made any sort of “concession”
`
`otherwise. Opp. 12.
`
`At bottom, therefore, intervening events have not frustrated the
`
`district court’s original transfer rationale. That means re-transfer
`
`would have been unavailable even if the district court had invoked
`
`§ 1404(a). And it underscores the need for mandamus relief to vacate
`
`the improper re-transfer order.
`
`CONCLUSION
`The Court should grant Apple’s petition and vacate the district
`
`court’s order re-transferring this case to the Waco Division.
`
`20
`
`

`

`
`
`Case: 21-187 Document: 19 Page: 25 Filed: 09/27/2021
`
`
`
`Sean C. Cunningham
`Erin Gibson
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`
`John M. Guaragna
`DLA PIPER LLP (US)
`303 Colorado Street, Suite 3000
`Austin, TX 78701
`
`Mark D. Fowler
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`
`Respectfully submitted,
`
`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Edmund R. Hirschfeld
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`
`
`Counsel for Petitioner
`
`
`21
`
`

`

`Case: 21-187 Document: 19 Page: 26 Filed: 09/27/2021
`
`CERTIFICATE OF COMPLIANCE
`
`The reply complies with the type-volume limitation of Fed. Cir. R.
`
`21(b) because this petition contains 3897 words.
`
`This reply complies with the typeface requirements of Fed. R. App.
`
`P. 32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6)
`
`because this reply has been prepared in a proportionally spaced
`
`typeface using Microsoft Word for Microsoft 365 in Century Schoolbook
`
`14-point font.
`
`
`
`
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`Counsel for Petitioner
`
`
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket