Case: 22-164 Document: 2-1 Page: 1 Filed: 09/08/2022
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`Miscellaneous Docket No. ___
`
`
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`IN RE APPLE INC.,
`
`Petitioner.
`
`
`
`
`On Petition for Writ of Mandamus to the
`United States District Court for the
`Western District of Texas
`No. 6:21-cv-01071-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S PETITION FOR
`WRIT OF MANDAMUS
`
`
`
`Melanie L. Bostwick
`Jonas Q. Wang
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`
`
`Steven D. Moore
`KILPATRICK TOWNSEND &
` STOCKTON LLP
`Two Embarcadero Center
`Suite 1900
`San Francisco, CA 94111
`
`Mansi Shah
`KILPATRICK TOWNSEND &
` STOCKTON LLP
`1302 El Camino Real, Suite 175
`Menlo Park, CA 94025
`
`Alton L. Absher III
`KILPATRICK TOWNSEND &
` STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`Counsel for Petitioner
`
`
`
`
`
`

`

`Case: 22-164 Document: 2-1 Page: 2 Filed: 09/08/2022
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`FORM 9. Certificate of Interest
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`CERTIFICATE OF INTEREST
`
`
`Form 9 (p. 1)
`July 2020
`
`
`Case Number
`Short Case Caption
`Filing Party/Entity
`
`
`
`In re Apple Inc.
`
`Apple Inc.
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`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
`
`
`
`
`
`
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`
`09/08/2022
`Date: _________________
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`
`
`
`Signature:
`
`/s/ Melanie L. Bostwick
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`
`
`
`
`Name:
`
`Melanie L. Bostwick
`
`
`
`
`
`
`
`
`
`
`
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`
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`i
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`

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`Case: 22-164 Document: 2-1 Page: 3 Filed: 09/08/2022
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`FORM 9. Certificate of Interest
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
`
`Form 9 (p. 2)
`July 2020
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
`
`(cid:1798) None/Not Applicable (cid:1798) None/Not Applicable
`
`✔
`
`✔
`
`Apple Inc.
`
`Additional pages attached
`
`ii
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`

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`Case: 22-164 Document: 2-1 Page: 4 Filed: 09/08/2022
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
`
`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`None/Not Applicable
`Additional pages attached
`
`Kelly Hart & Hallman LLP
`
`J. Stephen Ravel
`
`Rishi Gupta
`
`Andrew W. Rinehart
`
`Amanda N. Brouillette
`
`Kasey E. Koballa
`
`Christopher P. Schaffer
`
`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`None/Not Applicable
`
`Additional pages attached
`
`In re Apple Inc., No. 22-162 (Fed. Cir.)
`
`In re Apple Inc., No. 22-163 (Fed. Cir.)
`
`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
`None/Not Applicable
`Additional pages attached
`
`✔
`
`iii
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`Case: 22-164 Document: 2-1 Page: 5 Filed: 09/08/2022
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`TABLE OF CONTENTS
`
`Page
`
`CERTIFICATE OF INTEREST ................................................................. i
`TABLE OF AUTHORITIES ..................................................................... vi
`STATEMENT OF RELATED CASES ...................................................... 1
`INTRODUCTION ...................................................................................... 2
`RELIEF SOUGHT ..................................................................................... 4
`ISSUE PRESENTED ................................................................................ 5
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY ................ 5
`Scramoge sues Apple for patent infringement in the Western
`District of Texas despite having no connection to that
`district ..................................................................................... 5
`Apple moves to transfer the suit to the Northern District of
`California, and venue discovery proceeds .............................. 7
`The district court sua sponte orders the parties to complete
`fact discovery and “re-brief” Apple’s transfer motion
`before it will consider whether to transfer venue ................ 14
`REASONS FOR ISSUING THE WRIT .................................................. 16
`I.
`Apple Has A Clear And Indisputable Right To The
`Writ. ....................................................................................... 17
`A.
`The district court clearly abused its discretion by
`violating binding precedent requiring courts to
`prioritize transfer motions. .......................................... 17
`The district court’s stated reasons for its
`extraordinary order cannot justify its departure
`from precedent. ............................................................ 23
`II. Apple Has No Other Adequate Means To Obtain Relief. ..... 29
`III. Mandamus Is Appropriate Here Because Apple Has A
`Strong Case For Transfer And The Equities Heavily
`Favor Apple. .......................................................................... 32
`
`B.
`
`iv
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`Case: 22-164 Document: 2-1 Page: 6 Filed: 09/08/2022
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`A.
`
`The clearly superior convenience of the Northern
`District of California makes the court-mandated
`delay especially unjustified. ......................................... 32
`1.
`The private-interest factors strongly favor
`transfer. ............................................................... 33
`The public-interest factors also favor transfer. .. 37
`2.
`The equities heavily favor Apple. ................................ 38
`B.
`CONCLUSION ........................................................................................ 42
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`v
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`

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`Case: 22-164 Document: 2-1 Page: 7 Filed: 09/08/2022
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Acer Am. Corp.,
`626 F.3d 1252 (Fed. Cir. 2010) ........................................................... 34
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ............ 18, 20, 21, 30, 31, 34, 38, 39, 40
`In re Apple Inc.,
`No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021) ............... 35
`Cheney v. U.S. Dist. Ct.,
`542 U.S. 367 (2004) ....................................................................... 16, 32
`Cont’l Grain Co. v. The Barge FBL-585,
`364 U.S. 19 (1960) ............................................................................... 17
`In re EMC Corp.,
`501 F. App’x 973 (Fed. Cir. 2013) ................................................. 18, 21
`In re Fusion-IO, Inc.,
`489 F. App’x 465 (Fed. Cir. 2012) ....................................................... 21
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009) ............................................... 34, 35, 36
`In re Google Inc.,
`No. 2015-138, 2015 WL 5294800 (Fed. Cir. July
`16, 2015) ........................................................... 19, 20, 21, 22, 23, 30, 39
`In re Hoffman-La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009) ........................................................... 35
`In re Horseshoe Ent.,
`337 F.3d 429 (5th Cir. 2003) ......................................................... 19, 22
`In re Juniper Networks, Inc.,
`14 F. 4th 1313 (Fed. Cir. 2021) ......................................... 25, 34, 36, 38
`
`vi
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`

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`Case: 22-164 Document: 2-1 Page: 8 Filed: 09/08/2022
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`McDonnell Douglas Corp. v. Polin,
`429 F.2d 30 (3d Cir. 1970) ................................................ 18, 21, 25, 40
`In re Netflix, Inc.,
`No. 2021-190, 2021 WL 4944826 (Fed. Cir. Oct. 25, 2021) ................ 19
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ................................................. 18, 21
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009) ..................................................... 33, 36
`In re Samsung Elecs. Co.,
`2 F.4th 1371 (Fed. Cir. 2021) ........................................................ 36, 38
`In re SK hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ............................... 19, 20, 22, 30, 31
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ........................................... 19, 22, 31
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ....................................................................... 30, 39
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ................................. 16, 32, 33, 37, 39, 41
`In re Wyeth,
`406 F. App’x 475 (Fed. Cir. 2010) ....................................................... 18
`Statutes
`28 U.S.C. § 1404(a) ............................................. 2, 3, 19, 20, 30, 32, 37, 39
`Rules and Regulations
`Fed. R. Civ. P. 30(b)(6) .............................................................................. 8
`Other Authorities
`Apple’s Response to Petition for Rehearing En Banc, In re
`Apple Inc., No. 20-135, Dkt. 70 (Fed. Cir. Dec. 29, 2020) .................. 28
`
`vii
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`

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`Case: 22-164 Document: 2-1 Page: 9 Filed: 09/08/2022
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`Discovery and Scheduling Order, Aire Tech. Ltd. v. Apple
`Inc., 6:21-cv-01101-ADA, Dkt. No. 54 (W.D. Tex. Aug. 22,
`2022) .................................................................................................... 16
`Discovery and Scheduling Order, XR Commc’ns LLC v.
`Apple, Inc., No. 6:21-cv-00620-ADA, Dkt. No. 68 (W.D.
`Tex. Aug. 25, 2022) ............................................................................. 16
`Discovery and Scheduling Order, XR Commc’ns v. Asustek
`Comput. Inc., No. 6:21-cv-00622-ADA, Dkt. 55 (W.D. Tex.
`Aug. 25, 2022) ..................................................................................... 16
`Joint Stipulation of Dismissal, Koss Corp. v. Apple Inc., No.
`6:20-cv-00665-ADA, Dkt. 303 (W.D. Tex. July 23, 2022) ................... 26
`Order of Dismissal, Koss Corp. v. Apple Inc., No. 6:20-cv-
`00665-ADA, Dkt. 304 (W.D. Tex. July 23, 2022)................................ 26
`
`
`
`viii
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`Case: 22-164 Document: 2-1 Page: 10 Filed: 09/08/2022
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`STATEMENT OF RELATED CASES
`No other appeal in or from the same proceeding the Waco Division
`
`of the Western District of Texas was previously before this or any other
`
`appellate court.
`
`Apple is aware of two cases that may directly affect or be directly
`
`affected by the Court’s resolution of this mandamus petition. Those
`
`cases involve similar facts as this one, and the district court entered
`
`substantively identical orders to the one at issue in this petition. Apple
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`previously filed petitions for a writ of mandamus in each of those cases;
`
`those petitions are pending before this Court as In re Apple Inc., No. 22-
`
`162 (Fed. Cir.), and In re Apple Inc., No. 22-163 (Fed. Cir.).
`
`
`
`
`
`1
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`

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`Case: 22-164 Document: 2-1 Page: 11 Filed: 09/08/2022
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`INTRODUCTION
`This Court has held that motions to transfer venue under 28
`
`U.S.C. § 1404(a) must be decided promptly, at the outset of litigation,
`
`before the case has progressed substantially on the merits. Indeed, the
`
`purpose of § 1404(a) transfer is to ensure that litigation takes place in a
`
`convenient forum with some meaningful connection to the dispute.
`
`Delaying a transfer ruling beyond decisions that affect the substantive
`
`issues in the litigation undermines that purpose by forcing litigants and
`
`a district court to spend time and resources proceeding in a forum that
`
`may not ultimately try the case. Thus, this Court has granted
`
`mandamus relief to order district courts to decide a transfer motion that
`
`has lingered on the docket while the case matures into substantive
`
`steps like discovery, claim construction, and other merits matters.
`
`Here, without ruling on Apple’s fully briefed transfer motion, the
`
`district court affirmatively ordered the parties to complete fact
`
`discovery and otherwise press forward on the merits, after which they
`
`must “renew” briefing on the transfer issue. Only then will the district
`
`court take up transfer. At that point, eleven months will have passed
`
`since Apple first filed its transfer motion—and since the transfer of
`
`2
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`

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`Case: 22-164 Document: 2-1 Page: 12 Filed: 09/08/2022
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`another case involving the same parties and similar accused features to
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`the Northern District of California. The parties will not only have
`
`completed fact discovery (with the district court resolving all discovery
`
`disputes), they will also have served final infringement and invalidity
`
`contentions, narrowed the asserted claims and prior art, and even
`
`exchanged their preliminary exhibit and witness lists for trial—all in a
`
`forum that this district court has already determined to be inconvenient
`
`in a case involving the same parties and a nearly identical § 1404(a)
`
`analysis.
`
`The district court entered the same scheduling order in two other
`
`cases, in which Apple has already sought this Court’s mandamus
`
`review. See In re Apple Inc., No. 22-162 (Fed. Cir. Sept. 1, 2022); In re
`
`Apple Inc., No. 22-163 (Fed. Cir. Sept. 6, 2022). Here, as in those cases,
`
`mandamus relief is warranted. Indeed, the district court’s substantial
`
`change in the schedule, and its violation of precedent, is even more
`
`perplexing in this case. Unlike in Apple’s two co-pending mandamus
`
`petitions, neither party sought to supplement the venue record here.
`
`The district court had even denied an unopposed request for a two-day
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`extension on Apple’s transfer reply, citing the impending Markman
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`3
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`

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`Case: 22-164 Document: 2-1 Page: 13 Filed: 09/08/2022
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`hearing. Yet in its unprompted scheduling order issued just two weeks
`
`later, the court postponed the Markman hearing for nearly a year.
`
`The impetus for that about-face was plaintiff Scramoge’s motion to
`
`strike certain evidence from Apple’s transfer reply. But that evidence
`
`was responsive to new assertions by Scramoge in its transfer opposition
`
`brief. Moreover, Scramoge did not seek a delay in the resolution of
`
`transfer, and there was no basis to impose it. Indeed, that delay is
`
`particularly problematic here, since the parties’ related litigation will
`
`continue proceeding in the Northern District of California while this
`
`case proceeds in parallel, at least for the time being, in Texas.
`
`Mandamus is urgently needed to address the district court’s
`
`unlawful scheduling order, which has now been entered in at least four
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`cases—three of them involving Apple. The Court should grant
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`mandamus to ensure that transfer motions receive the priority they
`
`deserve.
`
`RELIEF SOUGHT
`Apple respectfully requests that the Court issue a writ of
`
`mandamus directing the district court to vacate its scheduling order,
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`4
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`Case: 22-164 Document: 2-1 Page: 14 Filed: 09/08/2022
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`promptly rule on Apple’s pending transfer motion, and stay all district-
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`court proceedings on the merits until transfer has been resolved.
`
`ISSUE PRESENTED
`Whether Apple is entitled to a writ of mandamus to correct the
`
`district court’s clear abuse of discretion in requiring the parties to
`
`complete full fact discovery and otherwise move the litigation forward
`
`on the merits for another eight months before the district court will
`
`consider whether to transfer this case.
`
`FACTUAL BACKGROUND AND PROCEDURAL HISTORY
`
`Scramoge sues Apple for patent infringement in the Western
`District of Texas despite having no connection to that district
`Scramoge is an Irish patent-holding company headquartered in
`
`Dublin. Appx16-17. Scramoge has no ties to the Western District of
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`Texas. See Appx52; Appx58.
`
`Nonetheless, in June and October 2021, Scramoge filed two patent
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`lawsuits against Apple in the Waco Division of the Western District of
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`Texas. See Appx16-28; Appx53; Appx173-183. In the first, Scramoge
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`Technology Ltd. v. Apple Inc., No. 6:21-cv-00579-ADA (W.D. Tex. June
`
`7, 2021) (Scramoge I), Scramoge accused various models of Apple’s
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`iPhone and AirPods products of infringing its patents covering aspects
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`5
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`of wireless charging technology. Appx228. Because there was no
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`meaningful connection to the Western District of Texas, Apple filed a
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`motion to transfer on November 12, 2021. Appx184-206. The district
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`court granted Apple’s motion on May 17, 2022, and transferred the case
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`to the Northern District of California. Appx228-252.
`
`In the second suit—the case giving rise to this appeal—Scramoge
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`Technology Ltd. v. Apple Inc., No. 6:21-cv-01071-ADA (W.D. Tex. Oct.
`
`14, 2021) (Scramoge II), Scramoge accused various models of Apple’s
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`MagSafe Chargers and Apple Watch products of infringing its patents
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`by virtue of their wireless inductive charging features. Appx16;
`
`Appx18-20; Appx24-25. As with Scramoge I, nothing about this
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`litigation has any meaningful connection to Texas, much less the Waco
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`Division of the Western District of Texas. Apple’s research, design,
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`development, marketing, and finance operations for the accused
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`features primarily take place in the Northern District of California,
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`where Apple is headquartered. Appx75; Appx77. Apple’s likely trial
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`witnesses are in California, including Apple employees who can explain
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`the accused features to the jury and Apple engineers who participated
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`in or are knowledgeable about the research, design, and development of
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`6
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`Case: 22-164 Document: 2-1 Page: 16 Filed: 09/08/2022
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`the accused features. Appx76-78; Appx80-81. Indeed, two of the Apple
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`employees identified as likely trial witnesses in this case were
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`previously identified in Apple’s successful motion to transfer in
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`Scramoge I—and the overlap of likely trial witnesses in Scramoge I and
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`II is unsurprising, since the accused features in both cases concern
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`wireless charging. Appx210-211; Appx77-78. Additionally, Apple has
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`identified five prior art references in this case, for which the inventor or
`
`assignees are located in the Northern District of California. Appx108.
`
`Apple moves to transfer the suit to the Northern District of
`California, and venue discovery proceeds
`Because this case lacks any connection to the Western District of
`
`Texas, on May 11, 2022, Apple filed a motion to transfer the case to the
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`Northern District of California. See Appx47-73. Venue discovery
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`started shortly thereafter. See Appx33.
`
`Apple’s transfer motion explained that relevant documents and
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`likely witnesses are located in the Northern District of California,
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`where the accused technology was developed, and that neither
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`Scramoge nor this litigation has any connection to the Western District
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`of Texas. Appx53-58. The Northern District of California is where
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`Apple is headquartered, where Apple’s management and primary
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`7
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`Case: 22-164 Document: 2-1 Page: 17 Filed: 09/08/2022
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`research and development facilities are located, where Apple’s primary
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`operation, marketing, sales, and finance decisions take place, and where
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`more than 35,000 Apple employees work, including nearly all of Apple’s
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`engineers who are knowledgeable about the accused features. Appx75-
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`81. In contrast, Apple is unaware of any relevant documents or
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`anticipated Apple witnesses in the Western District of Texas. Appx80.
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`In support of its transfer motion, Apple relied on the declaration of
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`Mark Rollins, a finance manager at Apple, to establish certain facts,
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`such as the relevance, role, and locations of witnesses and their teams,
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`as well as the relevance and locations of various categories of
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`documents. Appx54-57. Mr. Rollins provided this information on behalf
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`of Apple as a corporation—akin to a Rule 30(b)(6) deponent. See
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`Appx75.
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`In its opposition to Apple’s transfer motion, Scramoge made little
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`attempt to show any connection to, or convenience in, the Texas forum
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`it chose. Instead, Scramoge principally attacked the credibility of Apple
`
`and its corporate declarant, Mr. Rollins. Scramoge’s attacks relied
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`heavily on an order the same district court entered in Scramoge I just
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`days after Apple filed its transfer motion in this case. In the Scramoge
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`8
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`Case: 22-164 Document: 2-1 Page: 18 Filed: 09/08/2022
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`I order, the district court granted Apple’s motion to transfer to the
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`Northern District of California. Appx228-252. In doing so, the district
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`court sua sponte ruled on the “credibility” of Mr. Rollins, who had
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`provided a similar declaration this case. Appx228; Appx230-236.
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`Apple has elsewhere demonstrated that the district court’s ruling
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`in Scramoge I identified no misstatements or other credibility
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`deficiencies in the testimony given by Mr. Rollins. See Appx253-262
`
`(Apple’s motion to seal portions of the Scramoge I transfer order);
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`Appx264-281 (Apple’s motion to vacate portions of the Scramoge I
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`transfer order). Instead, the district court faulted Mr. Rollins for doing
`
`exactly what corporate witnesses are obligated to do: gathering
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`information from individuals within Apple and relaying that
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`information on behalf of the company. See generally Appx228-252.
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`Seeking to capitalize on the Scramoge I order, however, Scramoge
`
`requested in its transfer opposition in this case that the district court
`
`draw adverse inferences against Apple in light of Apple’s reliance on a
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`corporate declaration provided by Mr. Rollins. Appx92-95. Scramoge
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`also raised a number of new factual speculations regarding the location
`
`of (i) potential third-party witnesses employed by Apple suppliers Texas
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`9
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`Case: 22-164 Document: 2-1 Page: 19 Filed: 09/08/2022
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`Instruments and STMicroelectronics and (ii) a handful of Austin-based
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`Apple employees that Scramoge asserted had relevant knowledge.
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`Appx92; Appx95-100.
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`To rebut Scramoge’s misplaced reliance on the Scramoge I order
`
`and to correct Scramoge’s newly raised factual assertions and
`
`arguments, Apple acted promptly to investigate and obtain declarations
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`from Apple employees whom Scramoge put at issue in its opposition.
`
`Appx118-120; Appx124-126. For example, in its motion to transfer and
`
`in Mr. Rollins’s declaration, Apple explained that Rohan Dayal, who is a
`
`Hardware Development Manager in the Wireless Charging Technology
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`Group responsible for the wireless charging circuitry for the Apple
`
`Watch, does not work in the Western District of Texas, and that his
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`workplace is instead located in the Northern District of California.
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`Appx77. Apple also provided evidence regarding the responsibilities of
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`Mr. Dayal and his team and the location of relevant team members—
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`including the fact that none are in Texas. Appx77-78. In its opposition,
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`Scramoge raised a number of unfounded suppositions, including that
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`“Mr. Rollins’s investigation was incomplete” regarding the venue
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`convenience for witnesses like Mr. Dayal. Appx97. Accordingly, in
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`10
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`Case: 22-164 Document: 2-1 Page: 20 Filed: 09/08/2022
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`reply, instead of submitting a second declaration from Mr. Rollins,
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`Apple obtained a declaration directly from Mr. Dayal confirming Mr.
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`Rollins’s attestations that the Northern District of California was a
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`more convenient venue. Among other things, and contrary to
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`Scramoge’s arguments, Mr. Dayal averred that his “workplace is in the
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`Northern District of California,” that he does “not work in the Western
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`District of Texas,” and that the “design and development work on the
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`Accused Features takes place in Apple’s physical labs located in
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`Cupertino, California.” Appx119.
`
`Apple also provided declarations from additional Apple employees
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`whom Scramoge had first identified in its transfer opposition, asserting
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`that Apple had “inexplicably omit[ted] mention of” them. Appx98. But
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`those employees, Apple explained, “have no relevance to this case.”
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`Appx110-111. Each of these new witness declarations likewise relied on
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`the declarant’s personal knowledge. Appx114-126. In other words,
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`each piece of Apple’s reply evidence directly responded to an argument
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`or factual assertion Scramoge put at issue in its opposition. Because
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`Scramoge introduced a number of arguments and evidentiary issues in
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`its opposition that it had not previously raised during venue discovery,
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`Apple could not have anticipated those issues in its opening motion.
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`On August 17, 2022, Apple served these additional declarations on
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`Scramoge and filed them as exhibits to Apple’s reply brief in support of
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`its transfer motion.1 Appx113. Apple’s reply explained how the
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`declarations were directly responsive to arguments and assertions that
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`Scramoge had raised for the first time in its transfer opposition. Apple
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`further explained that, during the three months of venue discovery,
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`Scramoge had declined to take the deposition of Mr. Rollins or any
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`witness identified in his declaration. Appx163.
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`Scramoge responded to Apple’s transfer reply by insisting that
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`this “new” evidence was improper, and stating its intention to move to
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`strike under the view that it lacked an opportunity to respond to
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`Apple’s reply. Appx134-135; Appx152. Apple demonstrated how all of
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`1 Limited to five pages and 14 days to respond to Scramoge’s 20-page
`opposition, which had exhibits numbering nearly 300 pages, Apple
`sought a one-week extension of time and five additional pages to reply.
`Appx142-145. Scramoge agreed to a two-day, two-page extension.
`Appx144-145. But the district court allowed only the two additional
`pages and denied any additional time, citing the upcoming Markman
`hearing that it later postponed, Appx142, inhibiting a full airing of the
`record and legal arguments.
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`the evidence was proper rebuttal, but nonetheless offered Scramoge the
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`opportunity to file a sur-reply. Appx164.
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`Scramoge, however, did not take Apple up on its offer. Instead,
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`Scramoge moved to strike what it alleged to be improper evidence in
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`Apple’s transfer reply brief. Appx130. Scramoge asserted that Apple
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`had “unilateral[ly] deci[ded] to inject new Apple evidence,” in
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`“contraven[tion of] the Court’s procedures for deciding transfer and
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`claim construction in fair, orderly, and expedient fashion.” Appx130.
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`But Scramoge did not identify a single piece of evidence Apple provided
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`in its reply that did not directly respond to an argument Scramoge
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`introduced for the first time in its opposition. Appx163; Appx108-109.
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`And notably absent from Scramoge’s motion to strike was any request
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`for additional venue discovery, let alone any delay in resolving transfer.
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`See Appx127-138.
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`In opposing Scramoge’s motion to strike, Apple again
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`demonstrated that the evidence Scramoge sought to strike responded
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`directly to arguments raised by Scramoge in its response. Appx166.
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`This included Scramoge’s unfounded speculation as to the location of
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`potential witnesses, along with unverified and cherry-picked LinkedIn
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`profiles of Apple employees provided in the voluminous exhibits
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`attached to Scramoge’s opposition—all of which necessitated an
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`evidentiary response. Appx163; Appx167.
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`The district court sua sponte orders the parties to complete fact
`discovery and “re-brief” Apple’s transfer motion before it will
`consider whether to transfer venue
`On August 26, 2022, the district court granted in part Scramoge’s
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`motion to strike. Appx1-3. The district court ruled that, “in lieu of
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`striking” Apple’s evidence and argument, it would “give Scramoge” “an
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`opportunity to investigate and respond to the new facts and arguments”
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`in Apple’s reply. Appx1; Appx3. In doing so, however, the district court
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`also postponed ruling on Apple’s transfer motion—which at that point
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`was fully briefed—until after the completion of fact discovery on the
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`merits. The district court stated that “[f]ull fact discovery will allow the
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`parties to provide the Court with the best evidence for ruling on a
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`motion to transfer.” Appx2. Although neither party had asked for a
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`revised schedule, the district court sua sponte issued a new discovery
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`and scheduling order, which requires the parties to “re-brief the motion
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`to transfer … after the parties conduct fact discovery and determine
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`which witnesses and evidence they intend to call at trial.” Appx2.
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`The order provides for 30 weeks of fact discovery, to be followed by
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`six weeks of additional briefing on the transfer motion. Appx6-7. In
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`other words, the district court ordered the parties to engage in more
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`than eight months of fact discovery and briefing before it will even
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`consider whether to transfer venue. During this time, the parties also
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`will be required to take other substantive steps in the litigation, all
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`according to the district court’s particular rules and limitations (even if
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`those rules differ from the ones in force in the ultimate transferee
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`forum). These include: litigating discovery disputes; adding parties
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`before the district court’s deadline passes; serving final infringement
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`and invalidity contentions; amending pleadings; narrowing the asserted
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`claims and prior art; litigating any dispute over that narrowing; and
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`exchanging preliminary exhibit and witness lists for trial. See Appx4-6.
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`Moreover, although the order states that the district court “finds it
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`prudent to have the parties … re-brief the motion to transfer,” Appx2, it
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`does not allow Apple to file a new motion to transfer accounting for any
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`additional information gleaned in months of discovery. It instead
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`allows Scramoge to file a new opposition and Apple to file a new reply,
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`and permits Scramoge to file a sur-reply for the first time. Appx6-7.
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`While unusual, the discovery and scheduling order in this case is
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`not a one-off. Indeed, in the span of a week, the district court has
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`entered nearly identical orders in at least three other patent-
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`infringement cases (two against Apple) with pending motions to
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`transfer venue. See, e.g., XR Commc’ns LLC v. Apple, Inc., No. 6:21-cv-
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`00620-ADA, Dkt. No. 68 (W.D. Tex. Aug. 25, 2022), Appx384-386; XR
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`Commc’ns v. Asustek Comput. Inc., No. 6:21-cv-00622-ADA, Dkt. 55
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`(W.D. Tex. Aug. 25, 2022), Appx388-390; Aire Tech. Ltd. v. Apple Inc.,
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`6:21-cv-01101-ADA, Dkt. No. 54 (W.D. Tex. Aug. 22, 2022), Appx282-
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`288. Each of these orders requires the parties to complete fact
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`discovery and additional briefing, again over the course of more than
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`several months, before the district court will consider whether to
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`transfer venue.
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`REASONS FOR ISSUING THE WRIT
`A petitioner seeking mandamus relief must (1) show a “clear and
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`indisputable” right to the writ; (2) have “no other adequate means to
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`attain the relief [it] desires”; and (3) demonstrate that “the writ is
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`appropriate under the circumstances.” In re Volkswagen of Am., Inc.,
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`545 F.3d 304, 311 (5th Cir. 2008) (en banc) (Volkswagen II) (quoting
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