throbber
Case: 22-164 Document: 6 Page: 1 Filed: 09/12/2022
`
`Miscellaneous Docket No. 22-164
`
`
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`
`Petitioner.
`
`IN RE APPLE INC.,
`
`
`
`
`
`
`
`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 EMERGENCY MOTION FOR A STAY OF
`PROCEEDINGS IN THE DISTRICT COURT PENDING
`RESOLUTION OF APPLE’S MANDAMUS PETITION
`
`
`
`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: 6 Page: 2 Filed: 09/12/2022
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ...................................................................... ii
`LIST OF EXHIBITS ................................................................................. iv
`RULE 27(A)(2) STATEMENT ................................................................... v
`INTRODUCTION ...................................................................................... 1
`BACKGROUND ........................................................................................ 4
`Apple promptly moves to transfer this case pursuant to
`§ 1404(a), leading to venue discovery ..................................... 4
`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 .................. 9
`Apple files a petition for writ of mandamus and moves in the
`district court to stay proceedings pending this Court’s
`decision on the mandamus petition ...................................... 11
`LEGAL STANDARD ............................................................................... 11
`ARGUMENT ........................................................................................... 12
`I.
`Apple’s Petition Makes A Compelling Case For
`Mandamus. ............................................................................ 13
`II. Absent A Stay, Apple Would Be Irreparably Harmed
`By Participating In Substantive Proceedings In Texas. ...... 16
`III. A Brief Stay Would Not Harm Scramoge. ............................ 18
`IV. The Public Interest Favors A Stay. ...................................... 19
`CONCLUSION ........................................................................................ 20
`CERTIFICATE OF INTEREST
`EXHIBITS
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`i
`
`

`

`Case: 22-164 Document: 6 Page: 3 Filed: 09/12/2022
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Am. Dredging Co. v. Miller,
`510 U.S. 443 (1994) ............................................................................. 20
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ....................................................... 1, 14
`Cont’l Grain Co. v. The Barge FBL-585,
`364 U.S. 19 (1960) ............................................................................... 14
`E-Watch, Inc. v. Lorex Can., Inc.,
`No. H-12-3314, 2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ........... 18
`In re EMC Corp.,
`501 F. App’x 973 (Fed. Cir. 2013) ....................................................... 14
`In re Google Inc.,
`No. 2015-138, 2015 WL 5294800 (Fed. Cir. July 16, 2015) ... 14, 16, 18
`Hilton v. Braunskill,
`481 U.S. 770 (1987) ................................................................. 12, 16, 18
`In re Horseshoe Ent.,
`337 F.3d 429 (5th Cir. 2003) ......................................................... 14, 16
`In re Lloyd’s Register N. Am., Inc.,
`780 F.3d 283 (5th Cir. 2015) ............................................................... 17
`In re Morgan Stanley,
`417 F. App’x 947 (Fed. Cir. 2011) ....................................................... 19
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ....................................................... 14
`Nken v. Holder,
`556 U.S. 418 (2009) ........................................................... 12, 16, 18, 19
`
`ii
`
`

`

`Case: 22-164 Document: 6 Page: 4 Filed: 09/12/2022
`
`In re SK hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ....................................... 2, 14, 17, 18
`Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
`897 F.2d 511 (Fed. Cir. 1990) ....................................................... 12, 13
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ................................. 2, 14, 16, 17, 18
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014) ........................................................... 19
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ............................................................... 17
`Weingarten Realty Inv’rs v. Miller,
`661 F.3d 904 (5th Cir. 2011) ............................................................... 20
`In re WMS Gaming Inc.,
`564 F. App’x 579 (Fed. Cir. 2014) ....................................................... 19
`Statutes
`28 U.S.C. § 1404(a) .............................................................................. 5, 14
`Rules and Regulations
`Fed. R. Civ. P. 30(b)(6) .............................................................................. 5
`Other Authorities
`Discovery and Scheduling Order, Aire Tech. Ltd. v. Apple,
`Inc., No. 6:21-cv-01101-ADA, Dkt. 54 (W.D. Tex. Aug. 22,
`2022) .................................................................................................... 11
`Discovery and Scheduling Order, XR Commc’ns v. Apple Inc.,
`No. 6:21-cv-00620-ADA, Dkt. 72-1 (W.D. Tex. Sept. 9,
`2022) .................................................................................................... 10
`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) ..................................................................................... 11
`
`iii
`
`

`

`Case: 22-164 Document: 6 Page: 5 Filed: 09/12/2022
`
`LIST OF EXHIBITS
`Exhibit 1: Petition for Writ of Mandamus, In re Apple Inc., No. 22-
`164, Dkt. 2-1 (Fed. Cir. Sept. 8, 2022)
`Exhibit 2: Discovery and Scheduling Order, Scramoge v. Apple Inc.,
`No. 6:21-cv-01071-ADA, Dkt. 56 (W.D. Tex. Aug. 26, 2022)
`Exhibit 3: Apple’s Opposed Motion to Stay Proceeding[s] Pending
`Mandamus Review, Scramoge v. Apple Inc., No. 6:21-cv-
`01071-ADA, Dkt. 58 (W.D. Tex. Sept. 8, 2022)
`Exhibit 4: Discovery and Scheduling Order, XR Commc’ns LLC v.
`Apple, Inc., No. 6:21-cv-00620-ADA, Dkt. 72-1 (W.D. Tex.
`Sept. 9, 2022)
`
`
`
`
`
`iv
`
`

`

`Case: 22-164 Document: 6 Page: 6 Filed: 09/12/2022
`
`RULE 27(A)(2) STATEMENT
`Pursuant to Federal Rule of Appellate Procedure 8 and Federal
`
`Circuit Rule 8, Apple states that it notified Scramoge of its intent to file
`
`this motion for a stay. Scramoge opposes the motion.
`
`
`
`v
`
`

`

`Case: 22-164 Document: 6 Page: 7 Filed: 09/12/2022
`
`INTRODUCTION
`On September 8, 2022, Petitioner Apple Inc. filed a petition for
`
`writ of mandamus asking this Court to: (1) vacate the district court’s
`
`order requiring the parties to complete fact discovery and other merits
`
`steps before the district court will rule on Apple’s fully briefed motion to
`
`transfer this case to the Northern District of California; (2) direct the
`
`district court to rule on Apple’s pending transfer motion; and (3) stay all
`
`other district-court proceedings until the district court decides the
`
`transfer motion. The same day, after receiving Scramoge’s indication
`
`that it would oppose a stay, Apple also moved in the district court for a
`
`temporary stay pending this Court’s review of the mandamus petition.
`
`The district court has not acted on Apple’s request for a temporary
`
`stay. Apple therefore respectfully requests that this Court stay the
`
`district-court proceedings until mandamus proceedings are resolved.
`
`Because the district court is moving “ahead on the merits in significant
`
`respects,” In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020), it is no
`
`longer practicable for Apple to await the district court’s ruling on its
`
`request for a temporary stay.
`
`1
`
`

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`Case: 22-164 Document: 6 Page: 8 Filed: 09/12/2022
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`The governing four-factor standard overwhelmingly favors a stay
`
`in this case. First, Apple respectfully submits that its petition makes a
`
`strong showing that mandamus relief is appropriate. The district court
`
`clearly abused its discretion by ordering the parties to complete fact
`
`discovery and otherwise advance this case on the merits for an
`
`additional eight months before it will resolve Apple’s promptly filed
`
`transfer motion. This Court has held that such delays in ruling on
`
`transfer motions merit mandamus relief because transfer motions must
`
`take priority on a district court’s docket. E.g., In re TracFone Wireless,
`
`Inc., 848 F. App’x 899, 901 (Fed. Cir. 2021); In re SK hynix Inc., 835 F.
`
`App’x 600, 600-01 (Fed. Cir. 2021). Indeed, that delay is particularly
`
`problematic here, since another case involving the same parties and
`
`similar accused features will continue proceeding in the Northern
`
`District of California while this case proceeds in parallel, at least for the
`
`time being, in Texas.
`
`Second, Apple will suffer irreparable harm absent a stay. If no
`
`stay is entered, the parties will continue proceeding through fact
`
`discovery and other substantive aspects of this case. But if Apple is
`
`right that mandamus is warranted, the district court will have
`
`2
`
`

`

`Case: 22-164 Document: 6 Page: 9 Filed: 09/12/2022
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`improperly proceeded to address the merits of the case—such as
`
`hearing discovery disputes—in an inconvenient venue. This Court has
`
`deemed that to be the kind of harm that warrants a stay.
`
`Third, Scramoge would not suffer any prejudice from a stay. This
`
`Court resolves mandamus proceedings quickly, so any delay would be
`
`brief. And Scramoge is a non-practicing entity, so it can be made whole
`
`for any delay with money damages if it eventually prevails here.
`
`Moreover, there is no reason why a brief stay would delay the eventual
`
`trial, which is not set to begin for more than a year.
`
`Finally, the public interest favors a stay. Awaiting this Court’s
`
`mandamus decision before proceeding would protect the strong local
`
`interest held by the Northern District of California in this case. It
`
`would also ensure that judicial resources are not wasted on a case that
`
`likely will not go to trial in the Western District of Texas.
`
`In sum, the governing factors all point in one direction: This
`
`Court should stay the district-court proceedings so that no substantive
`
`review takes place in the Western District of Texas until this Court
`
`determines whether the district court must resolve Apple’s transfer
`
`motion before the case moves forward on the merits.
`
`3
`
`

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`Case: 22-164 Document: 6 Page: 10 Filed: 09/12/2022
`
`BACKGROUND
`
`Apple promptly moves to transfer this case pursuant to § 1404(a),
`leading to venue discovery
`As explained more fully in Apple’s mandamus petition, Scramoge
`
`is an Irish patent-holding company headquartered in Dublin. Pet. 5.
`
`Scramoge has no ties to the Western District of Texas. Id.
`
`Nonetheless, in June and October 2021, Scramoge filed two patent
`
`lawsuits against Apple in the Waco Division of the Western District of
`
`Texas. Id. In the first, Scramoge 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 iPhone and AirPods products of
`
`infringing its patents covering aspects of wireless charging technology.
`
`Pet. 5. Because there was no meaningful connection to the Western
`
`District of Texas, Apple filed a motion to transfer on November 12,
`
`2021. Pet. 5-6. The district court granted Apple’s motion on May 17,
`
`2022, and transferred the case to the Northern District of California.
`
`Pet. 6.
`
`In the second suit—the case giving rise to Apple’s present
`
`mandamus petition—Scramoge Technology Ltd. v. Apple Inc., No. 6:21-
`
`cv-01071-ADA (W.D. Tex. Oct. 14, 2021) (Scramoge II), Scramoge
`
`4
`
`

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`Case: 22-164 Document: 6 Page: 11 Filed: 09/12/2022
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`accused various models of Apple’s MagSafe Chargers and Apple Watch
`
`products of infringing its patents by virtue of their wireless inductive
`
`charging features. Pet. 6. As with Scramoge I, nothing about this
`
`litigation has any meaningful connection to Texas, much less the Waco
`
`Division of the Western District of Texas. Pet. 6. Because this case has
`
`no connection to Texas and because party and non-party witnesses,
`
`documentation, and localized interests are concentrated in Northern
`
`California, Apple promptly moved in May 2022 to transfer the case to
`
`the Northern District of California under 28 U.S.C. § 1404(a). Pet. 7.
`
`To support its transfer motion, Apple relied on the declaration of
`
`Mark Rollins, a finance manager at Apple, to establish certain facts,
`
`such as the relevance, role, and locations of witnesses and their teams
`
`and various categories of documents. Pet. 8. Mr. Rollins provided this
`
`information on behalf of Apple as a corporation—akin to a Rule 30(b)(6)
`
`deponent. See Appx75.
`
`In its opposition to Apple’s transfer motion, Scramoge made little
`
`attempt to show any connection to, or convenience in, the Texas forum
`
`it chose. Instead, Scramoge principally attacked the credibility of Apple
`
`and its corporate declarant, Mr. Rollins. Scramoge’s attacks relied
`
`5
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`

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`Case: 22-164 Document: 6 Page: 12 Filed: 09/12/2022
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`heavily on an order the same district court entered in Scramoge I just
`
`days after Apple filed its transfer motion in this case. In the Scramoge
`
`I order, the district court granted Apple’s motion to transfer to the
`
`Northern District of California. Pet. 8. In doing so, the district court
`
`sua sponte ruled on the “credibility” of Mr. Rollins, who had provided a
`
`similar declaration this case. Pet. 9; Appx228; Appx230-236.
`
`Apple has elsewhere demonstrated that the district court’s ruling
`
`in Scramoge I identified no misstatements or other credibility
`
`deficiencies in the testimony given by Mr. Rollins. See Pet. 9 (citing
`
`Apple’s motion to seal portions of the Scramoge I transfer order,
`
`Appx253-262, and to vacate portions of that order, Appx264-281).
`
`Instead, the district court faulted Mr. Rollins for doing exactly what
`
`corporate witnesses are obligated to do: gathering information from
`
`individuals within Apple and relaying that information on behalf of the
`
`company. Id.
`
`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
`
`corporate declaration provided by Mr. Rollins. Id.; Appx92-100.
`
`6
`
`

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`Case: 22-164 Document: 6 Page: 13 Filed: 09/12/2022
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`Scramoge also raised a number of new factual speculations regarding
`
`the location of (i) potential third-party witnesses employed by Apple
`
`suppliers Texas Instruments and STMicroelectronics and (ii) a handful
`
`of Austin-based Apple employees that Scramoge asserted had relevant
`
`knowledge. Pet. 9-10; Appx92; Appx95-100.
`
`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
`
`from Apple employees whom Scramoge put at issue in its opposition.
`
`Pet. 10; Appx118-120; Appx124-126. Apple also provided declarations
`
`from additional Apple employees whom Scramoge had first identified in
`
`its transfer opposition, asserting that Apple had “inexplicably omit[ted]
`
`mention of” them. Pet. 11; Appx98. But those employees, Apple
`
`explained, “have no relevance to this case.” Pet. 11; Appx110-111. In
`
`other words, each piece of Apple’s reply evidence directly responded to
`
`an argument or factual assertion Scramoge put at issue in its
`
`opposition. Because Scramoge introduced a number of arguments and
`
`evidentiary issues in its opposition that it had not previously raised
`
`7
`
`

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`Case: 22-164 Document: 6 Page: 14 Filed: 09/12/2022
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`during venue discovery, Apple could not have anticipated those issues
`
`in its opening motion. See Pet. 11.
`
`On August 17, 2022, Apple served these additional declarations on
`
`Scramoge and filed them as exhibits to Apple’s reply brief in support of
`
`its transfer motion. Pet. 12; Appx113. Apple’s reply explained how the
`
`declarations were directly responsive to arguments and assertions that
`
`Scramoge had raised for the first time in its transfer opposition. Apple
`
`further explained that, during the three months of venue discovery,
`
`Scramoge had declined to take the deposition of Mr. Rollins or any
`
`witness identified in his declaration. Pet. 12; Appx163.
`
`Scramoge responded to Apple’s transfer reply by insisting that
`
`this “new” evidence was improper, and stating its intention to move to
`
`strike under the view that it lacked an opportunity to respond to
`
`Apple’s reply. Pet. 12; Appx134-135; Appx152. Apple demonstrated
`
`how all of the evidence was proper rebuttal, but nonetheless offered
`
`Scramoge the opportunity to file a sur-reply. Pet. 12; Appx164.
`
`Instead of filing a sur-reply, Scramoge moved to strike what it
`
`alleged to be improper evidence in Apple’s transfer reply brief. Pet. 13;
`
`Appx130. But Scramoge did not identify a single piece of evidence
`
`8
`
`

`

`Case: 22-164 Document: 6 Page: 15 Filed: 09/12/2022
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`Apple provided in its reply that did not directly respond to an argument
`
`Scramoge introduced for the first time in its opposition. Pet. 13;
`
`Appx163; Appx108-109. And notably absent from Scramoge’s motion to
`
`strike was any request for additional venue discovery, let alone any
`
`delay in resolving transfer. See Pet. 13; Appx127-138.
`
`In opposing Scramoge’s motion to strike, Apple again
`
`demonstrated that the evidence Scramoge sought to strike responded
`
`directly to arguments raised by Scramoge in its response. Pet. 13;
`
`Appx166.
`
`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
`
`motion to strike. Appx1-3. The district court ruled that, “in lieu of
`
`striking” Apple’s evidence and argument, it would “give Scramoge” “an
`
`opportunity to investigate and respond to the new facts and arguments”
`
`in Apple’s reply. Appx1; Appx3. In doing so, however, the district court
`
`also postponed ruling on Apple’s transfer motion—which at that point
`
`was fully briefed—until after the completion of fact discovery on the
`
`merits. The district court stated that “[f]ull fact discovery will allow the
`
`9
`
`

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`Case: 22-164 Document: 6 Page: 16 Filed: 09/12/2022
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`parties to provide the Court with the best evidence for ruling on a
`
`motion to transfer.” Appx2. Although neither party had asked for a
`
`revised schedule, the district court sua sponte issued a new discovery
`
`and scheduling order, which requires the parties to “re-brief the motion
`
`to transfer … after the parties conduct fact discovery and determine
`
`which witnesses and evidence they intend to call at trial.” Appx2.
`
`The order provides for 30 weeks of fact discovery, to be followed by
`
`six weeks of additional briefing on the transfer motion. Appx6-7. In
`
`other words, the district court ordered the parties to engage in more
`
`than eight months of fact discovery and briefing before it will even
`
`consider whether to transfer venue. During this time, the parties also
`
`will be required to take other substantive steps in the litigation, all
`
`according to the district court’s particular rules and limitations (even if
`
`those rules differ from the ones in force in the ultimate transferee
`
`forum).
`
`The district court has entered nearly identical orders in at least
`
`three other patent-infringement cases (two against Apple) with pending
`
`motions to transfer venue. See, e.g., XR Commc’ns LLC v. Apple, Inc.,
`
`No. 6:21-cv-00620-ADA, Dkt. 72-1 (W.D. Tex. Sept. 9, 2022) (Exhibit 4);
`
`10
`
`

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`Case: 22-164 Document: 6 Page: 17 Filed: 09/12/2022
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`XR Commc’ns v. Asustek Comput. Inc., No. 6:21-cv-00622-ADA, Dkt. 55
`
`(W.D. Tex. Aug. 25, 2022), Appx388-390; Aire Tech Ltd. v. Apple, Inc.,
`
`No. 6:21-cv-01101-ADA, Dkt. 54 (W.D. Tex. Aug. 22, 2022), Appx282-
`
`288. Each order requires the parties to complete fact discovery and
`
`additional briefing, again over the course of many months, before the
`
`district court will consider whether to transfer venue.
`
`Apple files a petition for writ of mandamus and moves in the
`district court to stay proceedings pending this Court’s decision
`on the mandamus petition
`On September 8, 2022, Apple filed a petition for a writ of
`
`mandamus directing the district court to vacate its scheduling order
`
`and stay all other proceedings until it rules on Apple’s transfer motion.
`
`Dkt. 2. The same day, Apple asked the district court to temporarily
`
`stay proceedings pending this Court’s resolution of the mandamus
`
`petition. Dist. Ct. Dkt. 58. The district court has not acted on that
`
`motion.
`
`LEGAL STANDARD
`Four factors govern stay requests: “(1) whether the stay applicant
`
`has made a strong showing that [it] is likely to succeed on the merits;
`
`(2) whether the applicant will be irreparably injured absent a stay;
`
`11
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`

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`Case: 22-164 Document: 6 Page: 18 Filed: 09/12/2022
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`(3) whether issuance of the stay will substantially injure the other
`
`parties interested in the proceeding; and (4) where the public interest
`
`lies.” Nken v. Holder, 556 U.S. 418, 425-26 (2009) (quoting Hilton v.
`
`Braunskill, 481 U.S. 770, 776 (1987)); see Standard Havens Prods., Inc.
`
`v. Gencor Indus., Inc., 897 F.2d 511, 512 (Fed. Cir. 1990) (explaining
`
`that these four factors “always guide our discretion to issue a stay
`
`pending appeal”). As this Court has explained, “likelihood of success in
`
`the appeal is not a rigid concept.” Standard Havens, 897 F.2d at 512. A
`
`“substantial case” on the merits suffices where “the other factors
`
`militate in [the] movant’s favor.” Id. at 513 (quoting Hilton, 481 U.S. at
`
`778) (emphasis omitted).
`
`ARGUMENT
`The governing standard overwhelmingly favors a stay. Apple’s
`
`petition makes a compelling showing that mandamus is appropriate
`
`because the district court’s order is contrary to precedent from this
`
`Court and the Fifth Circuit. Absent a stay, Apple will suffer irreparable
`
`harm as the case proceeds on the merits, including with the progression
`
`of fact discovery and other substantive steps in the litigation.
`
`Scramoge, in contrast, will suffer no appreciable harm from a brief
`
`12
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`

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`Case: 22-164 Document: 6 Page: 19 Filed: 09/12/2022
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`delay. And finally, the public interest favors a stay, which would
`
`protect local interests and judicial resources alike.
`
`I.
`
`Apple’s Petition Makes A Compelling Case For Mandamus.
`Apple respectfully suggests that it will likely prevail on the merits
`
`of its mandamus petition, which asks this Court to address whether a
`
`district court can, through a sua sponte scheduling order, decline to rule
`
`on a transfer motion until after the parties complete full fact discovery
`
`and otherwise move the litigation forward on the merits for nearly a
`
`year. Pet. 3-4. 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. Pet. 4. Because the district court clearly abused
`
`its discretion by refusing to address Apple’s transfer motion until the
`
`litigation has significantly progressed on the merits, Apple has, at the
`
`very least, presented a “substantial case on the merits,” Standard
`
`Havens, 897 F.2d at 513 (emphasis omitted), warranting a brief stay
`
`pending this Court’s resolution of Apple’s mandamus petition.
`
`The district court’s scheduling order here is contrary to binding
`
`precedent requiring courts to prioritize transfer motions. Because the
`
`13
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`

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`Case: 22-164 Document: 6 Page: 20 Filed: 09/12/2022
`
`transfer statute is designed “to protect litigants, witnesses and the
`
`public against unnecessary inconvenience and expense,” Cont’l Grain
`
`Co. v. The Barge FBL-585, 364 U.S. 19, 27 (1960), this Court has
`
`stressed “the importance of addressing motions to transfer at the outset
`
`of litigation,” In re EMC Corp., 501 F. App’x 973, 975 (Fed. Cir. 2013);
`
`see also Apple, 979 F.3d at 1337-38; In re Nintendo Co., 544 F. App’x
`
`934, 941 (Fed. Cir. 2013).
`
`The Fifth Circuit has likewise stated that transfer motions must
`
`take “top priority” in litigation. In re Horseshoe Ent., 337 F.3d 429, 433
`
`(5th Cir. 2003). When district courts fail to afford that priority to
`
`transfer motions, this Court has used its mandamus authority to ensure
`
`that those courts do not “frustrate 28 U.S.C. § 1404(a)’s intent” by
`
`forcing litigants “to expend resources litigating substantive matters in
`
`an inconvenient venue while a motion to transfer lingers unnecessarily
`
`on the docket.” In re Google Inc., No. 2015-138, 2015 WL 5294800, at *1
`
`(Fed. Cir. July 16, 2015); see also SK hynix, 835 F. App’x at 600-
`
`01; TracFone Wireless, 848 F. App’x at 901.
`
` The district court’s scheduling order not only ensures that the
`
`district court will oversee all of fact discovery, including resolving any
`
`14
`
`

`

`Case: 22-164 Document: 6 Page: 21 Filed: 09/12/2022
`
`discovery disputes, but also requires the parties to complete multiple
`
`other substantive steps in the Western District of Texas before the court
`
`will consider whether this case should be transferred to the Northern
`
`District of California. Claim construction briefing already has been
`
`completed; the deadline to add parties will pass; the parties will serve
`
`final infringement and invalidity contentions under the local patent
`
`rules of the Texas forum; the deadline to amend pleadings will pass; the
`
`parties will narrow the asserted claims and prior art (again, according
`
`to the Texas court’s particular rules and limitations); the district court
`
`will resolve any dispute over that narrowing; and the parties will
`
`exchange preliminary exhibit and witness lists for trial. See Appx4-5.
`
`All of this will take place before the parties are even permitted to
`
`resume briefing on Apple’s transfer motion. In short, the district court’s
`
`order guarantees that the parties will expend significant resources and
`
`the case will substantially progress on the merits, all in a forum that
`
`ultimately should not preside over the case.
`
`The district court’s clear abuse of discretion compels mandamus
`
`review by this Court. At a minimum, it presents a substantial case on
`
`15
`
`

`

`Case: 22-164 Document: 6 Page: 22 Filed: 09/12/2022
`
`the merits warranting a brief stay while this Court considers Apple’s
`
`petition.
`
`II. Absent A Stay, Apple Would Be Irreparably Harmed By
`Participating In Substantive Proceedings In Texas.
`Apple will be “irreparably injured absent a stay.” Nken, 556 U.S.
`
`at 426 (quoting Hilton, 481 U.S. at 776). Without a stay, the district
`
`court will proceed to substantive review of this case imminently, with
`
`claim-construction briefing completed, fact discovery underway, and
`
`discovery disputes likely to ripen in the near future. Pet. 19-22; Appx4-
`
`6; Appx284-288. But if Apple prevails on its mandamus petition, and
`
`the district court is required to consider Apple’s transfer motion before
`
`proceeding further on the merits, it will have erred by taking such
`
`substantive steps in the interim.
`
`As this Court has explained, allowing a transfer motion to go
`
`unconsidered while a court “press[es] forward with discovery and claim
`
`construction issues” can “forc[e] defendants” to spend time and
`
`resources litigating the merits of a case “in an inconvenient venue.”
`
`TracFone Wireless, 848 F. App’x at 900 (quoting Google, 2015 WL
`
`5294800, at *1). That is why the Fifth Circuit requires district courts to
`
`give transfer motions “top priority.” Horseshoe Ent., 337 F.3d at 433.
`
`16
`
`

`

`Case: 22-164 Document: 6 Page: 23 Filed: 09/12/2022
`
`Allowing this case to march on toward trial in the Western District of
`
`Texas risks creating major “inconvenience to witnesses, parties and
`
`other[s],” which is “the very harm sought to be avoided by transferring
`
`venue.” In re Lloyd’s Register N. Am., Inc., 780 F.3d 283, 289 (5th Cir.
`
`2015) (quoting In re Volkswagen of Am., Inc., 545 F.3d 304, 319 (5th Cir.
`
`2008) (en banc)). Indeed, witness convenience in the Northern District
`
`of California is further underscored by the overlap of relevant witnesses
`
`between this case and Scramoge I, which has been proceeding in the
`
`California forum since it was transferred there in May. Appx210-211;
`
`Appx77-78.
`
`These harms could not be remedied after the fact. Once the
`
`district court proceeds to substantive review of this case, the “prejudice
`
`suffered cannot be put back into the bottle.” Volkswagen, 545 F.3d at
`
`319. The threat of those harms confirms that a stay is warranted. See
`
`TracFone Wireless, 848 F. App’x at 901 (granting mandamus and
`
`ordering district court to stay all proceedings until ruling on transfer
`
`motion); SK hynix, 835 F. App’x at 601 (partially granting mandamus
`
`relief, including a stay of “all proceedings concerning … substantive
`
`issues” until the resolution of a transfer motion, as the petitioner had
`
`17
`
`

`

`Case: 22-164 Document: 6 Page: 24 Filed: 09/12/2022
`
`“no alternative means by which to obtain” such relief); Google, 2015 WL
`
`5294800, at *2 (granting mandamus and ordering the district court to
`
`decide the transfer motion within 30 days while staying all other
`
`proceedings).
`
`III. A Brief Stay Would Not Harm Scramoge.
`On the other hand, a stay pending resolution of Apple’s
`
`mandamus petition would not “substantially injure” Scramoge. Nken,
`
`556 U.S. at 426 (quoting Hilton, 481 U.S. at 776). Indeed, without a
`
`stay, Scramoge (like Apple) would be required to expend time and
`
`resources litigating in a forum that likely will not try this case. And
`
`“delay alone does not constitute prejudice sufficient to deny a request
`
`for [a] stay.” E-Watch, Inc. v. Lorex Can., Inc., No. H-12-3314, 2013 WL
`
`5425298, at *2 (S.D. Tex. Sept. 26, 2013). In any event, any delay
`
`caused by a stay will likely be brief. Apple filed its mandamus petition
`
`quickly (less than two weeks after the district court’s scheduling order),
`
`and this Court resolves mandamus petitions in an expedited manner.
`
`See, e.g., TracFone Wireless, 848 F. App’x at 900; SK hynix, 835 F. App’x
`
`at 600 (Fed. Cir. 2021). And the trial in this matter is not scheduled to
`
`18
`
`

`

`Case: 22-164 Document: 6 Page: 25 Filed: 09/12/2022
`
`take place until late October 2023, so there is no apparent reason why a
`
`short stay would delay that date. Appx288.
`
`Moreover, any momentary disadvantage to Scramoge from
`
`granting a short stay—unlike the harm to Apple from denying it—
`
`would be fully redressable. Because Scramoge does not practice the
`
`asserted patents, it can be compensated for any delay with money
`
`damages should it prevail in this lawsuit. See In re Morgan Stanley,
`
`417 F. App’x 947, 950 (Fed. Cir. 2011) (explaining that “the prospective
`
`speed with which this case might be brought to trial” is not “of
`
`particular significance” where plaintiff does not make or sell any
`
`product); In re WMS Gaming Inc., 564 F. App’x 579, 581 (Fed. Cir.
`
`2014) (same). As this Court has explained, a stay should not be denied
`
`merely because it “delays realization of … damages” without
`
`“diminish[ing]” the

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