Case: 23-120 Document: 16 Page: 1 Filed: 03/06/2023
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`NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`In re: APPLE INC.,
`Petitioner
`______________________
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`2023-120
`______________________
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`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:22-
`cv-00149-ADA, Judge Alan D. Albright.
`______________________
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`ON PETITION AND MOTION
`______________________
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`Before DYK, REYNA, and CHEN, Circuit Judges.
`PER CURIAM.
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`O R D E R
` Apple Inc. petitions this court for a writ of mandamus
`directing the United States District Court for the Western
`District of Texas to promptly rule on Apple’s motion to
`transfer and to stay other proceedings until transfer has
`been resolved. Apple also moves this court to stay the pro-
`ceedings pending consideration of its petition.
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`In February 2022, SpaceTime3D, Inc. brought this suit
`against Apple in the Western District of Texas, Waco Divi-
`sion. In July 2022, Apple moved to transfer the case within
`the Western District to Austin. That motion was fully
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`IN RE: APPLE INC.
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`briefed by the parties and has been pending on the district
`court’s docket since November 7, 2022. On November 14,
`2022, fact discovery was opened. Based on an agreement
`by the parties, the district court scheduled a claim con-
`struction hearing for November 17, 2022. The day before
`the hearing, however, Apple moved to stay that hearing
`and all other proceedings until the district court’s decision
`on Apple’s pending motion to transfer. In light of Apple’s
`motion, the trial court deferred claim construction.
`On January 30, 2023, the district court denied Apple’s
`stay motion. The court acknowledged the requirement un-
`der governing precedent to prioritize timely resolution of a
`motion for inter-district transfer but took the view that “it
`does not have to stay the proceedings or decide whether to
`transfer the case intra district until closer to trial since this
`Court has the power to retain this case on its trial docket
`regardless of whether the Court grants transfer or not.”
`Appx274. More particularly, the court found that Apple
`had failed to show good cause for a stay of the Markman
`hearing, noting that “Apple waited to file this Motion to
`stay until only hours before the . . . scheduled Markman
`hearing—after the Court had already expended its re-
`sources to issue preliminary constructions and after the
`parties had already prepared for the hearing.” Appx280–
`81. It likewise found that Apple had failed to show the bal-
`ance of interests favored a stay of discovery deadlines.
`“The remedy of mandamus is a drastic one, to be in-
`voked only in extraordinary situations.” Kerr v. U.S. Dist.
`Court for N. Dist. of Cal., 426 U.S. 394, 402 (1976). Accord-
`ingly, “three conditions must be satisfied before it may is-
`sue.” Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380
`(2004). The petitioner must show a “clear and indisputa-
`ble” right to relief. Id. at 381 (quoting Kerr, 426 U.S. at
`403). The petitioner must show a “lack [of] adequate alter-
`native means to obtain the relief” it seeks. Mallard v. U.S.
`Dist. Ct. for S.D. Iowa, 490 U.S. 296, 309 (1989); see
`Cheney, 542 U.S. at 380. And, “even if the first two
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`IN RE: APPLE INC.
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`prerequisites have been met, the issuing court, in the exer-
`cise of its discretion, must be satisfied that the writ is ap-
`propriate under the circumstances.” Cheney, 542 U.S. at
`381.
`Regional circuit law—here, the law of the United
`States Court of Appeals for the Fifth Circuit—governs our
`review of procedural matters pertaining to transfer and
`stay requests not unique to patent law. See In re TS Tech
`USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); Biodex
`Corp. v. Loredan Biomed., Inc., 946 F.2d 850, 856 (Fed. Cir.
`1991). Under Fifth Circuit law, a trial court must prioritize
`transfer motions over substantive proceedings. In re
`Horseshoe Ent., 337 F.3d 429, 433 (5th Cir. 2003) (“[I]n our
`view disposition of that [transfer] motion should have
`taken a top priority in the handling of this case by
`the . . . District Court.”); In re Apple Inc., 979 F.3d 1332,
`1337 (Fed. Cir. 2020) (“Apple I”) (“Although district courts
`have discretion as to how to handle their dockets, once a
`party files a transfer motion, disposing of that motion
`should unquestionably take top priority.”).
`To that end, we have, in applying Fifth Circuit law in
`cases from trial courts in that circuit, granted mandamus
`“to correct a clearly arbitrary refusal to act on a longstand-
`ing pending transfer motion,” In re Apple Inc., 52 F.4th
`1360, 1361 (Fed. Cir. 2022) (“Apple II”). In Apple II, as
`here, the trial court’s management of the case would have
`substantially delayed resolution of a transfer motion until
`close to trial while requiring the parties to litigate the mer-
`its in a potentially inconvenient forum. Id. at 1362. We
`postponed substantive proceedings until after the trial
`court considered the motion. We explained that “precedent
`entitles parties to have their [transfer] motions prioritized”
`and concluded, based on the circumstances, that it “was a
`clear abuse of discretion to require the parties to expend
`additional party and court resources litigating the substan-
`tive matters of the case while Apple’s motion to transfer
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`unnecessarily lingers on the docket,” id. We think this
`precedent is equally applicable here.
`In deviating from this precedent, the trial court relied
`on a statement in an unpublished, non-precedential deci-
`sion, Sundell v. Cisco Sys. Inc., 111 F.3d 892, 1997 WL
`156824 (5th Cir. 1997), which noted that “[u]nder 28 U.S.C.
`§ 1404(b), the district court has broad discretion in deciding
`whether to transfer a civil action from a division in which
`it is pending to any other division in the same district.” Id.
`at *1. But Sundell does not suggest discretion in the prior-
`itization of the decision of transfer motions. In recognizing
`leeway in deciding whether to ultimately disturb the plain-
`tiff’s choice of forum, Sundell did not suggest, let alone
`hold, that a trial court can arbitrarily refuse to act on the
`transfer request. Indeed, Fifth Circuit precedent entitles
`parties to have their transfer motions prioritized. See
`Horseshoe, 337 F.3d at 433. We do not understand the
`Fifth Circuit to require only inter-district transfer motions
`be prioritized to the exclusion of intra-district transfer mo-
`tions.*
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`In concluding otherwise, the district court judge in-
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`dicated that he “has the power to retain this case on [his]
`docket regardless of whether the Court grants transfer or
`not.” Appx274. But 28 U.S.C. § 137(a) provides that it is
`“[t]he chief judge of the district court [who] . . . shall divide
`the business and assign the cases.” And the Chief Judge of
`the Western District has issued a standing order providing
`for assignment of the civil docket in the Austin Division of
`the Western District to two other district court judges.
`Appx369–70, Amended Order Assigning the Business of
`the Court (W.D. Tex. Dec. 16, 2022). Although the district
`court judge here suggested that one of those other judges
`might re-assign the case back to him, such speculation is
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`Given the demanding standard on mandamus, we can-
`not say that it was a clear abuse of discretion under the
`specific circumstances of this case for the district court to
`conclude that Apple was not entitled to a stay of the Mark-
`man hearing or the discovery deadlines because of its delay
`in moving for a stay. However, for the reasons provided
`above, we grant Apple’s petition for mandamus to the ex-
`tent that the district court is directed to timely decide the
`transfer motion before proceeding to further substantive
`matters beyond the Markman hearing.
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`Accordingly,
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`IT IS ORDERED THAT:
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`(1) The interim stay of the Markman hearing is lifted.
`(2) The petition and motion are granted to the limited
`extent that the district court is directed to decide the trans-
`fer motion before proceeding to further substantive mat-
`ters beyond the Markman hearing.
`FOR THE COURT
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` March 6, 2023
`/s/ Peter R. Marksteiner
` Date
`Peter R. Marksteiner
`Clerk of Court
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`not a basis to disregard precedent directing that transfer
`motions be prioritized.
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