throbber
Case: 23-120 Document: 5 Page: 1 Filed: 01/31/2023
`
`Miscellaneous Docket No. 23-120
`
`
`
`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. 6:22-cv-00149-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
`
`
`
`Brian Rosenthal
`Katherine Q. Dominguez
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166
`
`Neema Jalali
`GIBSON, DUNN & CRUTCHER LLP
`555 Mission Street, Suite 3000
`San Francisco, CA 94105
`
`
`
`Melanie L. Bostwick
`Jonas Q. Wang
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`
`Counsel for Petitioner
`
`
`
`

`

`Case: 23-120 Document: 5 Page: 2 Filed: 01/31/2023
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ...................................................................... ii
`LIST OF EXHIBITS .................................................................................. v
`RULE 27(A)(2) STATEMENT .................................................................. vi
`INTRODUCTION ...................................................................................... 1
`BACKGROUND ........................................................................................ 6
`Apple moves to transfer this case to the Austin Division of
`the Western District of Texas, leading to venue
`discovery .................................................................................. 6
`Apple seeks to postpone the Markman hearing until the
`district court resolves transfer ................................................ 7
`The district court denies Apple’s motion to stay ............................. 9
`LEGAL STANDARD ............................................................................... 11
`ARGUMENT ........................................................................................... 11
`I.
`Apple’s Petition Makes A Compelling Case For
`Mandamus. ............................................................................ 12
`II. Absent A Stay, Apple Would Be Irreparably Harmed
`By Participating In Substantive Proceedings In The
`Waco Division. ....................................................................... 16
`III. A Brief Stay Would Not Harm SpaceTime. .......................... 18
`IV. The Public Interest Favors A Stay. ...................................... 19
`CONCLUSION ........................................................................................ 20
`CERTIFICATE OF INTEREST
`EXHIBITS
`CERTIFICATE OF SERVICE
`CERTIFICATE OF COMPLIANCE
`
`
`i
`
`

`

`Case: 23-120 Document: 5 Page: 3 Filed: 01/31/2023
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Am. Dredging Co. v. Miller,
`510 U.S. 443 (1994) ............................................................................. 19
`In re Apple Inc.,
`52 F.4th 1360 (Fed. Cir. 2022) .................................................... 3, 4, 13
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ................................................. 3, 13, 14
`In re Apple Inc.,
`No. 2022-163, 2022 WL 16754376 (Fed. Cir. Nov. 8, 2022) ........... 4, 13
`In re Apple Inc.,
`No. 2022-164, 2022 WL 16754153 (Fed. Cir. Nov. 8, 2022) ........... 4, 13
`Ex parte Collett,
`337 U.S. 55 (1949) ............................................................................... 14
`Cont’l Grain Co. v. The Barge FBL-585,
`364 U.S. 19 (1960) ............................................................................... 13
`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) ....................................................... 13
`In re Google Inc.,
`No. 2015-138, 2015 WL 5294800 (Fed. Cir. July 16,
`2015) .................................................................................... 4, 13, 16, 17
`Hilton v. Braunskill,
`481 U.S. 770 (1987) ................................................................. 11, 16, 18
`In re Horseshoe Ent.,
`337 F.3d 429 (5th Cir. 2003) ......................................................... 13, 16
`
`ii
`
`

`

`Case: 23-120 Document: 5 Page: 4 Filed: 01/31/2023
`
`In re Lloyd’s Register N. Am., Inc.,
`780 F.3d 283 (5th Cir. 2015) ............................................................... 17
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ....................................................... 13
`Nken v. Holder,
`556 U.S. 418 (2009) ........................................................... 11, 16, 18, 19
`In re Radmax, Ltd.,
`720 F.3d 285 (5th Cir. 2013) ....................................................... 2, 3, 15
`In re SK hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ................................... 3, 4, 13, 17, 18
`Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
`897 F.2d 511 (Fed. Cir. 1990) ....................................................... 11, 12
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ............................. 3, 4, 13, 16, 17, 18
`In re True Chem. Sols., LLC,
`841 F. App’x 240 (Fed. Cir. 2021) ....................................................... 15
`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) ............................................................... 19
`Statutes
`28 U.S.C. § 1404(a) .................................................................. 2, 13, 14, 15
`Act of June 25, 1948, ch. 646, 62 Stat. 937 ............................................. 14
`Rules and Regulations
`Fed. Cir. R. 8(c) .......................................................................................... 2
`
`iii
`
`

`

`Case: 23-120 Document: 5 Page: 5 Filed: 01/31/2023
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`Fed. R. App. P. 8(a)(2)(A)(ii) ...................................................................... 2
`Other Authorities
`14D Charles Alan Wright, Arthur R. Miller & Edward H.
`Cooper, Federal Practice and Procedure § 3809 (3d ed. 2007) .......... 15
`Motion to Dismiss, In re Apple Inc., No. 2023-100, Dkt. 11
`(Fed. Cir. Nov. 9, 2022) ......................................................................... 1
`
`
`
`
`iv
`
`

`

`Case: 23-120 Document: 5 Page: 6 Filed: 01/31/2023
`
`LIST OF EXHIBITS
`Exhibit 1: Petition for Writ of Mandamus, In re Apple Inc., No. 23-
`120, Dkt. 2-1 (Fed. Cir. Jan. 31, 2023)
`Exhibit 2: Transcript on Stay Motion Hearing, SpaceTime3D, Inc.,
`No. 6:22-cv-00149-ADA, Dkt. 75 (W.D. Tex. Jan. 30, 2023)
`
`
`
`
`v
`
`

`

`Case: 23-120 Document: 5 Page: 7 Filed: 01/31/2023
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`RULE 27(A)(2) STATEMENT
`Pursuant to Federal Rule of Appellate Procedure 8 and Federal
`
`Circuit Rule 8, Apple states that it notified SpaceTime3D, Inc. of its
`
`intent to file this motion for a stay and requested its position. As of the
`
`time of filing, SpaceTime has not responded.
`
`
`
`vi
`
`

`

`Case: 23-120 Document: 5 Page: 8 Filed: 01/31/2023
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`INTRODUCTION
`Contemporaneous with this stay request, Petitioner Apple Inc.
`
`filed a petition for writ of mandamus asking this Court to direct the
`
`district court to rule on Apple’s pending transfer motion and stay all
`
`other district-court proceedings until transfer has been resolved. Apple
`
`filed this petition after the district court denied Apple’s motion seeking
`
`the same relief and instead ordered the parties to proceed with the
`
`Markman hearing, scheduled for later this week, even though the
`
`district court has not yet resolved Apple’s motion to transfer this case
`
`from the Waco Division to the Austin Division of the Western District of
`
`Texas. Pet. 1-4.
`
`Although the district court recently recognized the obligation to
`
`give transfer motions priority, see In re Apple Inc., No. 2023-100, Dkt.
`
`11 (Fed. Cir. Nov. 9, 2022), it has now concluded that such priority is
`
`not required where, as here, a party seeks transfer to another division
`
`of a judicial district, rather than transfer to another district altogether.
`
`Applying this rationale, the district court denied Apple’s motion to stay
`
`proceedings pending resolution of its motion for intradistrict transfer,
`
`even though the transfer motion has been fully briefed for nearly three
`
`1
`
`

`

`Case: 23-120 Document: 5 Page: 9 Filed: 01/31/2023
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`months. Appx237. In addition to proceeding with the Markman
`
`hearing set for February 3, the district court’s ruling has compelled the
`
`parties to press forward on the merits, including preparation for final
`
`infringement and invalidity contentions due in less than a month (on
`
`February 20)—all in a forum that is clearly inconvenient.
`
`There is no sound basis for the district court’s distinction between
`
`interdistrict and intradistrict transfer. “The § 1404(a) factors apply as
`
`much to transfers between divisions of the same district as to transfers
`
`from one district to another.” In re Radmax, Ltd., 720 F.3d 285, 288
`
`(5th Cir. 2013). And the reasons for affording priority to a transfer
`
`motion likewise apply equally in both settings.
`
`Because the district court has already denied a stay of the same
`
`proceedings on the same basis as Apple is requesting from this Court, it
`
`would be futile for Apple to file an initial motion for a stay pending
`
`mandamus with the district court. Such a motion would seek, in
`
`substance, exactly the same relief that the district court has just denied.
`
`See Fed. R. App. P. 8(a)(2)(A)(ii). Moreover, given the imminence of the
`
`Markman hearing, it would not be practicable for Apple to file an initial
`
`motion for a stay pending mandamus in the district court. See Fed. Cir.
`
`2
`
`

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`Case: 23-120 Document: 5 Page: 10 Filed: 01/31/2023
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`R. 8(c). 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), Apple respectfully requests that this Court stay the district-court
`
`proceedings at least until mandamus proceedings are resolved.
`
`The governing four-factor standard overwhelmingly favors a stay
`
`in this case. Indeed, the Fifth Circuit has granted a request for a stay
`
`of district-court proceedings in a similar context, in considering (and
`
`granting) a mandamus petition directing intradistrict transfer. See
`
`Radmax, 720 F.3d at 287, 290. First, Apple respectfully submits that
`
`its petition makes a strong showing that mandamus relief is
`
`appropriate. The district court clearly abused its discretion by failing to
`
`give Apple’s transfer motion the requisite priority and instead requiring
`
`the parties to proceed to a Markman hearing, continue with fact
`
`discovery, and otherwise move the litigation forward on the merits.
`
`This Court has held that such delays in ruling on transfer motions
`
`merit mandamus relief because transfer motions must take top priority
`
`on a district court’s docket. E.g., In re Apple Inc., 52 F.4th 1360, 1362-
`
`63 (Fed. Cir. 2022); 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.
`
`3
`
`

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`Case: 23-120 Document: 5 Page: 11 Filed: 01/31/2023
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`2021). Indeed, just a few months ago, this Court granted mandamus
`
`relief in three cases involving Apple; each grant of the writ directed the
`
`district court to resolve a transfer motion before proceeding further with
`
`the merits of the case. See Apple, 52 F.4th at 1363; In re Apple Inc., No.
`
`2022-163, 2022 WL 16754376, at *1 (Fed. Cir. Nov. 8, 2022); In re Apple
`
`Inc., No. 2022-164, 2022 WL 16754153, at *1 (Fed. Cir. Nov. 8, 2022).
`
`The district court’s refusal to stay this litigation is directly contrary to
`
`those rulings.
`
`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
`
`improperly addressed the merits of the case—such as holding a
`
`Markman hearing, issuing claim constructions, and presiding over
`
`imminent discovery disputes—in an inconvenient venue. This Court
`
`has deemed that to be the kind of harm that warrants a stay. See, e.g.,
`
`TracFone Wireless, 848 F. App’x at 901; SK hynix, 835 F. App’x at 601;
`
`In re Google Inc., No. 2015-138, 2015 WL 5294800, at *2 (Fed. Cir. July
`
`16, 2015).
`
`4
`
`

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`Case: 23-120 Document: 5 Page: 12 Filed: 01/31/2023
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`Third, SpaceTime would not suffer any prejudice from a stay.
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`This Court resolves mandamus proceedings quickly, so any delay would
`
`be brief. And SpaceTime can be made whole for any delay with money
`
`damages if it eventually prevails in this case. Moreover, there is no
`
`reason why a brief stay would delay the eventual trial, which is not
`
`scheduled to begin for nearly 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 Austin Division of the Western District of Texas 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 Waco Division.
`
`In sum, the governing factors all point in one direction: This
`
`Court should stay the district-court proceedings so that no additional
`
`substantive proceedings take place in the Waco Division until this
`
`Court determines whether the district court must resolve Apple’s
`
`transfer motion before the case moves forward on the merits.
`
`5
`
`

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`Case: 23-120 Document: 5 Page: 13 Filed: 01/31/2023
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`BACKGROUND
`
`Apple moves to transfer this case to the Austin Division of the
`Western District of Texas, leading to venue discovery
`As explained more fully in Apple’s mandamus petition, SpaceTime
`
`filed the underlying patent-infringement action against Apple in the
`
`Waco Division of the Western District of Texas despite the litigation
`
`having no ties to that division. Pet. 4-6. SpaceTime, a company
`
`incorporated in New York and based in San Francisco with no
`
`connection to the Waco Division (or to the Western District of Texas at
`
`all), accuses Apple’s iPhone, iPad, iPod touch, and Apple Watch devices
`
`of infringing its patents because, SpaceTime alleges, these products
`
`display images of open applications or websites in a three-dimensional
`
`space and allow users to switch between those open applications or
`
`websites. Appx147. Because some of Apple’s relevant witnesses and
`
`evidence are in the Austin Division and no relevant witnesses or
`
`evidence are in the Waco Division, Apple filed a motion to transfer the
`
`case to the Austin Division on July 18, 2022. Pet. 6.
`
`Extensive venue discovery started shortly thereafter, with
`
`SpaceTime taking six depositions, obtaining more than 5,500 pages of
`
`documents, and serving interrogatories. Appx138. The venue record
`
`6
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`

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`Case: 23-120 Document: 5 Page: 14 Filed: 01/31/2023
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`confirms that Apple and SpaceTime have no connections to the Waco
`
`Division. Appx90-91; Appx95-97. Apple has no offices, properties, lease
`
`space, or data centers there, nor any suppliers headquartered there.
`
`Appx109. Moreover, none of the Apple employees involved in the
`
`development of the accused features is, or has ever been, based in the
`
`Waco Division. Appx93-95. And no third parties with relevant
`
`information have been identified there. Appx97.
`
`By contrast, venue discovery revealed that substantial sources of
`
`proof are in the Austin Division. Appx138-139. Three of Apple’s
`
`potential trial witnesses are in Austin, while none are in Waco.
`
`Appx95-96. The remainder of the Apple employees who have worked on
`
`the accused technology are located primarily in California, where Apple
`
`is headquartered. Appx103.
`
`Venue discovery closed on October 10, 2022, and SpaceTime filed
`
`its opposition to transfer on October 24. Pet. 7. Apple’s transfer motion
`
`has been fully briefed since November 7. Pet. 7.
`
`Apple seeks to postpone the Markman hearing until the district
`court resolves transfer
`On November 16, 2022, Apple moved to stay all proceedings until
`
`the district court resolved Apple’s motion for intradistrict transfer.
`
`7
`
`

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`Case: 23-120 Document: 5 Page: 15 Filed: 01/31/2023
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`Appx146. To that end, Apple requested that the Markman hearing,
`
`then scheduled for the next day (November 17), be postponed at least 14
`
`days to allow for full briefing and resolution of the stay motion prior to
`
`any further substantive proceedings, including an order on claim
`
`construction. Appx146. To minimize delay, Apple offered to forgo filing
`
`a reply, so that the district court could hold a hearing on the stay
`
`motion early in the week of November 28. Appx154.
`
`The district court adopted Apple’s proposed schedule, set
`
`SpaceTime’s stay opposition deadline for November 23, scheduled a
`
`hearing on the stay motion for November 29, and reset the Markman
`
`hearing to December 1. Appx183; Appx7.
`
`On November 29, however, the district court sua sponte postponed
`
`both the hearing on the stay motion and the Markman hearing “until
`
`further order of the court.” Appx157-158. The court permitted Apple to
`
`file a reply in support of its stay motion in the meantime, which Apple
`
`did on December 2. Appx159-169.
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`On January 5, 2023, after a month elapsed without further order
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`of the district court setting a date for the postponed stay motion or
`
`8
`
`

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`Case: 23-120 Document: 5 Page: 16 Filed: 01/31/2023
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`Markman hearings, Apple sought further clarification from the court
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`regarding the timeline for those hearings. Appx181-182.
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`The district court then reset the stay motion hearing for February
`
`2, 2023. Appx170. On January 25, the district court again reset the
`
`hearing for January 30, 2023. Appx178.
`
`The district court denies Apple’s motion to stay
`At the hearing on January 30, the district court denied Apple’s
`
`motion to stay the district-court proceedings. Appx237. The district
`
`court ruled that Apple would not be prejudiced by a deferral of the
`
`transfer ruling because it seeks intradistrict rather than interdistrict
`
`transfer. The court did not explain its no-prejudice finding, other than
`
`to speculate that it might retain the case even if it were transferred to
`
`Austin, notwithstanding the Western District of Texas’s governing
`
`rules. Appx215. The district court therefore postponed ruling on
`
`Apple’s transfer motion until after the Markman hearing on February
`
`3. Appx215; Appx221; Appx233; Appx8.1 And it suggested that it
`
`
`1 Apple requested a postponement of this hearing in light of an
`unavoidable scheduling conflict for its lead counsel; the district court
`denied that request. Appx240.
`
`9
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`

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`Case: 23-120 Document: 5 Page: 17 Filed: 01/31/2023
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`might defer a transfer decision until as late as “the pretrial conference,
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`at which time I’ll have from both sides the witness lists.” Appx221.
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`The district court’s denial of a stay means that Apple’s fully
`
`briefed transfer motion will remain unresolved while the district court
`
`requires the parties to proceed with a Markman hearing on February 3,
`
`continue with fact discovery, and prepare to serve final infringement
`
`and invalidity contentions, which are due on February 20. Pet 11;
`
`Appx171.
`
`Fact discovery, which opened on November 14, 2022, is set to close
`
`in June 2023. Appx83-84. Apple and SpaceTime have already served
`
`and responded to first sets of requests for production and
`
`interrogatories, with ongoing requests for supplementation. Appx204.
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`And SpaceTime appears to be preparing to seek the district court’s
`
`intervention regarding an omnibus discovery dispute, as it recently
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`requested to meet and confer. Appx187-196.
`
`On January 31, 2023, Apple filed a petition for a writ of
`
`mandamus directing the district court to promptly rule on Apple’s
`
`pending transfer motion and stay all district-court proceedings on the
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`merits until transfer has been resolved. Dkt. 2-1.
`
`10
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`

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`Case: 23-120 Document: 5 Page: 18 Filed: 01/31/2023
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`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;
`
`(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”). A “substantial case” on the merits suffices where “the
`
`other factors militate in [the] movant’s favor.” Standard Havens, 897
`
`F.2d 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 directly 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 claim
`
`11
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`

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`Case: 23-120 Document: 5 Page: 19 Filed: 01/31/2023
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`construction, fact discovery, and other substantive steps. SpaceTime, in
`
`contrast, will suffer no appreciable harm from a brief 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 decline to rule on a transfer motion until after the
`
`parties proceed with a Markman hearing, undertake fact discovery, and
`
`prepare for final infringement and invalidity contentions, among other
`
`things. Pet. 4. Because the district court clearly abused its discretion
`
`by refusing to address Apple’s transfer motion until the litigation has
`
`significantly progressed, 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 stay denial here is contrary to binding
`
`precedent requiring courts to prioritize transfer motions. Because the
`
`transfer statute is designed “to protect litigants, witnesses and the
`
`12
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`

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`Case: 23-120 Document: 5 Page: 20 Filed: 01/31/2023
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`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). Indeed, this Court recently emphasized that
`
`“precedent entitles parties to have their venue motions prioritized.”
`
`Apple, 52 F.4th at 1362 (collecting authorities).
`
`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.” Google, 2015 WL 5294800, at *1; see also Apple, 52
`
`F.4th at 1362; Apple, 2022 WL 16754376, at *1; Apple, 2022 WL
`
`16754153, at *1; SK hynix, 835 F. App’x at 600-01; TracFone Wireless,
`
`848 F. App’x at 901.
`
`13
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`

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`Case: 23-120 Document: 5 Page: 21 Filed: 01/31/2023
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` Here, absent this Court’s intervention, and despite a fully briefed
`
`transfer motion, the district court will proceed with a Markman hearing
`
`and a claim construction order, “two of the most important and time-
`
`intensive substantive tasks a district court undertakes.” Apple, 979
`
`F.3d at 1338. The parties will then continue to litigate the merits of
`
`this case in an inconvenient forum. See Pet. 28-40 (explaining the
`
`strong case for transfer here). Even if the district court ultimately
`
`grants Apple’s motion to transfer this case, Apple cannot recover the
`
`time and resources that it will have spent litigating in the Waco
`
`Division. See Pet. 25-27.
`
`As explained more fully in Apple’s mandamus petition, the
`
`extensive precedent requiring prioritization of transfer motions applies
`
`with equal force to motions for inter- and intradistrict transfer. Pet. 18-
`
`25. There is no sound basis for distinguishing the two. Since § 1404(a)
`
`was enacted in 1948, it has provided for transfer to another “division”
`
`as well as another “district.” See Act of June 25, 1948, ch. 646, 62 Stat.
`
`937; Ex parte Collett, 337 U.S. 55, 57 (1949). And Congress has not
`
`distinguished between the two forms of transfer in the past seven
`
`decades. Section 1404(a) continues to “refer to both districts and
`
`14
`
`

`

`Case: 23-120 Document: 5 Page: 22 Filed: 01/31/2023
`
`divisions” and “provide for transfer of an entire action … from one
`
`division to another division within the same district.” 14D Charles
`
`Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice
`
`and Procedure § 3809 (3d ed. 2007).
`
`Consistent with this history and the plain text of the statute, the
`
`Fifth Circuit has held that “[t]he § 1404(a) factors apply as much to
`
`transfers between divisions of the same district as to transfers from one
`
`district to another.” Radmax, 720 F.3d at 288. This Court has likewise
`
`applied this Fifth Circuit precedent—and the plain text of § 1404(a)—in
`
`considering a mandamus petition challenging an intradistrict transfer
`
`order within the Western District of Texas. See In re True Chem. Sols.,
`
`LLC, 841 F. App’x 240, 241 (Fed. Cir. 2021) (citing Radmax, 720 F.3d at
`
`289). The district court ignored this precedent and the plain statutory
`
`text in distinguishing between inter- and intradistrict transfer.
`
`The district court’s clear abuse of discretion compels mandamus
`
`review by this Court. At a minimum, it presents a substantial case on
`
`the merits warranting a brief stay while this Court considers Apple’s
`
`petition.
`
`15
`
`

`

`Case: 23-120 Document: 5 Page: 23 Filed: 01/31/2023
`
`II. Absent A Stay, Apple Would Be Irreparably Harmed By
`Participating In Substantive Proceedings In The Waco
`Division.
`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 continue with its substantive review in this case, with claim-
`
`construction briefing completed, a Markman hearing scheduled for this
`
`week, fact discovery underway, and SpaceTime pressing to have the
`
`court resolve discovery disputes. Pet. 11; Appx8. 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.
`
`Allowing this case to march on toward trial in the Waco Division risks
`
`16
`
`

`

`Case: 23-120 Document: 5 Page: 24 Filed: 01/31/2023
`
`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)).
`
`These harms could not be remedied after the fact. The district
`
`court is now undertaking substantive review of this case, and the
`
`“prejudice suffered cannot be put back in 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 “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).
`
`17
`
`

`

`Case: 23-120 Document: 5 Page: 25 Filed: 01/31/2023
`
`III. A Brief Stay Would Not Harm SpaceTime.
`On the other hand, a stay pending resolution of Apple’s
`
`mandamus petition would not “substantially injure” SpaceTime. Nken,
`
`556 U.S. at 426 (quoting Hilton, 481 U.S. at 776). Indeed, without a
`
`stay, SpaceTime (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 (one day after the district court denied a stay), and this Court
`
`has recently addressed similar mandamus petitions in a matter of days
`
`or weeks. See, e.g., TracFone Wireless, 848 F. App’x at 900 (mandamus
`
`granted six days after petition was filed); SK hynix, 835 F. App’x at 600
`
`(mandamus granted ten days after petition was filed). And the trial in
`
`this matter is not scheduled to take place for nearly a year, so there is
`
`no apparent reason why a short stay would delay that date. See
`
`Appx85.
`
`18
`
`

`

`Case: 23-120 Document: 5 Page: 26 Filed: 01/31/2023
`
`Moreover, any momentary disadvantage to SpaceTime from
`
`granting a short stay—unlike the harm to Apple from denying it—
`
`would be fully redressable. Should SpaceTime prevail in this lawsuit, it
`
`can be compensated for any delay with money damages, especially as it
`
`does not seek injunctive relief. See Appx60-61. As this Court has
`
`explained, a stay should not be denied merely because it “delays
`
`realization of … damages” without “diminish[ing]” the ultimate
`
`potential recovery. VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d
`
`1307, 1318 (Fed. Cir. 2014).
`
`IV. The Public Interest Favors A Stay.
`Finally, the public interest favors a stay pending resolution of
`
`Apple’s mandamus petition. Nken, 556 U.S. at 426. The Austin
`
`Division has numerous ties to—and thus a meaningful local interest
`
`in—this case, whereas the Waco Division has none. Pet. 35-36; see Am.
`
`Dredging Co. v. Miller, 510 U.S. 443, 448 (1994) (“There is a local
`
`interest in having localized controversies decided at home.”). A stay
`
`would protect that interest until this Court has a chance to intervene.
`
`A stay would also advance the “public policy of preserving judicial
`
`resources from the risk of reversal.” Weingarten Realt

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