Case: 23-135 Document: 12 Page: 1 Filed: 06/26/2023
`
`Miscellaneous Docket No. 23-135
`
`
`
`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-351-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF
`PETITION FOR WRIT OF MANDAMUS
`
`
`
`Brittany Blueitt Amadi
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`
`Sarah R. Frazier
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`
`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
`
`
`
`
`
`
`
`Miscellaneous Docket No. 23-135
`
`
`
`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-351-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF
`PETITION FOR WRIT OF MANDAMUS
`
`
`
`Brittany Blueitt Amadi
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`
`Sarah R. Frazier
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`
`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: 23-135 Document: 12 Page: 2 Filed: 06/26/2023
`
`TABLE OF CONTENTS
`
`2.
`
`Page
`
`TABLE OF AUTHORITIES ...................................................................... ii
`INTRODUCTION ...................................................................................... 1
`ARGUMENT ............................................................................................. 2
`I.
`The District Court’s Clear Abuse Of Discretion
`Warrants Mandamus Relief. ................................................... 2
`A.
`The district court’s procedural and substantive
`errors constituted a clear abuse of discretion. .............. 2
`1.
`The district court agreed that Lionra violated
`its discovery obligations. ....................................... 3
`The district court clearly abused its discretion
`in finding no prejudice to Apple. ........................... 6
`The district court arbitrarily departed from its
`prior decisions. ...................................................... 8
`B. Absent the procedural error, the district court
`would necessarily have granted transfer. ................... 10
`C. Even accepting Lionra’s improper evidence, the
`district court should have granted transfer. ............... 13
`II. Apple Has No Adequate Alternative Means To Obtain
`The Relief Sought In Its Petition. ......................................... 16
`III. Mandamus Is Appropriate Under The Circumstances. ....... 19
`CONCLUSION ........................................................................................ 21
`CERTIFICATE OF COMPLIANCE
`
`
`3.
`
`i
`
`
`
`Case: 23-135 Document: 12 Page: 3 Filed: 06/26/2023
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Agee v. City of McKinney,
`593 F. App’x 311 (5th Cir. 2014) ........................................................... 7
`In re Apple Inc.,
`52 F.4th 1360 (Fed. Cir. 2022) ............................................................ 17
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ........................................................... 18
`In re Apple Inc.,
`No. 2022-128, 2022 WL 1196768 (Fed. Cir. Apr. 22, 2022) ............... 18
`In re Apple Inc.,
`No. 2022-137, 2022 WL 1676400 (Fed. Cir. May 26, 2022) ............... 18
`In re Apple Inc.,
`No. 2022-163, 2022 WL 16754376 (Fed. Cir. Nov. 8, 2022) ............... 17
`CQ, Inc. v. TXU Min. Co.,
`565 F.3d 268 (5th Cir. 2009) ................................................................. 7
`In re Google LLC,
`58 F.4th 1379 (Fed. Cir. 2023) ............................................................ 20
`In re Google LLC,
`No. 2021-170, 2021 WL 4427899 (Fed. Cir. Sept. 27, 2021) ............ 8, 9
`Hovanec v. Miller,
`331 F.R.D. 624 (W.D. Tex. 2019) .......................................................... 7
`LoganTree LP v. Apple Inc.,
`No. 6:21-cv-00397-ADA, 2022 WL 1491097 (W.D. Tex.
`May 11, 2022) .................................................................................... 8, 9
`In re Microsoft Corp.,
`No. 2023-128, 2023 WL 3861078 (Fed. Cir. June 7, 2023) ................ 18
`
`ii
`
`
`
`Case: 23-135 Document: 12 Page: 4 Filed: 06/26/2023
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ............................................................... 16
`Statutes
`28 U.S.C. § 1404(a) ...................................................................... 10, 12, 16
`Rules and Regulations
`Fed. R. Civ. P. 37(c)(1) ............................................................................... 2
`Other Authorities
`Petition for Writ of Mandamus, In re Apple Inc., No. 2022-
`162, Dkt. 2-1 (Fed. Cir. Sept. 2, 2022) ................................................ 20
`Petition for Writ of Mandamus, In re Apple Inc., No. 2022-
`164, Dkt. 2-1 (Fed. Cir. Sept. 8, 2022) .................................................. 6
`
`
`
`iii
`
`
`
`Case: 23-135 Document: 12 Page: 5 Filed: 06/26/2023
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`INTRODUCTION
`To be clear: the district court found that Lionra (not Apple)
`
`engaged in venue discovery misconduct. Most of Lionra’s opposition is
`
`premised on the notion that it did nothing wrong and that, if anyone
`
`acted improperly, it was Apple. But the district court agreed that
`
`Lionra made an “untimely disclosure” when it refused to tell Apple
`
`during discovery which employees it was going to argue were relevant,
`
`then sprang those names on Apple only after discovery had closed.
`
`Appx6. This was no mere “technical violation,” as Lionra would have it.
`
`Opp. 8. On the contrary, the very evidence Lionra improperly withheld
`
`was decisive in the district court’s decision to deny transfer.
`
`The district court reached that decision only by deeming Lionra’s
`
`error harmless. Lionra barely attempts to defend that ruling, and it
`
`fails to rebut Apple’s demonstration that this was a clear abuse of
`
`discretion. Lionra instead tries to paint this case as raising an ordinary
`
`discovery dispute within the district court’s discretion. But as Apple’s
`
`petition showed, the district court’s reasoning here was outside the
`
`bounds of that discretion. It was procedurally and substantively
`
`flawed. And, if left intact, it will incentivize future plaintiffs to engage
`
`1
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`
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`Case: 23-135 Document: 12 Page: 6 Filed: 06/26/2023
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`in the same sandbagging tactics that Lionra employed here. The Court
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`should grant mandamus and make clear that plaintiffs cannot avoid
`
`meritorious transfer motions by depriving defendants of discovery.
`
`ARGUMENT
`
`I.
`
`The District Court’s Clear Abuse Of Discretion Warrants
`Mandamus Relief.
`A. The district court’s procedural and substantive errors
`constituted a clear abuse of discretion.
`Lionra insists that there was no abuse of discretion because the
`
`district court’s decision was an “ordinary discovery order[].” Opp. 13. It
`
`claims that “[t]he linchpin of Apple’s petition is its assertion that the
`
`District Court erred in not excluding evidence under Rule 37(c)(1).”
`
`Opp. 14. These statements mischaracterize both the district court’s
`
`order and Apple’s arguments. The district court did more than pass on
`
`Apple’s arguments that Lionra failed to disclose evidence in discovery—
`
`it rewarded Lionra’s sandbagging through a flawed harmless-error
`
`analysis that led directly to the denial of Apple’s transfer motion. Pet.
`
`18-27. That is a clear abuse of the “discretion” that Lionra repeatedly
`
`invokes. Opp. 13-15.
`
`2
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`Case: 23-135 Document: 12 Page: 7 Filed: 06/26/2023
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`1. The district court agreed that Lionra violated its
`discovery obligations.
`As part of venue discovery, Apple requested that Lionra disclose
`
`the Texas-based individuals it contended were relevant to transfer and
`
`the bases for such contentions. Pet. 7-8, 19. Lionra did not do so,
`
`claiming attorney-client and work-product privilege. Pet. 20. Then,
`
`Lionra identified several irrelevant Texas-based Apple employees for
`
`the first time in its transfer opposition brief. Pet. 20.
`
`The district court agreed with Apple that Lionra violated its
`
`venue-discovery obligations. Appx5-6. Lionra all but concedes that
`
`“Lionra had possessed th[is] information” before the close of venue
`
`discovery, Opp. 17, yet failed to disclose it until its transfer opposition.
`
`Lionra asserts, however, that, “although the District Court disagreed,
`
`Lionra’s disclosure was not untimely at all, and at the very least, it was
`
`‘substantially justified.’” Opp. 17. But Lionra never argued substantial
`
`justification to the district court, and its attempt to litigate the issue
`
`now is improper. See Appx1-25; Appx181-183; Appx190-201.
`
`Furthermore, Lionra’s claim of substantial justification (like much
`
`of its brief) is based on rewriting the history of the parties’ dispute. In
`
`3
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`Case: 23-135 Document: 12 Page: 8 Filed: 06/26/2023
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`Lionra’s telling, it acted properly, and Apple belatedly disclosed
`
`evidence. See Opp. 15-16. Both suggestions are untrue.
`
`Apple identified the witnesses it believes are relevant in its
`
`transfer motion; it has never changed those designations. But late into
`
`venue discovery, Lionra served a broad request for production that
`
`listed the URLs for several Apple job postings. Appx126-127. Lionra
`
`requested that Apple provide documentation showing the function and
`
`composition of any “department, group, team, or any other
`
`organizational unit” on Apple’s “Texas campuses” that related to these
`
`openings. Appx126.
`
`Lionra’s requested information was entirely irrelevant. As Apple
`
`explained, “the job postings are not relevant to the accused technology
`
`in this case.” Appx127. In agreeing to provide responsive documents,
`
`Apple maintained it was “not conced[ing] [the] relevance of these job
`
`postings to Apple’s motion to transfer.” Appx128. And indeed, Apple
`
`has consistently been clear that the resulting list of employees has
`
`nothing to do with the issues in this litigation. Pet. 9-10; Appx127;
`
`Appx168-169.
`
`4
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`Lionra is therefore incorrect to state that “Apple[] disclos[ed] its
`
`list of relevant witnesses on the day venue discovery closed.” Opp. 17.
`
`What Apple disclosed that day—the day Lionra itself chose—was the
`
`list of irrelevant employees falling within Lionra’s misdirected request.
`
`Apple has never suggested its Austin-based employees are relevant; it
`
`has consistently maintained the opposite. Appx128.
`
`Moreover, the timing of Apple’s response was the result of Lionra’s
`
`own delay in serving the request. Lionra served this request on
`
`November 16, 2022—nearly two months after venue discovery opened.
`
`And it requested a response by December 6—one day before the
`
`scheduled close of venue discovery. Appx340-351; Appx100. The
`
`parties agreed to extend venue discovery by a week, Appx100, in view of
`
`the holiday and the voluminous nature of Lionra’s request. This
`
`timeline was one of Lionra’s making.
`
`In sum, Lionra provides no meaningful response to the district
`
`court’s conclusion that it violated its discovery obligations, Appx5-6, and
`
`Lionra’s newfound attempt to shift the blame to Apple fails.
`
`5
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`2. The district court clearly abused its discretion in
`finding no prejudice to Apple.
`The district court clearly erred in concluding that Lionra’s non-
`
`disclosure did not prejudice Apple. Pet. 21-23. Lionra has no answer,
`
`and instead reiterates its claim that it did nothing wrong. Opp. 16-17 &
`
`n.2. This ignores the district court’s conclusion otherwise. See supra
`
`Part I.A.1.
`
`Lionra next invokes the very dilemma that Apple demonstrated.
`
`See Pet. 11, 24. Lionra points to certain prior cases where Apple sought
`
`to provide rebuttal evidence on reply, in response to new evidence
`
`disclosed in an opposition, and suggests the same option was available
`
`here. Opp. 17-18. But Lionra ignores Apple’s point that the district
`
`court had faulted Apple in those cases for providing that evidence, and
`
`did so as recently as a month before Apple filed its transfer motion in
`
`this case. See Pet. 11, 24; Opp. 17-18, 20.
`
`Instead, Lionra wrongly claims that Apple added new witnesses in
`
`its reply brief in Scramoge II. Opp. 20. That is false. It was Scramoge,
`
`not Apple, that disclosed new witnesses for the first time in its
`
`opposition to Apple’s transfer motions—just as Lionra did here. See In
`
`6
`
`
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`re Apple Inc., No. 2022-164, Dkt. 2-1, at 9-10 (Fed. Cir. Sept. 8, 2022)
`
`(Scramoge II); Pet. 11.
`
`Additionally, Lionra misunderstands that the alternative of a
`
`continuance is part of the prejudice analysis. Opp. 19-20. In evaluating
`
`the harm to Apple, the district court had to consider “the availability of
`
`a continuance to cure [the] prejudice” of non-disclosure. Hovanec v.
`
`Miller, 331 F.R.D. 624, 637 (W.D. Tex. 2019) (citing CQ, Inc. v. TXU
`
`Min. Co., 565 F.3d 268, 280 (5th Cir. 2009)); Appx7; Appx181. Apple
`
`argued that a continuance would not wholly cure the prejudice but
`
`asked, if the district court did grant a continuance, that Apple be
`
`allowed to supplement the record. Appx186.
`
`Lionra suggests that no continuance was available given the order
`
`in which Apple filed its motion to strike and its transfer reply. Opp. 20.
`
`But Apple filed both on the same day. Appx166; Appx176. Lionra
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`invokes Agee v. City of McKinney, 593 F. App’x 311, 314 (5th Cir. 2014),
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`a case evaluating “excusable neglect” “after a deadline has expired.”
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`Id.; Opp. 20. But no deadline had expired when Apple moved to strike.
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`Lionra then underscores Apple’s point on prejudice, noting Apple’s
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`argument to the district court that striking the late-disclosed witnesses
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`7
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`was appropriate given their lack of probative value. Opp. 19. Lionra
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`suggests this is somehow inconsistent with Apple’s prejudice argument
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`on mandamus. There is no inconsistency. The employees Lionra
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`identified should not have been important because they are not
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`relevant. Appx184. But when the district court chose to give them
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`decisive weight in the transfer analysis, the result was severe prejudice
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`to Apple. Pet. 2, 17.
`
`3. The district court arbitrarily departed from its
`prior decisions.
`The district court also clearly abused its discretion in arbitrarily
`
`departing from its prior decisions, both in placing Apple in a double
`
`bind, see supra 6, and in embracing LinkedIn evidence that both the
`
`district court and this Court have rejected as speculative. Pet. 24-27.
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`The district court’s ruling cannot be reconciled with those cases. Pet.
`
`26-27; see In re Google LLC, No. 2021-170, 2021 WL 4427899, at *7
`
`(Fed. Cir. Sept. 27, 2021); LoganTree LP v. Apple Inc., No. 6:21-cv-
`
`00397-ADA, 2022 WL 1491097, at *7 (W.D. Tex. May 11, 2022).
`
`Lionra also fails to distinguish those cases. Opp. 21-22. Lionra
`
`asserts that, unlike the plaintiffs in those cases, “Lionra supplied
`
`detailed information showing the Apple witnesses’ relevant knowledge.”
`
`8
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`Case: 23-135 Document: 12 Page: 13 Filed: 06/26/2023
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`Opp. 21. But the only information Lionra cites consists of brief
`
`quotations from the LinkedIn profiles themselves. Id.; see also
`
`Appx110. That is precisely the approach this Court and the district
`
`court rejected in Google and LoganTree. Pet. 8-10. In Google, Sonos
`
`invoked an employee’s LinkedIn title, supplemented by Sonos’s
`
`conclusory supposition that the employee therefore had certain kinds of
`
`relevant information. Google, 2021 WL 4427899, at *7. In LoganTree,
`
`the district court rejected reliance on LinkedIn profiles because
`
`“articulating the relevance of a party’s personnel to a particular case—
`
`especially personnel from a company the size of Apple—based only on
`
`vague LinkedIn profiles is a challenge,” and “far too speculative.”
`
`LoganTree, 2022 WL 1491097, at *7. Lionra has committed materially
`
`the same error. It offers nothing more than snippets from Apple
`
`employees’ LinkedIn profiles, paired with Lionra’s say-so to infer any
`
`connection to the accused technology. Pet. 8-10.
`
`There is nothing to explain the district court’s about-face in failing
`
`to apply the holding of those prior cases here. And, just like the district
`
`court, Lionra fails to draw a meaningful distinction between those cases
`
`and Lionra’s tactics here.
`
`9
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`Case: 23-135 Document: 12 Page: 14 Filed: 06/26/2023
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`B. Absent the procedural error, the district court would
`necessarily have granted transfer.
`Lionra’s opposition confirms (at 9) that the only evidence the
`
`district court relied on to deny transfer were the Austin-based Apple
`
`employees that should not have been considered at all. Without those
`
`five employees, there is nothing to support keeping this case in the
`
`Western District of Texas—the § 1404(a) factors would have all pointed
`
`clearly toward transfer on the district court’s own reasoning. Pet. 27-
`
`29.
`
`Lionra fails to meaningfully counter this argument. It instead
`
`draws an irrelevant distinction between the three late-disclosed
`
`individuals who were the subject of Apple’s motion to strike, and the
`
`two individuals Lionra cherry-picked from the materials Apple
`
`produced and for whom it provided LinkedIn profiles. See Opp. 22. But
`
`Lionra misses the mark. These five individuals constituted the district
`
`court’s only basis for denying transfer. Appx15. And all five were the
`
`subject of the district court’s overlapping procedural errors. Lionra’s
`
`distinction fails in any event, because striking the three late-disclosed
`
`individuals leaves two Texas-based witnesses against substantially
`
`more California-based witnesses. See Pet. 11-12, 33; infra 12 n.1.
`
`10
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`Case: 23-135 Document: 12 Page: 15 Filed: 06/26/2023
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`Apple’s interrogatory required Lionra to disclose the names of all
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`Texas-based witnesses that Lionra contended were relevant to transfer.
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`Lionra failed to do this during venue discovery, belatedly naming nine
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`Austin-based Apple employees in its transfer opposition—three that it
`
`found via LinkedIn, and six that it culled from a list of 83 irrelevant
`
`employees that Apple produced in response to Lionra’s request for
`
`information regarding certain job descriptions. Pet. 8-10. The district
`
`court credited five of these individuals—the ones for whom Lionra
`
`provided LinkedIn profiles (versus just identifying them by name).
`
`Apple moved to strike the three employees whom Lionra
`
`independently introduced. Appx182. But Apple objected to all nine
`
`employees as irrelevant and objected to Lionra’s reliance on these
`
`individuals’ LinkedIn profiles as speculative. Appx169-170. The
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`district court agreed that Lionra should have identified the Apple
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`employees it intended to rely on when it responded to Apple’s
`
`interrogatory seeking that information. Appx6. But the district court
`
`found that Apple was not prejudiced. In doing so, it relied in part on its
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`rejection of Apple’s argument about “the lack of specificity in LinkedIn
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`profiles.” Appx7. As explained above (Part I.A.3), that conclusion was
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`11
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`Case: 23-135 Document: 12 Page: 16 Filed: 06/26/2023
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`an arbitrary departure from precedent. And it infected the district
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`court’s treatment of all five Apple employees whom it improperly
`
`deemed relevant to this case. See supra 8-9.
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`Absent the district court’s flawed prejudice analysis, therefore,
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`none of the five Austin-based employees could have been deemed
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`relevant to transfer. And without those five employees, the § 1404(a)
`
`factors would weigh heavily in favor of transfer. First, with at least
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`three undisputedly relevant witnesses based in the Northern District of
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`California and none based in Austin, the witness-convenience factor
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`would weigh strongly in favor of transfer. Pet. 28.1 The sources-of-
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`proof factor would also weigh heavily in favor of transfer, since the
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`district court’s only basis for finding relevant evidence in Austin was
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`these same five late-disclosed employees. See Appx18. And the local-
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`interest factor would also favor transfer, since the district court found
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`this factor neutral only by including the Austin-based employees in its
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`assessment of where the accused technology was developed. Appx23.
`
`
`1 Even striking just the three Austin-based employees identified by
`LinkedIn would tip the analysis in favor of transfer. Contra Opp. 13
`n.1. There is no basis to count the two Austin-based employees Lionra
`cherrypicked from a list that included 50 similarly situated California-
`based employees. Pet. 6-7, 33.
`
`12
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`Without Lionra’s late-disclosed and insufficient evidence, the case
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`for transfer would be clear—four factors would favor transfer and no
`
`factors would weigh against transfer. Pet. 29. Because the district
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`court clearly abused its discretion in considering that evidence,
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`mandamus is warranted.
`
`C. Even accepting Lionra’s improper evidence, the
`district court should have granted transfer.
`Apple demonstrated that, even accounting for the five Texas-based
`
`employees that the district court improperly credited, it was a clear
`
`abuse of discretion to deny transfer. Pet. 30-39. Lionra criticizes this
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`showing as “a rehash of [Apple’s] transfer motion,” Opp. 23, but that is
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`the point: Apple’s transfer arguments were based on precedent and the
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`evidentiary record. Lionra’s arguments, like the district court’s
`
`decision, are grounded in speculation.
`
`Regarding the crucial witness-convenience factor, Lionra fails to
`
`rehabilitate the district court’s flawed reasoning. The accused
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`functionality in this case is provided by Qualcomm chipsets. Pet. 36-37;
`
`Appx115. The Apple engineer who “lead[s] the team responsible for
`
`managing and integrating [these] Qualcomm chipsets” provided a sworn
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`declaration confirming not only that he is in Cupertino, but that his
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`13
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`Case: 23-135 Document: 12 Page: 18 Filed: 06/26/2023
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`team members are in Northern or Southern California and that, “based
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`on [his] experience” leading this team, no one in Texas works on these
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`chipsets. Appx88. Apple’s IP transactions and product marketing
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`experts provided similar sworn statements. Pet. 31-33; Appx92-93;
`
`Appx95-96. Yet Lionra insists that “the declarants could still be
`
`unaware of relevant witnesses and activity in [Apple]’s sprawling
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`Austin campus.” Opp. 24. There is no basis for speculating that the
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`employees responsible for managing the relevant operations would
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`somehow be unaware of a team member knowledgeable enough to be a
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`potential witness in this litigation. Lionra likewise faults Apple’s
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`declarants for “fail[ing] to speak with anyone in Texas.” Opp. 24. But
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`the declarations make clear why they didn’t: there was no one there to
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`speak to about this case.
`
`Lionra similarly fails to rebut Apple’s showing that the district
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`court plainly erred in crediting two of Apple’s Austin-based employees
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`as relevant witnesses while simultaneously discounting scores of
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`similarly situated California-based employees. Apple’s petition
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`demonstrated that the district court had the same level of detail about
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`the California-based employees’ supposed relevance as it did about the
`
`14
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`Case: 23-135 Document: 12 Page: 19 Filed: 06/26/2023
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`Texas-based employees, but the district court inexplicably credited only
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`the Texas individuals. Pet. 33. Lionra fails to show otherwise. The
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`only “detailed explanation[],” Opp. 25, Lionra provided about the two
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`Texas-based employees was copies of (and quotes from) their LinkedIn
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`profiles. See Pet. 31-32; Appx110. In other words, the district court
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`relied on the Texas employees’ job descriptions to deem them relevant,
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`but refused to do the same for the California employees. See Pet. 9-10,
`
`33.2
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`Lionra’s remaining arguments simply underscore that the district
`
`court’s improper reliance on the five Texas-based witnesses was decisive
`
`in its transfer analysis. Pet. 21-22. Lionra acknowledges that the
`
`district court’s miscounting of witnesses drove its decision on sources of
`
`proof. Opp. 25. And Lionra reiterates the district court’s improper
`
`reliance on irrelevant Texas-based employees in defending the local-
`
`interest analysis. Opp. 26. Finally, Lionra has no response to Apple’s
`
`showing that the district court’s minimization of the compulsory-process
`
`
`2 Lionra also faults Apple for not making “a specific showing of
`relevance” for the California-based employees, Opp. 24, but this misses
`the point: Apple does not believe any of the employees on the list in
`question are relevant. See Appx128; supra 4-5. But if any of them are
`considered relevant, all of them should be.
`
`15
`
`
`
`Case: 23-135 Document: 12 Page: 20 Filed: 06/26/2023
`
`factor risks losing the ability to subpoena critical Qualcomm witnesses
`
`for trial. Pet. 37.
`
`In sum, this case has no connection to the Western District of
`
`Texas. Because the witnesses, evidence, third parties, and local interest
`
`are overwhelmingly concentrated in the Northern District of California,
`
`the district court should have weighed the § 1404(a) factors strongly in
`
`favor of transfer.
`
`II. Apple Has No Adequate Alternative Means To Obtain The
`Relief Sought In Its Petition.
`Lionra’s position on the “no other adequate means” prong of the
`
`mandamus standard similarly misapprehends what Apple is seeking
`
`from this Court. The issue is not whether “Apple can adequately defend
`
`against claims of patent infringement in the Western District of Texas,”
`
`Opp. 27-28. The issue is whether Apple has any other viable way to
`
`challenge the district court’s denial of transfer under § 1404(a). See,
`
`e.g., In re Volkswagen of Am., Inc., 545 F.3d 304, 318-19 (5th Cir. 2008)
`
`(en banc) (Volkswagen II) (explaining why this factor is met in § 1404(a)
`
`cases because “an appeal will provide no remedy for a patently
`
`erroneous failure to transfer venue”). This Court has held repeatedly
`
`16
`
`
`
`Case: 23-135 Document: 12 Page: 21 Filed: 06/26/2023
`
`that this factor is met in cases like this one, see Pet. 39-41, and Lionra
`
`offers no reason why this case is any different.
`
`Lionra notes that Apple has continued to participate in the district
`
`court litigation without seeking a stay pending mandamus review.
`
`Opp. 28. But unlike the cases Lionra identifies, this case is not about
`
`timing; it is about the merits of Apple’s transfer motion. In certain
`
`prior cases, the district court was pressing ahead with the merits “while
`
`Apple’s [transfer] motion lingered unnecessarily on the docket.” In re
`
`Apple Inc., No. 2022-163, 2022 WL 16754376, at *1 (Fed. Cir. Nov. 8,
`
`2022) (granting mandamus). As this Court held, “decision of a transfer
`
`motion must proceed expeditiously as the first order of business.” In re
`
`Apple Inc., 52 F.4th 1360, 1363 (Fed. Cir. 2022) (granting mandamus in
`
`case number 2022-162, cited by Lionra). A stay was therefore necessary
`
`to preserve Apple’s right to have its transfer motion prioritized. See id.
`
`(directing district court to stay substantive proceedings “until after
`
`consideration of Apple’s motion for transfer”).
`
`Here, in contrast, the district court has resolved Apple’s transfer
`
`motion. Apple is challenging the outcome of that ruling. Apple is aware
`
`of no authority suggesting that it must seek a stay in these
`
`17
`
`
`
`Case: 23-135 Document: 12 Page: 22 Filed: 06/26/2023
`
`circumstances. On the contrary, this Court has repeatedly granted
`
`mandamus and ordered transfer when Apple has not sought a stay in
`
`the district court. See, e.g., In re Apple Inc., No. 2022-137, 2022 WL
`
`1676400, at *3 (Fed. Cir. May 26, 2022); In re Apple Inc., No. 2022-128,
`
`2022 WL 1196768, at *5 (Fed. Cir. Apr. 22, 2022); In re Apple Inc., 979
`
`F.3d 1332, 1347 (Fed. Cir. 2020).
`
`Lionra’s charge of “delay” (Opp. 28) is similarly misplaced. Lionra
`
`again points to cases challenging the timing of the district court’s
`
`consideration of transfer. In those circumstances, it was necessary to
`
`seek immediate intervention to prevent the district court from
`
`continuing to prioritize the merits of the litigation over resolution of
`
`transfer. Here, this extreme level of urgency is not present.
`
`Nonetheless, Apple expeditiously sought this Court’s review, filing its
`
`mandamus petition a mere 36 days after the transfer ruling. See
`
`Appx25 (transfer denied May 9); Dkt. 2-1 at 54 (petition filed June 14).
`
`This Court has refused to find improper delay even when a party waits
`
`twice that long to seek mandamus. See In re Microsoft Corp., No. 2023-
`
`128, 2023 WL 3861078, at *1 n.* (Fed. Cir. June 7, 2023) (granting
`
`mandamus where petitioner “allowed 69 days to pass between the
`
`18
`
`
`
`Case: 23-135 Document: 12 Page: 23 Filed: 06/26/2023
`
`district court’s transfer decision and the filing of [its] mandamus
`
`petition”). Apple cannot be charged with improper delay here.
`
`III. Mandamus Is Appropriate Under The Circumstances.
`Lionra’s brief concludes with a paradox. Lionra acknowledges
`
`that Apple “holds all the cards” and thus “does not need Lionra to tell
`
`Apple where Apple employees are located.” Opp. 30. Yet, at the same
`
`time, Lionra insists that Apple does not have enough information to
`
`identify which Apple employees may be relevant to a particular case—
`
`and professes bewilderment at how the Apple team members
`
`responsible for the accused technology could possibly have come up with
`
`the names and locations of the people with whom they work on a daily
`
`basis. Opp. 29-30.
`
`This is the way venue disputes now play out in the Western
`
`District of Texas. The defendant, which knows the most about its own
`
`accused products, identifies the people knowledgeable about those
`
`products or the relevant features. The plaintiff, not pleased with the
`
`results, then scours the Internet for different employees of the
`
`defendant and insists that they must be relevant, usually based on
`
`some vague connection between their job title and the general
`
`19
`
`
`
`Case: 23-135 Document: 12 Page: 24 Filed: 06/26/2023
`
`technological area at issue. See supra 11. Then the plaintiff accuses
`
`the defendant of hiding these supposed “witnesses.” See In re Google
`
`LLC, 58 F.4th 1379, 1384 (Fed. Cir. 2023) (rejecting district court’s
`
`criticism of defendant for failing to address irrelevant Texas-based
`
`employees identified by plaintiff). If the plaintiff is successful in
`
`blocking transfer, the odds are quite low that it will ever even seek to
`
`depose these allegedly important witnesses—let alone call them at trial.
`
`Instead, experience teaches that defendants’ predictions are most likely
`
`to match reality. See In re Apple Inc., No. 2022-162, Dkt. 2-1, at 24-28
`
`(Fed. Cir. Sept. 2, 2022) (demonstrating reliability of Apple’s transfer-
`
`stage predictions).
`
`This state of play is bad enough, as it wastes substantial resources
`
`and frequently leads to cases being litigated in a forum that has no
`
`connection to the subject matter of the litigation. But Lionra wants to
`
`make it even worse. It wants to prevent defendants from learning
`
`through venue discovery which of their employees will be the target of
`
`plaintiffs’ search tactics, and deprive defendants of the ability to offer
`
`evidence showing that those employees in fact have no relevant
`
`information. If the district court’s reasoning is left undisturbed, there is
`
`20
`
`
`
`Case: 23-135 Document: 12 Page: 25 Filed: 06/26/2023
`
`nothing to stop other plaintiffs from following Lionra’s roadmap. See
`
`Pet. 41-42. This Court should grant mandamus to ensure that venue
`
`discovery does not become a one-way street and to reinforce that
`
`transfer must be decided on the relevant facts.
`
`CONCLUSION
`The Court should grant Apple’s petition and direct that this case
`
`be transferred to the Northern District of California.
`
`
`
`June 26, 2023
`
`Brittany Blueitt Amadi
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`
`Sarah R. Frazier
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`60
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