Case: 24-111 Document: 18 Page: 1 Filed: 03/18/2024
`
`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In Re APPLE INC.,
`Petitioner
`______________________
`
`2024-111
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 1:23-
`cv-00324-ADA, Judge Alan D. Albright.
`______________________
`
`ON PETITION
`______________________
`
`Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
`Judges.
`
`MOORE, Chief Judge.
`
`O R D E R
` Apple Inc. petitions for a writ of mandamus to direct
`the United States District Court for the Western District of
`Texas to transfer this patent infringement case to the
`United States District Court for the Northern District of
`California. Carbyne Biometrics, LLC opposes. For the fol-
`lowing reasons, we deny the petition.
`
`Carbyne filed suit against Apple in the Austin Division
`of the Western District of Texas, asserting six patents:
`
`
`
`
`
`

`

`Case: 24-111 Document: 18 Page: 2 Filed: 03/18/2024
`
`2
`
`
`
`IN RE APPLE INC.
`
`three “Authentication Patents”1 asserted against Apple de-
`vices utilizing “Secure Enclave” and three “Fraud Reduc-
`tion Patents”2 asserted generally against Apple devices
`using the Apple Cash platform.
`In July 2023, Apple moved pursuant to 28 U.S.C.
`§ 1404(a) to transfer the case to the Northern District of
`California. That motion was fully briefed in November
`2023. On December 12, 2023, the district court announced
`that it was going to deny the motion and that a written de-
`cision would be forthcoming. See Dkt. No. 69. On January
`31, 2024, having received no written decision, Apple filed
`this mandamus petition asking to direct the district court
`to stay proceedings until the written decision was issued or
`to transfer the case to the Northern District of California.
`On February 6, 2024, this court issued an order directing a
`response. ECF No. 6.
`On February 12, 2024, the district court issued its writ-
`ten decision denying transfer. It began by finding that Car-
`byne’s infringement contentions implicate hardware and
`server-side aspects of the accused products. SAppx3. It
`then analyzed the traditional transfer factors, finding that
`the willing witness factor weighed against transfer based
`largely on five Apple employees in Austin knowledgeable
`about those aspects of the accused products. It also found
`that the compulsory process factor slightly weighed against
`transfer. It weighed the remaining factors as neutral. On
`balance, the court concluded that Apple had failed to
`demonstrate that the Northern District of California was
`clearly more convenient and therefore denied the transfer
`motion.
`
`
`1 U.S. Patent Nos. 10,929,512; 11,475,105; and
`11,514,138.
`2 U.S. Patent Nos. 9,972,010; 10,713,656; and
`11,526,886.
`
`

`

`Case: 24-111 Document: 18 Page: 3 Filed: 03/18/2024
`
`IN RE APPLE INC.
`
` 3
`
`Mandamus is “reserved for extraordinary situations,”
`Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
`271, 289 (1988) (citation omitted). To obtain a writ of man-
`damus, a petitioner must show that: (1) it has a clear and
`indisputable right to relief; (2) it does not have any other
`adequate method of obtaining relief; and (3) the “writ is ap-
`propriate under the circumstances.” Cheney v. U.S. Dist.
`Ct. for D.C., 542 U.S. 367, 380–81 (2004) (citation omitted).
`When evaluating transfer decisions under 28 U.S.C.
`§ 1404(a), we generally apply the law of the regional circuit
`in which the district court sits, here the United States
`Court of Appeals for the Fifth Circuit. In re TS Tech USA
`Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Applying Fifth
`Circuit law, we may grant mandamus only for “a clear
`abuse of discretion such that refusing transfer produced a
`patently erroneous result.” Id. (cleaned up). Apple’s peti-
`tion fails to make that showing here.3
`After considering the transfer factors, the district court
`concluded that Apple failed to establish good cause for
`transfer under the governing Fifth Circuit standards. It
`found that Apple maintains significant relevant operations
`in Austin, where some of the accused products are manu-
`factured and were developed; the cost of attending trial in
`Austin would be less for the inventor residing in New York;
`sources of proof were created and maintained in both fo-
`rums; third-party employees named in the complaint and
`identified as potential witnesses also reside in Austin; and
`Apple failed to identify any specific third-party individuals
`in Northern California who were unwilling to testify. Ap-
`ple has not provided sufficiently compelling reasons to con-
`clude that the district court clearly abused its discretion in
`making these fact-specific determinations, which plausibly
`
`
`
`In light of the written transfer decision, Apple’s re-
`3
`quest for a stay pending that decision is moot.
`
`

`

`Case: 24-111 Document: 18 Page: 4 Filed: 03/18/2024
`
`4
`
`
`
`IN RE APPLE INC.
`
`support the district court’s denial of Apple’s transfer mo-
`tion.
`The parties primarily dispute the willing witness fac-
`tor, which largely turns on the district court’s finding that
`the accused products’ hardware and server-side functional-
`ity are potentially relevant to the infringement issues. Ap-
`ple attempted to persuade the trial court that its employees
`in Austin do not possess relevant and material information
`because this case is limited to just the software features of
`the products. But the district court, after considering the
`scope of the asserted claims and information in possession
`of these Apple employees, reached a contrary conclusion.
`Mindful of the deferential standard of review on manda-
`mus and that fact-intensive matters are principally en-
`trusted to the district court, see In re Vistaprint Ltd., 628
`F.3d 1342, 1346 (Fed. Cir. 2010), we are not prepared to
`say that the district court’s assessment on this factor was
`so clearly wrong that it produced a patently erroneous re-
`sult.4
`Accordingly,
`
`
`
`
`
`
`4 Apple also argues that it identified additional un-
`named team members in the Northern District, which were
`not counted. But we are not prepared to say that the dis-
`trict court clearly erred in refusing to credit these unnamed
`team members when presented with little information as
`to what, if any, relevant and material information they
`may possess.
`
`

`

`Case: 24-111 Document: 18 Page: 5 Filed: 03/18/2024
`
`IN RE APPLE INC.
`
` 5
`
`
`
`IT IS ORDERED THAT:
`The petition is denied.
`
`
`
`
`
`
`
`March 18, 2024
` Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`FOR THE COURT
`
`
`
`
`
`
`
`
`
`
`
`