CORRECTED: OCTOBER 1, 2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2021-187
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:21-
cv-00926-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Before DYK, PROST, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
Apple Inc. petitions for a writ of mandamus directing
the United States District Court for the Western District of
Texas to vacate its order transferring this case from the
Austin Division of the Western District of Texas to the
Waco Division and to stay that order pending disposition of
the petition. Because the district court cites no statutory
authority for its re-transfer and because Austin remains
2 IN RE: APPLE INC.
the more convenient forum, we grant the petition and di-
rect the district court to vacate its order.
I
Fintiv, Inc. filed the underlying patent-infringement
suit against Apple in the Waco Division of the Western Dis-
trict of Texas in December 2018. In September 2019, the
district court judge granted-in-part Apple’s motion to
transfer venue of the action to the Austin Division of the
Western District of Texas, where the same judge continued
to preside over the case. Although the district court denied
transfer to Apple’s preferred destination in Northern Cali-
fornia, the district court agreed with Apple that the Austin
Division of the Western District of Texas was, at the time,
clearly more convenient for trial.
The district court scheduled the trial to begin in Austin
on October 4, 2021. But on September 8, 2021, one month
before trial, the district court ordered the case re-trans-
ferred back to Waco. In its order, the district court ex-
plained only that “[j]ury trials in the Austin courthouse
ha[ve] largely been suspended” due to the COVID-19 pan-
demic, that “it remains uncertain whether the Austin
courthouse will be open for jury trial in the foreseeable fu-
ture,” and that such intervening events “frustrated the
original purpose of transferring this action to the Austin
Division.” Order at 1–2, Fintiv, Inc. v. Apple Inc., 6:21-cv-
00926-ADA (W.D. Tex. Sept. 8, 2021), ECF No. 386 (“Re-
Transfer Order”).
Apple now petitions this court for a writ of mandamus
directing the district court to vacate the re-transfer order
and to stay that order pending disposition of the petition.
Fintiv opposes both requests. We have jurisdiction under
28 U.S.C. §§ 1651 and 1295.
II
Our review here is governed by Fifth Circuit law. See
In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir.
IN RE: APPLE INC. 3
2008). When a writ of mandamus is sought, we review a
decision to transfer for a clear abuse of discretion. See In re
Volkswagen of Am., Inc.,
545 F.3d 304, 310 (5th Cir. 2008)
(en banc).
In In re Intel Corp., we explained that the only author-
ity for an intra-district re-transfer without full consent of
the parties is
28 U.S.C. § 1404(a). 841 F. App’x 192, 193–95
(Fed. Cir. 2020). Under § 1404(a), a district court “should
not re-transfer except under the most impelling and unu-
sual circumstances,” such as unanticipated “post-transfer
events [that] frustrate the original purpose for transfer.” In
re Cragar Indus., Inc.,
706 F.2d 503, 505 (5th Cir. 1983)
(cleaned up). Further, a re-transfer analysis should be
“based on the traditional factors bearing on a § 1404(a)
analysis” and “should take into account the reasons of con-
venience that caused the earlier transfer.” Intel, 841 F.
App’x at 195.
Here, the district court inexplicably failed to perform
that analysis, giving “the parties and reviewing courts no
way of understanding how the court reached its conclusion
and providing no assurance that it was the result of consci-
entious legal analysis.” In re Lloyd’s Reg. N. Am., Inc.,
780 F.3d 283, 291 (5th Cir. 2015). The district court artic-
ulated no authority in its order to re-transfer, explaining
only that “it remains uncertain whether the Austin court-
house will be open for jury trial in the foreseeable future.”
Re-Transfer Order at 1. Not only is this explanation mini-
mal, but it is also not supported by any analysis of the tra-
ditional § 1404(a) factors. Nor is there any indication that
the Austin courthouse is currently closed for trial. The dis-
trict court even acknowledged that some civil trials are pro-
ceeding in Austin and that there is a possibility of “being
able to use a courtroom in Austin” and “mov[ing] forward
with [the trial] in Austin.” Appx175–77.
Fintiv suggests that its position statement before the
district court sufficiently explains the district court’s
4 IN RE: APPLE INC.
ruling. But “[a]n explanation must be generated by the
court, not inferred by the appellate court from the submis-
sions of the parties,” and a “[c]ontrary rule would require
us to guess the basis for the decision without guidance, es-
sentially reducing us to the role of replacing the district
court’s discretion with our own.” Lloyd’s Reg., 780 F.3d at
290–91.
To be sure, the district court gestures to our decision in
Intel by stating that “the intervening COVID-19 pandemic
has frustrated the original purpose of transferring this ac-
tion to the Austin Division.” Re-Transfer Order at 1–2. But
the purpose of transfer under § 1404(a) is “for the conven-
ience of parties and witnesses” and the “interest of justice.”
28 U.S.C. § 1404(a). In originally granting Apple’s motion
to transfer venue to the Austin Division, the district court
performed the required analysis and found that Austin was
clearly the more convenient venue. Order Denying Defend-
ant Apple’s Motion to Transfer Venue at 4–17, Fintiv, Inc.
v. Apple Inc., 6:21-cv-00926-ADA (W.D. Tex. Sept. 10,
2019), ECF No. 73. It relied in large part on the fact that
there are no sources of proof in the Waco Division and that
the parties and a relevant third party have a significant
presence in Austin, but not in Waco.
Id. at 17. We approved
this reasoning in our order denying Apple’s previous peti-
tion for mandamus seeking transfer to the Northern Dis-
trict of California. See In re Apple Inc., No. 2020-104 (Fed.
Cir. Dec. 20, 2019).
On the record before us, it is far from clear that the
intervening COVID-19 pandemic has frustrated any of the
original purposes for transferring this case from Waco to
Austin under § 1404(a). Relevant witnesses and evidence
remain in Austin, and the parties continue to maintain
their presences there. Pet. Opening Br. at 20. Furthermore,
the parties have prepared for trial in Austin. And Apple’s
employee witnesses will all be traveling from California,
from which there are no direct flights to Waco. Pet. Reply
at 9. So far as the briefing before this court reflects, the
IN RE: APPLE INC. 5
only factor that may have changed as a result of the
COVID-19 pandemic is the public interest “court-conges-
tion” factor—which seems, at most, to slightly weigh in fa-
vor of re-transfer. But as we have said previously, this
factor is the “most speculative” of the factors bearing on
transfer and “should not alone outweigh all . . . other fac-
tors.” In re Genentech, Inc.,
566 F.3d 1338, 1347 (Fed. Cir.
2009). This is particularly so here, given the district court’s
acknowledgement that there is a possibility of “mov[ing]
forward with [the trial] in Austin.” Also, court congestion
was not a factor relied on by the district court as a basis for
transferring the case to Austin.
Under these circumstances, where the district court
has failed to perform the requisite § 1404(a) analysis and
where Austin remains the more convenient forum, the dis-
trict court’s decision to re-transfer this case back to the
Waco Division amounts to a clear abuse of discretion.
Accordingly,
IT IS ORDERED THAT:
(1) The petition for a writ of mandamus is granted. The
district court’s September 8, 2021 order re-transferring the
trial from Austin to Waco is vacated and we remand with
instructions that this action shall proceed in the Austin Di-
vision of the United States District Court for the Western
District of Texas.
(2) The motion to stay is denied as moot.
FOR THE COURT
October 1, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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