Case: 21-181 Document: 13 Page: 1 Filed: 11/15/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2021-181
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00505-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
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 transfer its case to the United States District
Court for the Northern District of California. Because the
district court’s refusal to transfer amounted to a clear
abuse of discretion, we grant mandamus directing transfer.
Case: 21-181 Document: 13 Page: 2 Filed: 11/15/2021
2 IN RE: APPLE INC.
I
In June 2020, Neonode Smartphone LLC filed suit in
the Waco Division of the Western District of Texas, accus-
ing Apple’s iPhone and iPad products of infringing two pa-
tents concerning the user interface of a mobile handheld
computer.
Apple moved to transfer the case to the Northern Dis-
trict of California pursuant to 28 U.S.C. § 1404(a). Accord-
ing to Apple, that district was a clearly more convenient
forum than the Western District of Texas because nearly
all of Apple’s knowledgeable employees and relevant evi-
dence are located in the Northern District of California, the
events giving rise to this action took place there, and two
key third parties identified in the complaint—Google LLC
and Nuance Communications, Inc.—also reside there. By
contrast, Apple emphasized that there are no significant
ties between this action and the Western District of Texas.
Apple asserted that its Austin-based employees have no
unique knowledge about the accused products and do not
hold the requisite credentials to access the secure servers
hosting some of its relevant evidence. Apple further
pointed out that Neonode is a recently-incorporated non-
practicing entity headquartered in Wyoming, with no of-
fices or employees in Texas.
After analyzing the set of public and private interest
factors that traditionally govern transfer determinations in
the Fifth Circuit, 1 the district court denied Apple’s transfer
1 The public interest factors are: “(1) the administra-
tive difficulties flowing from court congestion; (2) the local
interest in having disputes regarding activities occurring
principally within a particular district decided in that fo-
rum; (3) the familiarity of the forum with the law that will
govern the case; and (4) the avoidance of unnecessary
Case: 21-181 Document: 13 Page: 3 Filed: 11/15/2021
IN RE: APPLE INC. 3
motion, finding that these factors did not favor transfer to
the Northern District of California. In particular, the court
found that the local interest factor slightly favored trans-
fer. But it decided that the court congestion factor weighed
heavily against transfer because the district court could ad-
judicate the case faster than the Northern District of Cali-
fornia. It likewise concluded that the practical problems
factor weighed heavily against transfer in light of Ne-
onode’s co-pending suit accusing Samsung Electronics Co.
Ltd. of infringing the same asserted patents. The court
found that the five remaining factors were neutral. On bal-
ance, the court concluded that Apple had failed to show
that the transferee venue was clearly more convenient.
Apple then filed this petition. We have jurisdiction un-
der 28 U.S.C. §§ 1651 and 1295.
II
Under the well-established standard for obtaining
mandamus relief, a petitioner must: (1) demonstrate that
it has a clear and indisputable right to issuance, (2) show
that it has no other adequate method of attaining the de-
sired relief, and (3) convince the court that the writ is “ap-
propriate under the circumstances.” Cheney v. U.S. Dist.
Ct.,
542 U.S. 367, 380–81 (2004). “In the § 1404(a) transfer
problems of conflict of laws or in the application of foreign
law.” In re Juniper Networks, Inc.,
14 F.4th 1313, 1317
(Fed. Cir. 2021).
The private interest factors are: “(1) the relative ease of
access to sources of proof; (2) the availability of compulsory
process to secure the attendance of non-party witnesses
whose attendance may need to be compelled by court order;
(3) the relative convenience of the two forums for potential
witnesses; and (4) all other practical problems that make
the trial of a case easy, expeditious, and inexpensive.”
Id.
at 1316–17.
Case: 21-181 Document: 13 Page: 4 Filed: 11/15/2021
4 IN RE: APPLE INC.
context, however, the test for mandamus essentially re-
duces to the first factor . . . .” In re Apple Inc.,
979 F.3d
1332, 1336–37 (Fed. Cir. 2020). Thus, the issue here is
whether Apple has shown a clear and indisputable right to
issuance of the writ.
A motion to transfer venue should be granted if the de-
fendant demonstrates that the transferee venue “is clearly
more convenient” than the venue chosen by the plaintiff. In
re Volkswagen of Am., Inc.,
545 F.3d 304, 315 (5th Cir.
2008) (en banc). In assessing whether a defendant has met
this burden, the court weighs the public and private inter-
est factors to compare the relative convenience between the
venues. See In re Juniper Networks, Inc.,
14 F.4th 1313,
1316–17 (Fed. Cir. 2021). We review transfer determina-
tions in cases arising on mandamus from district courts in
the Fifth Circuit for “a ‘clear’ abuse of discretion such that
refusing transfer produced a ‘patently erroneous result.’”
In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir.
2008) (quoting Volkswagen, 545 F.3d at 310). Here, we con-
clude that the district court clearly abused its discretion in
finding that Apple failed to make the requisite showing to
call for transfer of this case to the Northern District of Cal-
ifornia.
First, the district court should have weighed the
sources of proof factor in favor of transfer. “What matters”
under this factor “is the relative access to sources of evi-
dence in the two competing forums”—here, the Western
District of Texas and the Northern District of California.
Juniper, 14 F.4th at 1321. Apple’s sworn declaration and
deposition testimony make clear that essentially all of its
source code and documentary evidence relevant to this ac-
tion are maintained in the Northern District of California.
And neither Neonode nor the district court disputed Ap-
ple’s evidence or otherwise identified sources of proof more
readily available in the Western District of Texas. In fact,
the district court did not identify any sources of proof lo-
cated in the Western District of Texas.
Case: 21-181 Document: 13 Page: 5 Filed: 11/15/2021
IN RE: APPLE INC. 5
The district court provided no sound basis for disre-
garding the Northern District of California as a convenient
forum with respect to sources of proof. See In re Radmax,
Ltd.,
720 F.3d 285, 288 (5th Cir. 2013) (concluding that the
sources of proof factor weighs in favor of transfer when all
of the documents and physical evidence are located in the
transferee forum). The court instead “stressed that the fo-
cus on physical location of electronic documents is out of
touch with modern patent litigation.” Appx4. And it faulted
Apple for failing to “show that the ‘proper credentials’ have
not been or cannot be given to Apple employees in Austin,
Texas for the purpose of this litigation or in general.”
Appx5. The court further suggested that Apple’s coopera-
tion in discovery represents the kind of “need-to-know” ba-
sis for giving Apple’s Austin employees the proper
credentials, so that the electronic information stored in the
Northern District of California can be accessed in the West-
ern District of Texas. Appx5. But that was error. The dis-
trict court should have compared the ease of access in the
Western District of Texas relative to the ease of access in
the Northern District of California. Juniper, 14 F.4th at
1321. Under the proper analysis, we conclude that the
sources of proof factor favors transfer.
Second, the district court should have weighed the com-
pulsory process factor in favor of transfer. “The venue’s
ability to compel testimony through subpoena power
is . . . an important factor in the § 1404(a) calculus,” In re
Acer Am. Corp.,
626 F.3d 1252, 1255 (Fed. Cir. 2010), that
“will weigh heavily in favor of transfer when more third-
party witnesses reside within the transferee venue than re-
side in the transferor venue.” In re Apple, Inc., 581 F. App’x
886, 889 (Fed. Cir. 2014). Here, the district failed to accord
significance to the relative strength of the Northern Dis-
trict of California’s compulsory process powers. Neither
party identifies potential third-party witnesses residing in
the transferor forum, but Apple identified Google and Nu-
ance as key third-party witnesses subject to the subpoena
Case: 21-181 Document: 13 Page: 6 Filed: 11/15/2021
6 IN RE: APPLE INC.
powers of the transferee forum. And it pointed to Neonode’s
complaint in support of both entities’ relevance to this suit.
The complaint specifically identified two third-party soft-
ware applications, developed by Google and Nuance, as a
basis for its infringement allegations against Apple. It is
also undisputed that both Google and Nuance have offices
and employees that are subject to the subpoena powers of
the Northern District of California.
The district court erroneously discounted those third
parties when it faulted Apple for not identifying any spe-
cific employees of those entities. In In re HP Inc.,
826 F. App’x 899 (Fed. Cir. 2020), we said that there was
“no basis to discount” third-party entities that the district
court itself had recognized as having pertinent information
in the transferee venue “just because individual employees
were not identified.”
Id. at 903. Here, there similarly is no
reason to doubt that employees of Google and Nuance in
the Northern District of California have relevant and ma-
terial information as both Neonode and Apple have alleged.
The fact that the plaintiff here elected to file its suit outside
of the venue where the third parties are located does not
negate the benefit of transferring to a forum that has the
ability to compel their testimony. See TS Tech,
551 F.3d at
1320 (“Fifth Circuit precedent clearly forbids treating the
plaintiff’s choice of venue as a distinct factor in the
§ 1404(a) analysis.”). Because there are potential third-
party witnesses subject to the subpoena powers of the
Northern District of California but not the Western District
of Texas, we conclude that the compulsory process factor
weighs strongly in favor of transfer.
Third, the district court should have weighed the rela-
tive convenience of the two competing forums for potential
witnesses strongly in favor of transfer. Apple identified
eight employees who reside in the Northern District of Cal-
ifornia and are likely to testify given their knowledge of the
“research, design, and development,” “marketing, licens-
ing, and financial records,” and “sales and financial
Case: 21-181 Document: 13 Page: 7 Filed: 11/15/2021
IN RE: APPLE INC. 7
information” of the accused features. Appx96, 99–101. It is
also undisputed that Google and Nuance are two third-
party entities in the Northern District of California that
are likely materially relevant to Neonode’s infringement
suit. By contrast, Neonode did not assert that any of its
employees reside in the Western District of Texas. And the
potential non-party witnesses that Neonode identified are
associated with its parent company and either reside in
California or outside of the United States. Because Apple
identified several potential party and non-party witnesses
residing in the Northern District of California, and no po-
tential witnesses appear to reside in the Western District
of Texas, the witness convenience factor weighs strongly in
favor of transfer. In re Google, No. 2021-171,
2021 WL
4592280, at *5 (Fed. Cir. Oct. 6, 2021) (“Google II”).
We have repeatedly held that a district court’s failure
to weigh this factor in favor of transfer constitutes a clear
abuse of discretion “when there are several witnesses lo-
cated in the transferee forum and none in the transferor
forum.” Id.; see, e.g., In re Genentech, Inc.,
566 F.3d 1338,
1345 (Fed. Cir. 2009); Apple, 979 F.3d at 1342; In re Google,
No. 2021-170,
2021 WL 4427899, at *4 (Fed. Cir. Sept. 27,
2021) (“Google I”); In re TracFone Wireless, Inc.,
852 F. App’x 537, 539–40 (Fed. Cir. 2021). Notwithstand-
ing this precedent, the district court gave no weight to the
relative convenience of the transferee forum for the poten-
tial witnesses.
Citing its own prior opinions, the district court weighed
the witness convenience factor as neutral in part because
“the convenience of party witnesses is given little weight,”
and it presumed that “no more than a few parties—and
even fewer third-party witnesses, if any—will testify live
at trial.” Appx8 (citations omitted). But we have repeatedly
“rejected the district court’s reliance on the fact that a
party’s ability to compel the testimony of its employees sup-
ports assigning little or no weight to the convenience and
cost to [party] witnesses.” Google I,
2021 WL 4427899,
Case: 21-181 Document: 13 Page: 8 Filed: 11/15/2021
8 IN RE: APPLE INC.
at *4; see also In re Samsung Elecs. Co.,
2 F.4th 1371, 1379
(Fed. Cir. 2021); In re Hulu, LLC, No. 2021-142,
2021 WL
3278194, at *5 (Fed. Cir. Aug. 2, 2021). We have likewise
“rejected the district court’s categorical assumption that
defendants are likely to call few if any of the proposed party
witnesses . . . that are identified for purposes of supporting
transfer motions.” Juniper, 14 F.4th at 1319 (citations
omitted). The district court also attached comparable
weight to a “competing list of Apple employees located in
WDTX” offered by Neonode “that might testify at trial for
the same aspects of the accused products at a trial.” Appx8.
However, district courts “should assess the relevance and
materiality of the information the witness[es] may pro-
vide.” Genentech,
566 F.3d at 1343. The court failed to do
so here.
Fourth, the district court erred in weighing the practi-
cal problems factor strongly against transfer. “[W]hile we
recognize that judicial economy can serve important ends
in a transfer analysis, we have rejected as a general prop-
osition that the mere co-pendency of infringement suits in
a particular district automatically tips the balance in the
non-movant’s favor.” In re NetScout Sys., Inc.,
No. 2021-173,
2021 WL 4771756, at *5 (Fed. Cir. Oct. 13,
2021) (citations omitted); see also Samsung, 2 F.4th at
1379–80; In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir.
2013). Here, “the district court overstated the concern
about waste of judicial resources and risk of inconsistent
results” in light of Neonode’s other infringement suit in the
Western District of Texas. Samsung, 2 F.4th at 1379. That
suit involves different defendants and different accused
products, and does not similarly involve accusations re-
garding third-party software. Neonode’s separate actions
are therefore likely to result in “significantly different dis-
covery, evidence, proceedings, and trial.” Id. at 1380 (cita-
tion omitted). Thus, any “incremental gains in keeping
[this] case in the Western District of Texas” are insufficient
Case: 21-181 Document: 13 Page: 9 Filed: 11/15/2021
IN RE: APPLE INC. 9
“to justify overriding the inconvenience to the parties and
witnesses.” Id.
Fifth, the district court erred in weighing the court con-
gestion factor heavily against transfer. We have noted that
“the Western District of Texas and the Northern District of
California show no significant differences in caseload or
time-to-trial statistics.” Juniper, 14 F.4th at 1322. The dis-
trict court did not explain how any difference in the pro-
spective time-to-trial was caused by an appreciable
difference in the degree of docket congestion between the
two forums. Nor did the district court point to any reason
in its analysis why a possibly more rapid disposition of this
case in Texas is worthy of important weight.
We have held that when other relevant factors weigh
in favor of transfer or are neutral, “then the speed of the
transferee district court should not alone outweigh all of
those other factors.” Genentech,
566 F.3d at 1347. And
where, as here, the district court has relied only on median
time-to-trial statistics to support its conclusion as to court
congestion, we have characterized this factor as the “most
speculative” of the factors bearing on the transfer decision.
Id. (citation omitted); see also Apple, 979 F.3d at 1344 n.5.
Under the approach taken in Genentech, the district court’s
speculation about what might happen with regard to the
speed of adjudication is plainly insufficient to warrant
keeping this case in the Texas forum given the striking im-
balance favoring transfer based on the convenience factors.
Finally, the district court should have weighed the lo-
cal interest factor strongly in favor of transfer. The court
acknowledged that the Northern District of California had
“a strong local interest in this matter because the research,
development, and operation of the accused technology took
place there, Apple is headquartered there, and all of its
likely witnesses are there.” Appx13. But the court weighed
that factor only slightly in favor of transfer because it found
that Apple also has a “significant presence” in the Western
Case: 21-181 Document: 13 Page: 10 Filed: 11/15/2021
10 IN RE: APPLE INC.
District of Texas, “with over 6,000 employees in the Austin
area and five retail stores located in the [d]istrict.” Appx13.
The problem with the court’s analysis, however, is that
it relies on Apple’s “general presence in the [transferor] fo-
rum, not on the locus of the events that gave rise to the
dispute.” Google II,
2021 WL 4592280, at *5. We have re-
peatedly rejected that a party’s “general presence in a par-
ticular district” can alone “give that district a special
interest in the case.” Id.; see also Juniper, 14 F.4th at 1320;
Apple, 979 F.3d at 1345. Rather, “what is required is that
there be ‘significant connections between a particular
venue and the events that gave rise to a suit.’” Google II,
2021 WL 4592280, at *5 (citation omitted). Because only
the Northern District of California has significant connec-
tions to the events that gave rise to this suit, the local in-
terest factor weighs strongly in favor of transfer.
In sum, the center of gravity of this action is clearly in
the transferee district, not in the Western District of Texas.
Several of the most important factors bearing on the trans-
fer decision strongly favor transfer, and no factor favors
keeping the case in the Western District of Texas. The only
connection that the district court identified between this
case and the Western District of Texas is Apple’s general
presence in the district. But, as we have said before, “the
court’s reliance on that circumstance to justify denying
transfer ‘improperly conflate[s] the requirements for estab-
lishing venue under 28 U.S.C. § 1400(b) and the require-
ments for establishing transfer under § 1404(a).’” Id. at *7
(citation omitted). We therefore grant Google’s petition
seeking transfer of the case to the Northern District of Cal-
ifornia.
Accordingly,
IT IS ORDERED THAT:
The petition is granted. The district court’s July 19,
2021 order is vacated, and the district court is directed to
Case: 21-181 Document: 13 Page: 11 Filed: 11/15/2021
IN RE: APPLE INC. 11
transfer this matter to the United States District Court for
the Northern District of California.
FOR THE COURT
November 15, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s31
