Federal Circuit disposition — 2018-151

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2018-151
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 2:17-cv-00516-JRG, Judge J. Rodney Gilstrap.
______________________
ON PETITION
______________________
Before P ROST , Chief Judge, N EWMAN and L OURIE, Circuit
Judges.
L OURIE, Circuit Judge.
O R D E R
Apple Inc. petitions for a writ of mandamus directing
the United States District Court for the Eastern District
of Texas to transfer this case for the convenience of the
parties to the United States District Court for the North-
ern District of California under 28 U.S.C. § 1404(a). AGIS
Software Development LLC (“AGIS Software”) opposes
the petition.
Case: 18-151 Document: 20 Page: 1 Filed: 10/16/2018

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IN RE: APPLE INC. 2
This petition arises out of a complaint by AGIS Soft-
ware against Apple at the Eastern District of Texas in
June 2017. AGIS Software is a subsidiary of AGIS Inc.,
which develops software solutions for enabling
smartphone, tablet, and computer users to establish
secure ad hoc digital networks. AGIS Inc. has offices in
Austin, Texas, Kansas, and Florida. AGIS Software rents
office space in Marshall, Texas. AGIS Inc. assigned the
patents-in-suit to AGIS Software. Malcolm Beyer is the
CEO of AGIS Software, the founder of AGIS Inc., and the
first-named inventor of the patents.
Apple answered, asserting an affirmative defense of
AGIS Software’s alleged failure to mark under 35 U.S.C.
§ 287. Apple subsequently moved under section 1404(a)
to transfer venue to the Northern District of California.
Apple’s motion noted that it had significant ties to the
proposed transferee venue. Apple further argued that
AGIS Software had no meaningful connection to the
Eastern District of Texas, noting that it had registered to
do business in Texas and rented its office space in the
Eastern District of Texas only a month before filing this
lawsuit. Apple additionally suggested that AGIS Soft-
ware was created for the purpose of filing suits in a pre-
ferred forum, noting that AGIS Inc. previously had
unsuccessfully asserted its patents against another com-
pany in another forum.
In its opposition to Apple’s transfer motion, AGIS
Software noted that it maintained its documents in the
Eastern District of Texas. It also identified as a potential
important non-party witness Eric Armstrong, a resident
of the Eastern District of Texas, who consulted for AGIS
Software and formerly worked as a software developer for
AGIS Inc. AGIS Software also argued that its connections
to the Eastern District of Texas were not merely to make
that district appear more convenient. To that end, Mr.
Beyer submitted a declaration attesting to the fact that
the decision to establish AGIS Software was part of a
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IN RE: APPLE INC. 3
corporate restructuring that began as far back as 2013
and that the Eastern District of Texas was chosen be-
cause Mr. Beyer had preexisting connections to that area,
including he and his family owning a large amount of
property in the Eastern District of Texas.
In its order denying transfer, the district court ana-
lyzed the motion by considering the relevant public and
private interest factors first enunciated in Gulf Oil Corp.
v. Gilbert, 330 U.S. 501, 508 (1947). The district court
found that two factors—the sources of proof and the
willing witness factors—favored transferring the case to
the Northern District of California. The district court
found that two factors favored retaining the case in the
Eastern District of Texas. The district court found that
the court congestion factor favored the Eastern District of
Texas because case statistics indicated the median time
for cases to go to trial was shorter in the Eastern District
of Texas than in the Northern District of California. The
district court also found that the compulsory process
factor favored retaining the case, finding that Mr. Arm-
strong had been shown to have relevant information
relating to, among other things, Apple’s marking defense.
The district court found that the other factors favored
neither venue. On balance, the court concluded that
Apple had not shown that the Northern District of Cali-
fornia was clearly more convenient and therefore denied
the motion to transfer.
The court’s review on mandamus of district court
transfer orders is “only for clear abuses of discretion that
produce patently erroneous results.” In re Volkswagen of
Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (en banc); In
re TS Tech USA Corp., 551 F.3d 1315, 1318 (Fed. Cir.
2008). Apple has not shown such an abuse here. The
district court could fairly find that a shorter time to trial
in its district was worthy of some consideration here. Cf.
Parsons v. Chesapeake & Ohio Ry. Co., 375 U.S. 71, 73
(1963). Apple has also asserted a § 287 defense, which
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IN RE: APPLE INC. 4
implicates a non-party witness and information in that
individual’s possession located in the Eastern District of
Texas.* Apple contends that AGIS Software’s connections
to the Eastern District of Texas should be disregarded
given it only registered to do business and rented office
space a month before filing this suit. But the district
court itself weighed the factors concerning the location of
relevant evidence and employee witnesses in favor of
transfer, not in favor of retaining the case. Apple also
contends that the convenience factors favoring transfer
outweigh the factors against transfer. While a district
court could have reached that result, we see no basis for
saying that it must do so under these circumstances.
Finally, considering the convenience of the parties, while
the Eastern District of Texas may not be especially con-
venient for Apple, the Northern District of California
would seem equally inconvenient for AGIS Software. No
clear abuse of discretion therefore occurred.
Accordingly,
* Contrary to Apple’s contentions, this court cannot
conclude that the district court erred in considering Mr.
Armstrong an unwilling witness from the perspective of
the Northern District of California because when there is
no indication that a non-party witness is a willing wit-
ness, courts in the Fifth Circuit generally consider that
witness under the compulsory process factor. See AGIS
Software Dev., LLC v. Huawei Device USA Inc., No. 2:17-
cv-00513-JRG, 2018 WL 2329752, at *6 (E.D. Tex. May
23, 2018) (“Absent any indication that the third-party . . .
witnesses are willing, the Court . . . must presume utiliza-
tion of the Court’s subpoena power will be required.”).
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IN RE: APPLE INC. 5
I T I S O RDERED T HAT :
The petition is denied.
F OR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
s31
Case: 18-151 Document: 20 Page: 5 Filed: 10/16/2018

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