Federal Circuit disposition — 2012-m103-1-12-12-1-pdf

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

IN RE APPLE INC.,
Petitioner.

Miscellaneous Docket No. 103

On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case
nos. 09-CV-0326, 10-CV-0248, and 09-CV-289, Judge
Charles Everingham IV.

ON PETITION

Before NEWMAN, LINN, and REYNA, Circuit Judges.
LINN, Circuit Judge.

## ORDER

Respondent SimpleAir, Inc. has sued Petitioner Ap-
ple, Inc., and five other defendants, namely, Research-In-
Motion, Disney Online, ESPN Enterprises, ABC, and
Handmark in the United States District Court for the
Eastern District of Texas, charging each with patent
infringement. The action, which was filed more than two
years and two months ago, is quickly approaching its

<!-- PageBreak -->

<!-- PageHeader="IN RE APPLE INC" -->

current trial date. The case has already given rise to a
number of procedural issues, perhaps the most disputed of
which is currently before us on Apple's petition for a writ
of mandamus seeking a transfer of venue pursuant to 28
U.S.C. § 1404(a) to another federal district court. That
provision authorizes transfer of a civil action from one
federal district court to another "[f]or the convenience of
the parties and witnesses, in the interest of justice."

SimpleAir's complaint alleges the defendants in-
fringed its patents relating to the generation, processing,
and/or delivery of content, notifications, and updates to or
for mobile computing devices. The complaint predicated
venue on 28 U.S.C. § 1400(b), which authorizes venue
jurisdiction over any patent infringement suit where an
alleged act of infringement has been committed. It is not
disputed that Apple's and the other defendants' accused
products or services involving wireless notifications to
users of mobile devices are available in the Eastern
District of Texas.

Based on assertions of convenience for trial Apple
moved to transfer the case to the Northern District of
California. An affidavit attached to Apple's motion
stressed the presence of a number of potential witnesses
and relevant evidence in that venue where Apple is
headquartered and researched, designed, and developed
the accused products. The district court took nearly
fifteen months to rule on the motion, but when it did so,
the district court found no reason for another court to try
this case because of RIM's presence in Irving, Texas,
which is 164 miles from the courthouse, and the identifi-
cation of documents and potential witnesses in or near the
Eastern District of Texas.

As an initial matter, this court is in agreement with
SimpleAir that Apple's delay militates against granting

<!-- PageBreak -->

<!-- PageHeader="IN RE APPLE INC" -->

this extraordinary and largely discretionary remedy.
Apple failed to employ any strategy to pressure the dis-
trict court to act, such as seeking mandamus to direct the
district court to rule on the motion. Moreover, and more
importantly, Apple waited three and a half months after
the ruling was handed down before filing this petition so
close to trial.

Apple nonetheless reminds us that there is now a well
established line of authority that mandamus may issue to
direct the Eastern District of Texas to transfer a case to a
far more convenient and fair venue. The proposition was
born out of In re Volkswagen of Am., Inc., 545 F.3d 304
(5th Cir. 2008) where the Fifth Circuit sitting en banc
granted mandamus in a design defect case to a venue
where the car in question was purchased, the accident
occurred, and the witnesses resided from the Eastern
District of Texas that had no meaningful connection to
the cause of action. That was quickly followed by In re TS
Tech USA, Inc., 551 F.3d 1315 (Fed. Cir. 2008) in which
the district court applied the same erroneous analysis in a
patent case. Next came In re Genentech, Inc., 566 F.3d
1338 (Fed. Cir. 2009), which established the related
principle that the Eastern District of Texas's central
location is not a proxy for convenience and fairness. To
the same effect is In re Acer America Corp., 626 F.3d 1252
(Fed. Cir. 2010) wherein we explained that the combina-
tion of a large number of parties being headquartered in
or near the transferee venue and no party or witness in
the plaintiff's chosen forum is an important consideration.
Finally, this court in In re Microsoft Corp., 630 F.3d 1361
(Fed. Cir. 2010) following on the heels of our decisions in
In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir.
2010) and In re Hoffmann-La Roche Inc., 587 F.3d 1333
(Fed. Cir. 2009) stated the principle that courts should
not "honor connections to a preferred forum made in
anticipation of litigation and for the likely purpose of

<!-- PageBreak -->

<!-- PageHeader="IN RE APPLE INC" -->

making that forum appear convenient." Microsoft, 630
F.3d at 1364.

While it is true that this court has entertained the
writ in this context, this court has importantly granted
mandamus only where the district court has denied a
transfer motion without so much as considering the
merits or the court blatantly deviates from these above
stated principles. On the record before us, this court
cannot say that such disregard has clearly been estab-
lished. Although in Apple's papers much is made of
SimpleAir's recent and ephemeral connections to the
Eastern District of Texas-SimpleAir incorporated in
Texas and established an office one month before filing
this suit-the district court gave that consideration no
weight in its analysis. What is more, measured against
cases like Volkswagen, TS Tech, Genentech, and Acer,
there is a plausible argument that Apple did not meet its
burden of demonstrating below that the transferee venue
is "clearly more convenient." See Volkswagen, 545 F.3d at
315; see also In re Cordis Corp., 769 F.2d 733, 737 (Fed.
Cir. 1985) (noting that "if a rational and substantial legal
argument can be made in support of the rule in question,
the case is not appropriate for mandamus."). As com-
pared to those cases in which this court granted manda-
mus, here there are fewer defendants in the Northern
District of California and potential evidence identified in
the Eastern District of Texas, along with defendants and
witnesses that will find it easier and more convenient to
try this case in the Eastern District of Texas. Beyond
that, some reasons for transfer because of convenience
and fairness in regard to pre-trial proceedings such as
subpoena power to secure witnesses for deposition deserve
less consideration so close to trial. See generally Hoff-
mann-La Roche, 587 F.3d at 1338 (discussing relevance of
subpoena power to compel deposition). For those reasons

<!-- PageBreak -->

<!-- PageHeader="IN RE APPLE INC" -->

and Apple's delay in seeking such relief, this court denies
the petition.

Accordingly,

IT IS ORDERED THAT:

The petition is denied.

FOR THE COURT

JAN 12 2012

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Gregory Steven Arovas, Esq.
John Jeffrey Eichmann, Esq.
Clerk, United States District Court for the Eastern
District Of Texas

s19

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
JAN 12 2012
JAN HORBALY
CLERK