IP Law Daily, PATENT—Fed. Cir.: Apple cannot transfer Texas infringement case, (Mar 18, 2024)

By Randall Holbrook

The district court did not err in holding that good cause for the transfer of a case had not been established.

Apple Inc. did not establish good cause to transfer a patent infringement action from the Western District of Texas to the Northern District of California and a writ of mandamus directing the transfer would not be issued, the U.S. Court of Appeals for the Federal Circuit has held. Refusing transfer would not produce a patently erroneous result (In Re Apple Inc. , March 18, 2024, Moore, K.).

Apple Inc. (Apple) was the defendant in a patent infringement action in the U.S. District Court for the Western District of Texas brought by Carbyne Biometrics, LLC (Carbyne). 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 decision would be forthcoming. On January 31, 2024, having received no written decision, Apple filed a mandamus petition with the Federal Circuit asking that the district court be directed to stay proceedings until the written decision was issued or to transfer the case to the Northern District of California. On February 12, 2024, the district court issued its written decision denying transfer.

Factors regarding transfer. The district court found that Carbyne’s infringement contentions implicated hardware and server-side aspects of the accused products. 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. The remaining transfer factors were neutral. 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 manufactured 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 forums; 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.

Mandamus. The Federal Circuit declined to issue a writ of mandamus. When evaluating transfer decisions under 28 U.S.C. § 1404(a), the Federal Circuit generally apply the law of the circuit in which the district court sits, here the United States Court of Appeals for the Fifth Circuit. Mandamus is “reserved for extraordinary situations.” To obtain a writ of mandamus, 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 appropriate under the circumstances.” Applying Fifth Circuit law, mandamus is granted only for “a clear abuse of discretion such that refusing transfer produced a patently erroneous result.” Apple’s petition failed to make that showing here.

The case is No. 2024-111.

Attorneys: Melanie L. Bostwick (Orrick, Herrington & Sutcliffe LLP) and James Richard Batchelder (Ropes & Gray LLP) for Apple Inc. Charles E. Fowler, Jr. (McKool Smith, P.C.) for Carbyne Biometrics, LLC.

Companies: Apple Inc.; Carbyne Biometrics, LLC

Cases: Patent FedCirNews TexasNews