By Thomas Long, J.D.
Apple did not show that the Texas district court abused its discretion in deciding that Apple’s preferred forum—the Northern District of California—was more suitable for the litigation.
A patent infringement action involving accused Apple products supporting a certain wireless networking standard will not be transferred from the U.S. District Court for the Western District of Texas to direct transfer of this action to the U.S. District Court for the Northern District of California. Denying Apple’s request for a writ of mandamus, the U.S. Court of Appeals for the Federal Circuit held that the Texas court did not abuse its discretion in declining to transfer the case to California pursuant to 28 U.S.C. § 1404(a). Although the California district would be more convenient for Apple employees and employees of a third-party company who would be called upon to testify, the presence of a key Wi-Fi standard-setting organization in the Western District of Texas weighed against transfer because it was likely that the patent holder would rely on the organization as a significant source of proof (In re Apple Inc., June 16, 2020, Stoll, K.).
STC.UNM, the patent and technology transfer arm of the University of New Mexico, holds patents that allegedly "read on" the IEEE 802.11ac wireless networking standard. According to STC.UNM, the accused devices infringed the patents by being compliant with that standard. Apple countered by arguing that its accused products support the wireless standard via semiconductor chips developed by Broadcom Inc., a company with offices in San Jose, Irvine, and San Diego, California, as well as in the Western District in Austin, Texas. Apple moved to transfer the case, and the court granted the motion in part, deciding that Apple had demonstrated that trial in the Austin Division of the Western District of Texas was clearly more convenient than the Waco Division. However, the district court concluded that Apple did not clearly establish that the Northern District of California was more suitable for the litigation than Austin, Texas.
Although the district court agreed that the Northern District of California would be more convenient for Apple employees and Broadcom employees who had knowledge of the accused products, and that it would be easier to access or transfer documents from Apple or Broadcom that were located in the Northern District of California or other parts of California. But the district court found that the presence of the Wi-Fi Alliance in the Western District of Texas mitigated against weighing the convenience factors strongly in favor of transfer, because it was "possible—if not likely—that STC.UNM could require the Wi-Fi Alliance as a significant source of proof." The Wi-Fi Alliance is an organization that promotes, certifies, and ensures uniform adoption of Wi-Fi standards, including the 802.11ac standard.
In addition, the district court noted that there was a pending case in the same district in which STC.UNM was asserting the same claims of the same patents against another defendant, as well as a short time to trial in the Texas district than the California district. Local interests did not weigh in favor of the Northern District of California, in the district court’s view, because Apple was one of the largest employers in both the California and the Texas districts. Broadcom also had a significant presence in Austin.
Apple petitioned the Federal Circuit to issue a writ of mandamus to compel transfer to the Northern District of California. Obtaining this relief required a showing of clear abuse of discretion that produced a patently erroneous result. In the Federal Circuit’s view, Apple did not meet that demanding standard. Although the appellate court expressed doubt that the district court was correct in deciding that it had to draw all reasonable inferences and resolve all factual conflicts in favor of the nonmoving party when assessing a Section 1404(a) transfer for convenience, it could not conclude that Apple’s right to relief was indisputably clear.
First, the Federal Circuit said that Apple had not clearly and indisputably established the right to transfer to Northern California based on the convenience of witnesses. Nor had Apple clearly and indisputably established the right to transfer to Northern California based on countervailing convenience or localized interest considerations, in the appellate court’s view. The determination of whether individuals or organizations may have relevant information and whether a certain forum has a localized connection to the relevant conduct and activities in a case is ordinarily left to the district court. The district court’s conclusion that the Wi-Fi Alliance’s location in Austin could be a source of information relevant to the case was not unreasonable in light of STC.UNM’s theory of infringement. Moreover, although Broadcom was headquartered in the Northern District of California, Broadcom had indicated that many of its employees who works on the chips at issue were located outside that district.
Accordingly, the Federal Circuit denied Apple’s petition for a writ of mandamus directing the district court to transfer the case to the Northern District of California.
This case is No. 20-127.
Attorneys: Melanie L. Bostwick, (Orrick, Herrington & Sutcliffe LLP) for Apple Inc. Michael W. Shore (Shore Chan DePumpo LLP) for STC.UNM
Companies: Apple Inc.; STC.UNM
MainStory: TopStory Patent TechnologyInternet GCNNews FedCirNews
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