Case: 22-137 Document: 16 Page: 1 Filed: 05/26/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2022-137
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:21-
cv-00528-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
ORDER
Apple Inc. petitions for a writ of mandamus to direct
the United States District Court for the Western District of
Texas to transfer this patent infringement suit to the
United States District Court for the Northern District of
California. BillJCo, LLC opposes the petition. For the rea-
sons that follow, we grant Apple’s petition.
BillJCo is a Texas company headquartered in Flower
Mound, within the Eastern District of Texas. BillJCo was
founded by Bill Johnson to pursue opportunities relating to
patents focusing on distributed mobile applications.
Case: 22-137 Document: 16 Page: 2 Filed: 05/26/2022
2 IN RE: APPLE INC.
BillJCo owns six patents concerning beacon technology, all
naming Mr. Johnson as the sole inventor or as co-inventor
along with his son, Jason Johnson, who resides in Waco.
In May 2021, BillJCo filed this action in the Western
District of Texas, Waco Division, to assert those patents
based on Apple’s use of its iBeacon protocol. Apple moved
to transfer the action to the Northern District of California
under
28 U.S.C. § 1404(a), arguing that Apple researched,
designed, and developed the accused technology from its
headquarters within the transferee venue; that evidence
and witnesses would likely be in Northern California; and
that neither BillJCo nor this litigation had any meaningful
connection to Western Texas. The district court denied the
motion, finding that this case could have been brought in
the Northern District of California, but disagreeing with
Apple that that forum was clearly more convenient.
We apply regional circuit law on transfer motions. See
In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir.
2008). In deciding whether the district court should have
transferred under § 1404(a), we ask whether “the movant
demonstrate[d] that the transferee venue is clearly more
convenient” based on an evaluation of the private and pub-
lic interest factors. In re Radmax, Ltd.,
720 F.3d 285, 288
(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc.,
545
F.3d 304, 315 (5th Cir. 2008) (en banc)) (internal quotation
marks omitted). Mindful that the district court is generally
better positioned to evaluate the evidence, we review a
transfer ruling for a clear abuse of discretion. See In re
Vistaprint Ltd.,
628 F.3d 1342, 1344–46 (Fed. Cir. 2010).
The district court clearly abused its discretion in con-
cluding that the private and public factors did not favor
transfer here. We begin with the private factors: (1) the
relative ease of access to sources of proof; (2) the availabil-
ity of compulsory process to secure the attendance of wit-
nesses; (3) the cost of attendance for willing witnesses; and
(4) all other practical problems that make a trial easy,
Case: 22-137 Document: 16 Page: 3 Filed: 05/26/2022
IN RE: APPLE INC. 3
expeditious, and inexpensive. Volkswagen, 545 F.3d at 315
(citing Piper Aircraft Co. v. Reyno,
454 U.S. 235, 241 n.6
(1981)). Those factors clearly support transfer to Northern
California.
The district court correctly found that the access to
sources of proof and willing witness factors both favor the
transferee venue. Apple stated that its documents relating
to the research, design, development and operation of the
accused products were generated in Northern California
and that its source code was developed, and is accessible
for inspection, from Northern California and controlled on
a need-to-know basis, which favors transfer even if Apple
in theory could offer access to that information at its offices
in Austin, Texas. See In re Apple Inc., No. 2021-181,
2021
WL 5291804, at *2 (Fed. Cir. Nov. 15, 2021). Furthermore,
the court plausibly found that Northern California would
be more convenient overall for the party witnesses.
Among the private factors, the district court’s only ba-
sis for discounting the convenience of the transferee forum
was its general ability to compel the testimony of Jason
Johnson. Appx10. But that conclusion clearly overlooks
the record in two key respects. First, BillJCo has all along
indicated that Jason Johnson is willing to testify in the
Western District of Texas, rendering it error to give such
weight to the court’s ability to compel his testimony. See
Appx104 (“Mr. Johnson’s son, Jason Johnson, is a co-inven-
tor for one of the patents at issue . . . . Another willing non-
party witness is . . . .”); Resp. 16 (“[W]hile Jason Johnson
may be a willing witness to a trial mere miles from his
home (the WDTX), he may not be willing witness at a trial
thousands of miles from his home . . . .”). Second, the
weight placed on Jason Johnson’s presence in Waco by the
district court is too great in the context of the record as a
whole, given the numerous potential witnesses Apple iden-
tified in Northern California. Under these circumstances,
the private transfer factors clearly favor transfer.
Case: 22-137 Document: 16 Page: 4 Filed: 05/26/2022
4 IN RE: APPLE INC.
We now turn to the public interest factors: (1) the ad-
ministrative difficulties flowing from court congestion; (2)
the local interest in having localized interests decided at
home; (3) the familiarity of the forum with the law that will
govern the case; and (4) the avoidance of unnecessary prob-
lems of conflict of laws or in the application of foreign law.
Volkswagen, 545 F.3d at 315 (citing Piper Aircraft, 454 U.S.
at 241 n.6). These factors generally focus on any potential
administrative and legal problem or advantage offered by
one forum over another in handling the case. Piper Air-
craft, 454 U.S. at 241. In this case, none of these consider-
ations is sufficient to override the striking imbalance in
favor of transfer on the private interest factors.
While recognizing that the Northern District of Califor-
nia had a local interest in resolving this matter because the
accused products were researched, designed, and devel-
oped from that district, the district court nonetheless con-
cluded that the local interest factor weighed slightly in
favor of the Western District of Texas. There are two fun-
damental problems with the district court’s analysis that
demonstrate a clear abuse of discretion even under the
highly deferential standard of review. First, the court in-
correctly gave equal consideration to the fact that “BillJCo
is headquartered in Flower Mound, Texas” where the pa-
tented invention was developed. Appx18. Since Flower
Mound is in the Eastern District of Texas, not the Western
District of Texas, BillJCo’s office in Texas gives plaintiff’s
chosen forum no comparable local interest. See In re
Google LLC, No. 2021-171,
2021 WL 4592280, at *6 (Fed.
Cir. Oct. 6, 2021) (finding error with district court’s reli-
ance on plaintiff’s incorporation and office in Texas, where
the office was located outside the Western District).
Second, the court assigned too much weight to Apple’s
“substantial general presence in this District.” Appx19. As
our precedent has made clear, an assessment of the local
interest factor must focus on whether there are “‘signifi-
cant connections between a particular venue and the events
Case: 22-137 Document: 16 Page: 5 Filed: 05/26/2022
IN RE: APPLE INC. 5
that gave rise to a suit.’” In re Apple Inc.,
979 F.3d 1332,
1345 (Fed. Cir. 2020) (quoting In re Acer Am. Corp.,
626
F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis in Apple)).
Nothing in the court’s opinion or the record offers any indi-
cation that Apple’s in-district offices had any involvement
in the research, design, or development of the accused tech-
nology. The court’s reliance on these offices, which lack
such a connection to the locus of the events giving rise to
the dispute, amounts to a clear abuse of discretion. The
upshot is that this factor also favors transfer.
The district court also weighed the court congestion
factor here against transfer based on its faster time to trial.
But precedent does not permit giving such speculation
about whether a court can reach trial faster more weight
than all the remaining factors. See In re Genentech, Inc.,
566 F.3d 1338, 1347 (Fed. Cir. 2009) (holding that when
other relevant factors weigh in favor of transfer or are neu-
tral, “then the speed of the transferee district court should
not alone outweigh all of those other factors”).
Under the circumstances in this case, we conclude that
the district court’s ruling that Apple had failed to show that
the transferee venue was clearly more convenient
amounted to a clear abuse of discretion.
Accordingly,
IT IS ORDERED THAT:
The petition is granted to the extent that the district
court’s order denying Apple’s motion is vacated and the dis-
trict court is directed to grant a transfer of the case to the
Northern District of California.
FOR THE COURT
May 26, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
