Case: 22-162 Document: 19 Page: 1 Filed: 11/08/2022
United States Court of Appeals
for the Federal Circuit
______________________
In re: APPLE INC.,
Petitioner
______________________
2022-162
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:21-
cv-01101-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
MELANIE L. BOSTWICK, Orrick, Herrington &
Sutcliffe LLP, Washington, DC, for petitioner Apple Inc.
Also represented by LAUREN WEBER; MELANIE
HALLUMS, Wheeling, WV; ANDREW T. RADSCH,
ANDREW N. THOMASES, Ropes & Gray LLP, East Palo
Alto, CA
BRETT E. COOPER, BC Law Group, PC, New York,
NY, for respondent Aire Technology Ltd. Also repre-
sented by JONATHAN RANDY YIM.
Before DYK, REYNA, and TARANTO, Circuit Judges.
REYNA, Circuit Judge.
ORDER
Apple Inc. petitions this court for a writ of mandamus
directing the United States District Court for the Western
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2 IN RE: APPLE INC.
District of Texas to vacate its scheduling order, promptly
rule on Apple’s pending transfer motion, and stay all pro-
ceedings on the merits until transfer is resolved. Apple
also moves for this court to stay the district court proceed-
ings pending resolution of Apple’s petition. Aire Technol-
ogy Limited opposes the petition and motion.
Aire sued Apple for patent infringement in the Western
District of Texas in October 2021. In April 2022, Apple
moved, pursuant to
28 U.S.C. § 1404(a), for transfer to the
United States District Court for the Northern District of
California. Apple submitted a declaration from Mark Rol-
lins, an Apple finance manager, “to establish certain facts,
such as the relevance, role, and locations of witnesses and
their teams, as well as the relevance and locations of vari-
ous categories of documents.” Pet. at 6.
Shortly before the close of venue discovery, Apple
sought leave to supplement its motion with additional dec-
larations from employees who Mr. Rollins had consulted in
preparing his declaration to bolster the credibility of his
statements. Apple offered to make the declarants available
for deposition and stated non-opposition to a “reasonable
continuance” of the transfer proceedings. Appx181. The
district court granted Apple’s motion, but sua sponte or-
dered the parties to complete fact discovery on the merits
(which it extended for an additional 30 weeks) and then go
through another six weeks of re-briefing of the motion be-
fore it would rule on Apple’s request to transfer under §
1404(a). Apple then filed this petition seeking review of
that order.
Although a district court has discretion in managing its
own docket, see Landis v. N. Am. Co.,
299 U.S. 248, 254–55
(1936), an appellate court may grant mandamus to correct
a clearly arbitrary refusal to act on a longstanding pending
transfer motion. See, e.g., In re Horseshoe Ent.,
337 F.3d
429, 433 (5th Cir. 2003) (“[I]n our view disposition of that
[transfer] motion should have taken a top priority in the
Case: 22-162 Document: 19 Page: 3 Filed: 11/08/2022
IN RE: APPLE INC. 3
handling of this case by the . . . District Court.”); In re
TracFone Wireless, Inc., 848 F. App’x 899, 900–01 (Fed. Cir.
2021) (citing Horseshoe Ent.,
337 F.3d at 433); In re SK
hynix Inc., 835 F. App’x 600, 600–01 (Fed. Cir. 2021); In re
Google Inc., No. 2015-138,
2015 WL 5294800, at *1–2 (Fed.
Cir. July 16, 2015); see also In re EMC Corp., 501 F. App’x
973, 975–76 (Fed. Cir. 2013) (“Congress’ intent to prevent
the waste of time, energy and money and to protect liti-
gants, witnesses and the public against unnecessary incon-
venience and expense . . . may be thwarted where, as here,
defendants must partake in years of litigation prior to a
determination on a transfer motion.” (internal quotation
marks and citation omitted)).
Apple contends that the district court clearly abused its
discretion in ordering the parties to complete 30 more
weeks of fact discovery while pressing forward on the mer-
its and then spend another six weeks re-briefing the issue
before deciding Apple’s transfer request. Apple notes that
by the time the court plans on considering Apple’s motion,
it will have been a full year after Apple initially sought
transfer, and the parties will have completed fact discovery
(with the Western District of Texas resolving all discovery
disputes), served final infringement and invalidity conten-
tions (with leave of court required for any subsequent
amendment), 1 narrowed the number of asserted claims and
prior art references to the number permitted by this dis-
trict court, and exchanged preliminary trial exhibits and
witness lists. Pet. at 1–2. We agree with Apple that the
district court’s scheduling order goes too far.
Aire “consents to resolving Apple’s transfer motion at
any time, provided that no stay interfere with discovery,
Markman proceedings, or the preparation of this case for
1 Aire has already filed an opposed motion to amend
its infringement contentions to include an additional claim.
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4 IN RE: APPLE INC.
trial.” ECF No. 9 at 2. 2 And precedent entitles parties to
have their venue motions prioritized. See In re Apple Inc.,
979 F.3d 1332, 1337 (Fed. Cir. 2020); see also Horseshoe
Ent.,
337 F.3d at 433. Applying that principle, the Third
Circuit in McDonnell Douglas Corp. v. Polin,
429 F.2d 30,
30–31 (3d Cir. 1970), held that it is “not proper to postpone
consideration of the application for transfer under
§ 1404(a) until discovery on the merits is completed,” as the
district court has done in this case. Where, as here, the
parties agree that no additional discovery or briefing is nec-
essary and there are clearly less time-consuming and more
cost-effective means for the court to resolve the motion (in-
cluding considering whether the court should give less
weight to certain evidence), it is a clear abuse of discretion
to require the parties to expend additional party and court
resources litigating the substantive matters of the case
while Apple’s motion to transfer unnecessarily lingers on
the docket.
The district court took the view that by delaying the
decision until after full fact discovery and re-briefing, it
could reduce “speculation” and “allow the parties to provide
the Court with the best evidence for ruling on a motion to
transfer.” Appx1. Discovery on the transfer motion itself
is sufficient to allow decision of that motion. 3 Moreover, an
undue delay for a motion under § 1404(a), as other district
courts have found, may unnecessarily require the
2 A motion for reconsideration under these circum-
stances might have provided an adequate alternative
means to obtain the requested relief, but it appears futile
here in light of the district court’s holding in its order deny-
ing Apple’s motion for a stay pending this petition. ECF
No. 18 at 6.
3 In light of the parties’ concessions, further venue
discovery is unnecessary here.
Case: 22-162 Document: 19 Page: 5 Filed: 11/08/2022
IN RE: APPLE INC. 5
expenditure of judicial resources in both the transferor and
transferee courts. 4 As the Third Circuit in Polin explained,
“[j]udicial economy requires that another district court
should not burden itself with the merits of the action until
it is decided that a transfer should be effected and such
consideration additionally requires that the court which ul-
timately decides the merits of the action should also decide
the various questions which arise during the pendency of
the suit instead of considering it in two courts.”
429 F.2d
at 30.
For these reasons, we conclude that the district court
clearly abused its discretion in issuing its scheduling order.
We do not decide in this case (which does not present the
issue) whether and the extent to which merits discovery
may proceed pending discovery for a decision on a transfer
motion. We determine only that decision of a transfer
4 See, e.g., Zamora-Garcia v. Moore, No. M-05-331,
2006 WL 3341034, at *4 (S.D. Tex. Nov. 16, 2006) (noting
the potential “waste of judicial resources”); Moto Photo, Inc.
v. K.J. Broadhurst Enters., Inc., No. 3:01-cv-2282-L,
2003
WL 298799, at *5 (N.D. Tex. Feb. 10, 2003) (filing of motion
to transfer after parties had exchanged initial disclosures,
amended their pleadings, and conducted preliminary dis-
covery created possibility of undue delay if case were to be
transferred and could be denied on that basis alone); FTC
v. Multinet Mktg., LLC,
959 F. Supp. 394, 395–96 (N.D.
Tex. 1997) (denying motion to transfer filed seven months
after plaintiffs’ filing of action where “change of venue now
is likely to upset the discovery and trial schedule and waste
judicial resources”); Am. Airlines, Inc. v. Rogerson ATS,
952 F. Supp. 377, 384 (N.D. Tex. 1996) (denying motion
where transfer would disrupt scheduling order and create
“substantial possibility of delay . . . since this Court has had
the case for some time and is already familiar with many
of its details”).
Case: 22-162 Document: 19 Page: 6 Filed: 11/08/2022
6 IN RE: APPLE INC.
motion must proceed expeditiously as the first order of
business and that venue discovery must proceed immedi-
ately to enable such a prompt decision of the transfer mo-
tion.
Accordingly,
IT IS ORDERED THAT:
The petition and motion are granted to the extent that
the district court’s amended scheduling order is vacated,
and the district court is directed to postpone fact discovery
and other substantive proceedings until after consideration
of Apple’s motion for transfer.
FOR THE COURT
November 8, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
