United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: APPLE INC.,

Petitioner

______________________

2020-135

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:19-

cv-00532-ADA, Judge Alan D. Albright.

______________________

ON PETITION AND MOTION

______________________

 MELANIE L. BOSTWICK, Orrick, Herrington & Sutcliffe 

LLP, Washington, DC, argued for petitioner. Also represented by ABIGAIL COLELLA, New York, NY; MELANIE 

HALLUMS, Wheeling, WV; JOHN GUARAGNA, DLA Piper US 

LLP, Austin, TX.

CHRISTIAN JOHN HURT, The Davis Firm, P.C., 

Longview, TX, argued for respondent Uniloc 2017 LLC. 

Also represented by WILLIAM DAVIS.

______________________

Before PROST, Chief Judge, MOORE and HUGHES, Circuit

Judges.

Order for the court filed by Chief Judge PROST.

Dissent filed by Circuit Judge MOORE.

PROST, Chief Judge.

O R D E R

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2 IN RE: APPLE INC.

Apple Inc. petitions this court for a writ of mandamus 

directing the United States District Court for the Western 

District of Texas (“WDTX”) to transfer the underlying patent infringement suit to the United States District Court 

for the Northern District of California (“NDCA”) pursuant 

to 28 U.S.C. § 1404(a). Uniloc 2017 LLC opposes. Uniloc 

also moves to file a sur-reply brief and to supplement the 

record.

We grant Uniloc’s motions to file a sur-reply and to supplement the record. For the reasons below, we grant Apple’s petition.

BACKGROUND

In September 2019, Uniloc sued Apple in the Waco Division of WDTX, alleging that several Apple products infringe U.S. Patent No. 6,467,088 (“the ’088 patent”). 

App. 16. According to Uniloc, “Apple’s software download 

functionality, including how Apple determines compatibility for application and operating system software updates 

through the App Store, infringes the ’088 patent.” Response Br. 4. The “Accused Products include Apple devices 

that run iOS and macOS-based operating systems.” Id. 

In November 2019, Apple moved to transfer the case to 

NDCA on the basis that it would be clearly more convenient to litigate the case in that district. App. 84; see also 

28 U.S.C. § 1404(a). To support its motion, Apple submitted a sworn declaration from Michael Jaynes, a senior finance manager at Apple. App. 105. 

In January 2020, Apple moved to stay all activity in the 

case unrelated to its transfer motion pending a decision on 

the motion. App. 166–73. The district court denied the 

stay motion without explanation in a text entry on the 

docket. App. 7. The parties completed briefing and discovery on transfer in February 2020. App. 4–9.

The district court held a hearing on Apple’s motion on

May 12, 2020, during which the court stated that it would 

deny the motion and issue a written order as soon as possible. App. 10, 296. After the hearing, but before issuing a 

written order, the court held a Markman hearing, issued 

its claim construction order, held a discovery hearing 

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IN RE: APPLE INC. 3

regarding the protective order in the case, and issued a corresponding discovery order. App. 11. In response to these 

advances in the case, on June 15, 2020, Apple filed this petition for a writ of mandamus. The district court issued its 

order denying transfer a week later, on June 22, 2020. 

S. App. 1–34. 

DISCUSSION

The writ of mandamus is an extraordinary remedy 

available to correct a clear abuse of discretion or usurpation of judicial power. Cheney v. U.S. Dist. Ct., 542 U.S. 

367, 380 (2004). “In reviewing a district court’s ruling on a 

motion to transfer pursuant to § 1404(a) [on mandamus review], we apply the law of the regional circuit,” in this case 

the Fifth Circuit. See In re Barnes & Noble, Inc., 743 F.3d 

1381, 1383 (Fed. Cir. 2014). “A district court abuses its 

discretion if it: (1) relies on clearly erroneous factual findings; (2) relies on erroneous conclusions of law; or (3) misapplies the law to the facts.” In re Volkswagen of Am., Inc., 

545 F.3d 304, 310 (5th Cir. 2008) (en banc) (“Volkswagen 

II”) (quoting McClure v. Ashcroft, 335 F.3d 404, 408 (5th 

Cir. 2003)). As “the distinction between an abuse of discretion and a clear abuse of discretion cannot be sharply defined for all cases,” “[o]n mandamus review, we review for 

these types of errors, but we only will grant mandamus relief when such errors produce a patently erroneous result.” 

Id. “To determine whether a district court clearly abused 

its discretion in ruling on a transfer motion, some petitions 

for mandamus relief that are presented to us require that 

we ‘review[] carefully the circumstances presented to and 

the decision making process’ of the district court.” Id. at 

312 (alteration in original) (quoting In re Horseshoe Ent., 

337 F.3d 429, 432 (5th Cir. 2003)).

In general, three conditions must be satisfied for a writ 

to issue: (1) the petitioner must demonstrate a clear and 

indisputable right to issuance of the writ; (2) the petitioner 

must have no other adequate method of attaining the desired relief; and (3) the court must be satisfied that the writ 

is appropriate under the circumstances. Cheney, 542 U.S. 

at 380–81. In the § 1404(a) transfer context, however, the 

test for mandamus essentially reduces to the first factor, 

given that “the possibility of an appeal in the transferee 

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4 IN RE: APPLE INC.

forum following a final judgment . . . is not an adequate alternative,” and that “an erroneous transfer may result in 

judicially sanctioned irreparable procedural injury.” In re 

McGraw-Hill Glob. Educ. Holdings LLC, 909 F.3d 48, 56 

(3d Cir. 2018) (internal quotation marks omitted); see also 

In re TS Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir. 

2008). Accordingly, the issue on appeal is whether Apple 

has shown a clear and indisputable right to issuance of the 

writ.

I

Before addressing the merits of Apple’s petition, we 

first consider Uniloc’s argument that Apple waived a number of arguments by failing to raise them in its petition. 

Apple filed its petition on June 15, 2020—one week before the district court issued its written order denying 

transfer and more than one month after the court held a 

hearing on the transfer motion and orally indicated that it 

would deny the motion. Apple’s reply brief, however, was 

filed after the district court issued its written order denying transfer. Uniloc moved to file a sur-reply on the basis 

that Apple’s reply brief raised “new points of error” not 

raised in the petition because Apple incorrectly guessed in 

its pre-order petition as to the bases on which the district 

court would support its order denying transfer. See Opposed Non-Confidential Motion of Respondent for Leave to 

File Sur-Reply Brief (July 13, 2020), ECF No. 39; see also 

Response Br. 11 (arguing that Apple “guessed wrong [in its 

petition] at how the [district court] would rule on a number 

of factors” and, as a result, failed “to challenge several findings at all” in the initial petition). In its sur-reply, Uniloc 

addresses the merits of the arguments it contends Apple

first raised in its reply brief and further argues that Apple’s 

purportedly newly raised arguments are waived. See SurReply Br. 1. Apple defends its pre-order filing, explaining 

that “[g]iven the rapid progression of this case, [it could 

not] wait any longer for a written order before seeking 

mandamus to prevent the case from moving forward in an 

inconvenient venue.” Pet. 10–11.

Ordinarily, an appellant waives issues or arguments 

not properly raised in its opening brief. See Becton 

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IN RE: APPLE INC. 5

Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. 

Cir. 1990). “This practice is, of course, not governed by a 

rigid rule but may as a matter of discretion not be adhered 

to where circumstances indicate that it would result in basically unfair procedure.” Id.; see also Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (“An 

appellate court retains case-by-case discretion over 

whether to apply waiver.”). To the extent Apple raises new 

arguments in its reply brief in response to the district 

court’s order, we exercise our discretion to not apply waiver 

because doing so would be unfair under the circumstances. 

Although district courts have discretion as to how to 

handle their dockets, once a party files a transfer motion, 

disposing of that motion should unquestionably take top 

priority. E.g., In re Horseshoe, 337 F.3d at 433 (explaining 

that transfer motions should take “top priority” in the handling of a case); McDonnell Douglas Corp. v. Polin, 429 F.2d 

30, 30 (3d Cir. 1970) (“To undertake a consideration of the 

merits of the action is to assume, even temporarily, that 

there will be no transfer before the transfer issue is decided. Judicial 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.”); In re 

Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir. 2013) (explaining that “a trial court must first address whether it is 

a proper and convenient venue before addressing any substantive portion of the case”); In re EMC Corp., 501 F. App’x 

973, 975 (Fed. Cir. 2013) (acknowledging the “importance 

of addressing motions to transfer at the outset of litigation”). 

Instead, the district court barreled ahead on the merits 

in significant respects, prompting Apple to file its mandamus petition before the district court issued its transfer order. For example, the court held a Markman hearing, 

issued its claim construction order, held a discovery hearing, and issued a corresponding discovery order. App. 11. 

These are not merely rote, ministerial tasks. Indeed, a 

Markman hearing and claim construction order are two of 

the most important and time-intensive substantive tasks a 

district court undertakes in a patent case.

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6 IN RE: APPLE INC.

Given Apple’s concern over the rapid progression of 

this case, Apple filed its petition before the district court 

issued its transfer order. In the petition, Apple addressed

what it believed would be the court’s likely reasons for its 

denial of the motion. Apple was first able to directly address the district court’s order in its reply brief. On these 

facts, and because we grant Uniloc’s motion to file a surreply, we decline to apply waiver.1

II

As to the merits, under 28 U.S.C. § 1404(a), “[f]or the 

convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any 

other district or division where it might have been brought 

or to any district or division to which all parties have consented.” Under Fifth Circuit law, to prevail on its transfer 

motion before the district court, Apple bore the burden of 

demonstrating that “the transferee venue is clearly more 

convenient.” Volkswagen II, 545 F.3d at 314. The district 

court denied that motion. On mandamus review, Apple

bears the burden of demonstrating that the court’s denial 

amounted to a clear abuse of discretion. Id. at 308. 

The Fifth Circuit assesses transfer requests using the 

well-established private and public interest factors. Id. at 

315. “The private interest factors are: ‘(1) the relative ease 

of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the 

cost of attendance for willing witnesses; and (4) all other 

practical problems that make trial of a case easy, expeditious and inexpensive.’” Id. (quoting In re Volkswagen AG, 

1 To the extent this order could be construed as condoning pre-order mandamus petitions, we take care to emphasize the particular circumstances of this case: namely, 

the district court heavily prioritized the merits of the case,

and Uniloc was allowed a sur-reply. We also note that Apple’s decision to file a pre-order petition was not without

consequence to Apple. Indeed, Apple was only able to file 

one brief directly responding to the district court’s arguments, and Uniloc, through its sur-reply, received both the 

last word and extra space for briefing.

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IN RE: APPLE INC. 7

371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”)). And 

“[t]he public interest factors are: ‘(1) the administrative 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 problems of conflict of 

laws [or in] the application of foreign law.’” Id. (alteration 

in original) (quoting Volkswagen I, 371 F.3d at 203).

The parties agree that the third and fourth public interest factors are neutral in this case but dispute whether 

the remaining factors weigh for or against transfer. See 

Pet. 34; Response Br. 11. We conclude that Apple has 

demonstrated that the district court clearly abused its discretion in denying transfer.2 We discuss the relevant private and public interest factors in turn.

A. Relative ease of access to sources of proof

The district court concluded that the first private interest factor—the relative ease of access to sources of proof—

“weighs slightly in favor of transfer.” S. App. 15; see also 

S. App. 22. The court divided its analysis between the location of witnesses and the location of relevant documents.

The district court determined that “the location of witnesses weighs in favor of transfer,” because “Apple provides sufficient argument that most relevant party 

witnesses are located in NDCA.” S. App. 21. Even after 

taking potential third-party witnesses into account, the 

2 The dissent states in its conclusion that Apple’s 

“petition itself does not raise many of the arguments the 

majority relies upon in its decision.” Dissent at 12. To the 

extent this statement might be misconstrued as suggesting 

that we have relied on arguments not advanced by Apple, 

that is not the case. For the reasons explained above, we 

have not applied waiver under the circumstances 

here. Therefore, we have considered all the arguments in 

the papers before us, including those in Apple’s reply brief 

and in the sur-reply we permitted Uniloc to file.

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8 IN RE: APPLE INC.

district court concluded that “the greater balance of witnesses . . . are located within NDCA.” S. App. 21–22. 

The court concluded that “the location of relevant documents was neutral.” S. App. 22; see also S. App. 19. In 

reaching this conclusion, the court credited “Uniloc’s argument concerning the physical location of its documents” in 

a different Texas district as being closer to WDTX than 

NDCA. S. App. 19. With respect to Apple, the court noted 

that Apple’s campus in Austin, Texas houses revenue and 

accounting documents that the court concluded might be 

“relevant to ascertaining what damages Uniloc could argue 

at trial and Uniloc’s inducement claim.” S. App. 20. The 

court also highlighted that Apple’s Austin campus might 

house instruction documents relevant to Uniloc’s inducement claim. Id. The court further noted that Apple owns 

content delivery network (“CDN”) servers in the Northern

District of Texas that might be relevant because Apple uses 

the CDN “to store and distribute apps and other content of 

the accused App Store.” Id. With respect to third parties 

located within WDTX, the district court explained that 

“Flextronics, the third-party manufacturer of an Accused 

Product, may have relevant documents,” but that such documents may be “duplicative” of what Apple will itself produce. Id. For these reasons, the court found “that there 

are documents relevant to this case located in this District, 

such that Apple has not shown it is clearly more convenient 

to transfer this case to NDCA.” Id.

The district court ultimately determined that because 

the location of witnesses weighs in favor of transfer, but the 

location of documents was neutral, the first private interest 

factor “weighs slightly in favor of transfer.” S. App. 15; see 

also S. App. 22.

The district court legally erred in considering witnesses as “sources of proof” for purposes of the first private 

interest factor. This factor relates to the ease of access to 

non-witness evidence, such as documents and other physical evidence; the third private interest factor—the cost of 

attendance for willing witnesses—relates to the convenience of each forum to witnesses. See, e.g., Volkswagen II, 

545 F.3d at 316–18; see also Duha v. Agrium, Inc., 448 F.3d 

867, 876 (6th Cir. 2006) (“Access to non-witness sources of 

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IN RE: APPLE INC. 9

proof, including documents in particular, is properly considered as part of the ease-of-access factor.”); In re Acer Am. 

Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (analyzing 

witness convenience under the third private interest factor 

and documentary and physical evidence under the first private interest factor). If witness convenience is considered 

when assessing both the first and third private interest factors, witness convenience will be inappropriately counted 

twice.

The district court also misapplied the law to the facts 

in analyzing the location of relevant documents. Notably, 

in its substantive analysis of this factor, the district court 

failed to even mention Apple’s sources of proof in NDCA, 

much less meaningfully compare them to proof in or nearer 

to WDTX. Rather, the district court concluded that the factor was neutral merely because there existed some “documents relevant to this case located in the District, such 

that Apple has not shown it is clearly more convenient to 

transfer this case to NDCA.” S. App. 20. The district 

court’s analysis confuses Apple’s burden of demonstrating 

that the transferee venue is clearly more convenient with 

the showing needed for a conclusion that a particular private or public interest factor favors transfer. Indeed, a factor can favor transfer even if that factor is, standing alone, 

insufficient to warrant transfer. See, e.g., Volkswagen II, 

545 F.3d at 315; Action Indus., Inc. v. U.S. Fidelity & Guar. 

Co., 358 F.3d 337, 340 (5th Cir. 2004). And although we 

credit the district court’s determination that some relevant 

documents are located in WDTX, the movant need not show 

that all relevant documents are located in the transferee 

venue to support a conclusion that the location of relevant 

documents favors transfer. Nor is this factor neutral 

merely because some sources of proof can be identified in 

the district. The district court erred in holding otherwise.

Even to the extent the district court’s order can be interpreted as attempting to conduct an appropriate comparison of the ease of access to sources of proof in the two 

forums, the court erred by overemphasizing the sources of 

proof in or nearer to WDTX and failing to meaningfully 

consider the sources of proof in NDCA. “In patent infringement cases, the bulk of the relevant evidence usually comes 

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from the accused infringer. Consequently, the place where 

the defendant’s documents are kept weighs in favor of 

transfer to that location.” In re Genentech, Inc., 566 F.3d 

1338, 1345 (Fed. Cir. 2009). In his sworn declaration, Mr. 

Jaynes stated that Apple stores a significant amount of relevant information in NDCA, including the relevant source 

code, Apple records relating to the research and design of 

the accused products, and marketing, sales, and financial 

information for the accused products. See, e.g., App. 115–

16 ¶¶ 23, 30; App. 119 ¶¶ 47, 48; App. 184; Pet. 29–30. Neither the district court nor Uniloc disputes that such records

are located in NDCA. Mr. Jaynes also stated in his sworn 

declaration that he was unaware of any relevant documents in WDTX. App. 119 ¶ 49. Again, although we credit 

the district court’s identification of some relevant proof located in or nearer to WDTX, the district court erred by failing to meaningfully consider the wealth of important 

information in NDCA. 

While we note these errors, we need not reweigh the 

evidence (or, rather, weigh Apple’s evidence in the first instance), or otherwise disturb the district court’s ultimate 

conclusion that the location of relevant documents is neutral, because the remainder of the factors convince us that 

transfer is appropriate and that the court clearly abused 

its discretion in concluding otherwise.

B. The availability of compulsory process to secure the attendance of witnesses

The district court concluded that the second private interest factor—the availability of compulsory process to secure the attendance of witnesses—was neutral in this case. 

S. App. 23–24. On review, we see no reason to disturb the 

district court’s conclusion on this factor.

C. The cost of attendance for willing witnesses

Next we turn to “an important factor, the convenience 

for and cost of attendance of witnesses.” Genentech, 566 

F.3d at 1343. In analyzing this factor, the Fifth Circuit 

uses the “100-mile rule,” which provides that “[w]hen the 

distance between an existing venue for trial of a matter and 

a proposed venue under § 1404(a) is more than 100 miles, 

the factor of inconvenience to witnesses increases in direct 

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relationship to the additional distance to be traveled.” 

Volkswagen II, 545 F.3d at 317 (quoting Volkswagen I, 371 

F.3d at 204–05). 

In Genentech, this court—applying Fifth Circuit law—

held that “the ‘100-mile’ rule should not be rigidly applied” 

where “witnesses . . . will be required to travel a significant 

distance no matter where they testify.” 566 F.3d at 1344. 

Genentech specifically held that witnesses traveling from 

Europe, Iowa, and the East Coast would be only “slightly 

more inconvenienced by having to travel to California” 

than to Texas. Id. at 1348. This sensible holding stems 

from the observation that, regardless of the ultimately chosen venue, such witnesses will be required to travel a significant distance, will likely incur meal and lodging 

expenses, and will likely incur time away from home. See 

id. at 1344. Genentech’s interpretation of the 100-mile rule 

is consistent with the Fifth Circuit’s reasoning underlying 

the rule, which forcefully applies to witnesses who reside 

near one of the two districts but not to the circumstances 

presented here:

Additional distance means additional travel time; 

additional travel time increases the probability for 

meal and lodging expenses; and additional travel 

time with overnight stays increases the time which 

these fact witnesses must be away from their regular employment. Furthermore, the task of scheduling fact witnesses so as to minimize the time when 

they are removed from their regular work or home 

responsibilities gets increasingly difficult and complicated when the travel time from their home or 

work site to the court facility is five or six hours 

one-way as opposed to 30 minutes or an hour.

Volkswagen I, 371 F.3d at 205. 

The district court concluded that this factor was neutral. S. App. 26–27. The court divided its analysis into the 

convenience to third-party witnesses and the convenience 

to party witnesses. 

The court determined that “the location of third-party 

witnesses weighs against transfer.” S. App. 26; see also 

S. App. 27 (concluding that “the inventors being located 

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closer to WDTX is a significant fact that weighs against 

transfer” (emphasis added)). The court highlighted that 

Uniloc identified three important third-party witnesses believed to reside in New York: the attorney who prosecuted 

the asserted patent and the patent’s two named inventors. 

S. App. 25, 27. The court reasoned that because the inventors are likely to be two of the most important witnesses 

called at trial, and because these inventors live “much 

closer to WDTX than NDCA,” the location of third-party 

witnesses weighed against transfer. S. App. 26–27. The 

court also determined that “the location of party witnesses

slightly weighs in favor of transfer to NDCA.” S. App. 26. 

In sum, the court concluded that the factor was neutral. 

S. App. 26–27.

The district court misapplied the law to the facts of this 

case by too rigidly applying the 100-mile rule. As a result, 

the district court gave too much significance to the fact that 

the inventors and patent prosecutor live closer to WDTX 

than NDCA. Although it might be true that these individuals will need to travel a greater distance to reach NDCA 

than WDTX, and although a flight from New York to 

WDTX might take a bit less time than from New York to 

NDCA, in either instance these individuals will likely have 

to leave home for an extended period of time and incur 

travel, lodging, and related costs. As expressed in Genentech, the 100-mile rule “should not be rigidly applied” 

where witnesses “will be required to travel a significant 

distance no matter where they testify.” 566 F.3d at 1344. 

These witnesses will only be “slightly more inconvenienced 

by having to travel to California” than to Texas.3 See id. at 

1348.

3 The dissent argues that our determination reflects 

“mere disagreement with the district court[].” Dissent at 3. 

We are puzzled as to how our conclusion—that the district 

court misapplied the law by rigidly applying the law in a 

manner inconsistent with Genentech—amounts to a mere 

“disagreement” with the district court. We also do not understand how this conclusion disregards our standard of 

review, considering that we are obligated to review for 

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In view of this misapplication of the law, and in view of 

the district court’s findings that “most relevant party witnesses are located in NDCA” and “it is likely that both Apple and Uniloc will each have one or more potential trial 

witnesses from NDCA,” S. App. 27, this factor weighs at 

least slightly in favor of transfer. See Volkswagen II, 545 

F.3d at 317 (concluding that the district court “erred in applying this factor” when, contrary to the district court’s conclusion, the factor weighed in favor of transfer).

D. All other practical problems that make trial of a case 

easy, expeditious, and inexpensive

The district court concluded that the fourth private interest factor—all other practical problems that make trial 

of a case easy, expeditious, and inexpensive—“weighs 

heavily against transfer.” S. App. 30. The court reasoned 

that “significant steps” had already been taken in the case. 

S. App. 29. In particular, the court explained that the parties exchanged infringement and invalidity contentions, 

the parties “briefed and argued Markman claim terms,” 

and the court held a Markman hearing and “issued a claim 

construction order.” S. App. 29–30. Thus, wrote the court, 

“NDCA would have to duplicate this Court’s efforts to construe the patent unless it merely chose to accept what this 

Court has already determined and entered.” S. App. 30. 

The district court further remarked that because NDCA 

has more pending civil cases than WDTX, a transfer to 

NDCA, “a forum with a significantly higher level of case 

clear misapplications of the law. E.g., Volkswagen II, 

545 F.3d at 310. Only by giving district courts unbounded

discretion would we defer to this misapplication of law. Finally, we reject the dissent’s apparent invitation to discard 

or otherwise ignore Genentech.

The dissent also appears to suggest that we have entirely dispensed with the 100-mile rule and that we “seek[] 

to eliminate the application of this rule to third-party witnesses residing a plane ride away from both districts.” Dissent at 4. To the contrary, we merely follow Genentech’s 

sensible holding that the 100-mile rule should not be rigidly applied in circumstances such as these. 

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14 IN RE: APPLE INC.

congestion,” would be “an act against judicial economy.” 

S. App. 29–30.

Apple argued that this factor “weighs in favor of transfer because of the twenty-one cases [presenting some overlapping issues] that have been transferred from districts in 

Texas to NDCA.” S. App. 28. The district court was unpersuaded, reasoning that many of those twenty-one cases 

were stayed, the active cases lacked set trial dates, and the 

cases related to different patents. S. App. 29–30. The court 

explained that it “disagrees that a case should be transferred when another case with the same parties and only 

some overlapping issues such as standing and subject matter jurisdiction are present in another district.” S. App. 30. 

The district court legally erred in its analysis of this 

factor. Aside from the service of preliminary infringement 

contentions, see App. 32–34, all the “significant steps” that 

had been taken by the court and parties in the case were 

taken after Apple moved for transfer in November 2019, as 

well as after Apple moved to stay the case in January 2020. 

For example, the parties submitted Markman briefing in 

February and March 2020. What’s more, most of the “significant” steps the district court relied on were taken after 

the district court’s May 12, 2020 hearing on the transfer 

motion, during which the court explained that the motion 

would be denied. In particular, after the transfer hearing 

but before issuing a transfer order, the district court held a

Markman hearing and issued its claim construction order. 

The court also held a discovery hearing and issued a corresponding discovery order.

As stated previously, once a party files a transfer motion, disposition of that motion should take top priority in 

the case. E.g., In re Horseshoe, 337 F.3d at 433; McDonnell 

Douglas Corp., 429 F.2d at 30; In re Nintendo, 544 F. App’x 

at 941; In re EMC, 501 F. App’x at 975. Setting aside the 

questionable prioritization of other proceedings over the 

pending transfer motion, the district court legally erred in

concluding that the merits-related steps it had taken 

weighed heavily against transfer. A district court’s decision to give undue priority to the merits of a case over a 

party’s transfer motion should not be counted against that 

party in the venue transfer analysis.

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The district court also misapplied the law to the facts 

of this case in concluding that judicial economy weighed 

against transfer because NDCA has more pending cases 

than WDTX.4 “To the extent that court congestion matters, 

what is important is the speed with which a case can come 

to trial and be resolved.” See In re Ryze Claims Sols., LLC, 

968 F.3d 701, 710 (7th Cir. 2020) (quoting In re Factor VIII 

or IX Concentrate Blood Prods. Litig., 484 F.3d 951, 958 

(7th Cir. 2007)); see also Gates Learjet Corp. v. Jensen, 743 

F.2d 1325, 1337 (9th Cir. 1984) (concluding, in assessing 

the impact of court congestion on the § 1404(a) analysis,

that “[t]he real issue is . . . whether a trial may be speedier 

in another court because of its less crowded docket”). 

As the district court acknowledged, NDCA and WDTX

have historically had comparable times to trial for civil 

cases (25.9 months for NDCA versus 25.3 months for 

WDTX), and, most relevantly, NDCA has historically had 

a shorter time to trial for patent cases. See S. App. 30. Although the district court noted that NDCA has more pending cases than WDTX, this fact is, without more, too 

tenuously related to any differences in speed by which 

these districts can bring cases to trial. 

After accounting for the district court’s errors, we are 

left with nothing relevant to this factor weighing against 

transfer. However, there are judicial economy benefits on 

the other side of the ledger: namely, as the district court 

conceded, there are pending cases in NDCA with “some 

overlapping issues.” S. App. 30. Even crediting (as we do) 

each of the district court’s findings discounting the benefits 

of transfer to NDCA on this basis (e.g., many cases in 

NDCA are stayed and lack trial dates, and the cases differ 

in many respects), it is beyond question that the ability to 

transfer a case to a district with numerous cases involving 

some overlapping issues weighs at least slightly in favor of 

4 We question whether such considerations of “judicial economy” might have been more appropriately assessed under the first public interest factor—the 

administrative difficulties flowing from court congestion. 

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16 IN RE: APPLE INC.

such a transfer. Accordingly, this factor weighs at least 

slightly in favor of transfer.

E. The administrative difficulties flowing from court congestion

The district court concluded that the first public interest factor—the administrative difficulties flowing from 

court congestion—“weighs against transfer.” S. App. 30–

31. The court acknowledged that NDCA historically “has a 

shorter time to trial for patent cases than WDTX.” 

S. App. 30. But, the district court concluded, “because the 

Court has already set the trial date in this case, the prospective time from filing to trial is 18.4 months,” which is 

“42.5 percent faster than previous WDTX cases” and faster 

than the historical time to trial in NDCA. S. App. 31.

The district court misapplied the law to the facts of this 

case by relying too heavily on the scheduled trial date. We 

have previously explained that a court’s general ability to 

set a fast-paced schedule is not particularly relevant to this 

factor. See, e.g., In re Adobe Inc., 823 F. App’x 929, 932

(Fed. Cir. 2020). Indeed, a district court cannot merely set 

an aggressive trial date and subsequently conclude, on that 

basis alone, that other forums that historically do not resolve cases at such an aggressive pace are more congested 

for venue transfer purposes. This is particularly true 

where, like here, the forum itself has not historically resolved cases so quickly. Thus, this factor is neutral.5 

5 We further note that this factor frequently calls for 

speculation. For example, scheduled trial dates are often 

subject to change, and the district court’s anticipated time 

to trial is significantly shorter than the district’s historical 

time to trial. Because this factor often calls for speculation, 

where “several relevant factors weigh in favor of transfer 

and others are neutral, then the speed of the transferee district court should not alone outweigh all of those other factors.” See Genentech, 566 F.3d at 1347.

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IN RE: APPLE INC. 17

F. The local interest in having localized interests decided 

at home

The district court concluded that the second public interest factor—the local interest in having localized interests decided at home—was “neutral in terms of transfer.” 

S. App. 33. The court reasoned that “Apple has substantial 

presences in both NDCA and WDTX, so both districts have 

a significant interest in this case.” S. App. 32. In addition, 

the court explained that “WDTX has a significant localized 

interest because of the state and local tax benefits received 

by and pledged to Apple to build a second campus in Austin.” Id. The district court concluded that “Uniloc’s presence in NDCA, but not in WDTX, weighs in favor of 

transfer.” S. App. 33. The district court further remarked

that “Flextronics’ presence in this District weighs slightly 

against transfer,” but the court ultimately concluded that 

the factor was neutral irrespective of whether Flextronics 

was considered. See S. App. 33 (concluding that this factor 

is neutral “even if Flextronics was excluded from the 

Court’s analysis”).

The district court misapplied the law to the facts of this 

case in analyzing this factor. This factor most notably regards not merely the parties’ significant connections to 

each forum writ large, but rather the “significant connections between a particular venue and the events that gave 

rise to a suit.” See In re Acer, 626 F.3d at 1256 (emphasis 

added); see also Volkswagen II, 545 F.3d at 318 (explaining 

that this factor pertains to a forum’s “connections with the 

events that gave rise to th[e] suit”); In re HP Inc., No. 2020-

140, 2020 WL 5523561, at *1, *4 (Fed. Cir. Sept. 15, 2020) 

(concluding that the district court correctly recognized that 

the local interests factor weighed at least slightly in favor 

of transfer from the Eastern District of Texas (“EDTX”) to 

NDCA because “more of the events giving rise to this suit 

appear to have occurred in [NDCA] than in [EDTX]—

specifically, the development of the accused products”). 

The district court thus misapplied the law to the facts by

so heavily weighing Apple’s general contacts with the forum that are untethered to the lawsuit, such as Apple’s 

general presence in WDTX and the state and local tax 

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18 IN RE: APPLE INC.

benefits it purportedly received from the district.6 The district court also misapplied the law to the facts by failing to 

give weight to the “significant connections between 

[NDCA] and the events that gave rise to a suit.” See In re 

Acer, 626 F.3d at 1256 (emphasis added). Because of 

Uniloc’s “presence in NDCA” and absence from WDTX; because the accused products were designed, developed, and 

tested in NDCA; and because the lawsuit “calls into question the work and reputation of several individuals residing” in NDCA, In re Hoffman-La Roche Inc., 587 F.3d 1333, 

1336 (Fed. Cir. 2009), this factor weighs in favor of transfer.7 

The dissent argues that our analysis of this factor is 

“overblown.” Dissent at 8. It relies on the following facts 

as both relevant to the local interests factor and weighing 

against transfer: (1) Apple has a large presence, and is increasing its presence, in WDTX; (2) Apple maintains CDN 

servers in Dallas, Texas, and has “at least seven employees 

in WDTX with duties concerning Apple’s CDN”; (3) Apple 

6 In addition, to the extent the district court relies on 

the fact that Apple’s presence in the district is expected to 

increase in the future, neither Uniloc nor the district court 

has explained how Apple’s future plans in WDTX relate in 

any way to this lawsuit.

7 The dissent states that “[e]ven Apple’s petition did 

not argue that it would be a clear abuse of discretion to find 

this factor neutral.” Dissent at 10. We decline to engage 

with this minor semantical point other than to say that Apple properly raised an argument that the district court 

erred in concluding that this factor did not favor transfer. 

See, e.g., Pet. at 34 (“The other two public-interest factors 

either weigh in favor of transfer or, at the very least, cannot 

weigh against it.”); id. (“The interest of the district where 

the accused technology was designed and developed is selfevidently stronger than that of a district with no tie to this 

case.”); id. at 34–37 (generally arguing that NDCA’s interest outweighs WDTX’s interest, and that “[e]ven accepting 

every speculation by Uniloc, the local interest factor would 

at most be neutral”); see also Reply Br. 19 (The local interests factor “should have weighed in favor of transfer.”).

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IN RE: APPLE INC. 19

performs some relevant revenue reporting and accounting 

activities in WDTX; and (4) Apple contracts with Flextronics to manufacture one of the accused products in WDTX. 

Dissent at 8–9. 

We have already discussed Apple’s presence, and increasing presence, in WDTX above but add that both the 

district court and the dissent improperly conflate the requirements for establishing venue under 28 U.S.C. 

§ 1400(b) and the requirements for establishing transfer 

under § 1404(a). “The statutory rights under [§] 1400(b) 

. . . are independent of the convenience-based rights under 

§ 1404(a).” In re Oath Holdings Inc., 908 F.3d 1301, 1306 

(Fed. Cir. 2018). Indeed, the entire premise of a § 1404(a) 

transfer motion is that a case, although brought in a proper 

venue, should nevertheless be transferred for the convenience of the parties. See, e.g., HollyAnne Corp. v. TFT, Inc., 

199 F.3d 1304, 1307 (Fed. Cir. 1999) (“Section 1404(a) allows a court where venue is proper to transfer a case to a 

more convenient forum.”).

As to the CDN servers in Dallas, Texas, it is unclear 

why these servers are entitled to any weight, particularly 

given that the district court neither mentioned nor gave 

weight to these CDN servers in its analysis, and considering that the servers are located in the Northern District of 

Texas, not WDTX.

As to Apple’s CDN employees in the district and the 

fact that Apple performs some relevant financial activity in 

WDTX, we are unclear as to why the dissent focuses exclusively on these employees and this activity to the exclusion 

of all other employees and activity. This is particularly 

perplexing considering that the district court did not discuss these employees or activity at all in its analysis of this 

factor, other than to merely acknowledge Uniloc’s argument that the “witnesses it identified” weigh against transfer. S. App. 32. Moreover, the district court did not

otherwise provide any reason to give these employees and 

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20 IN RE: APPLE INC.

this activity weight above and beyond other relevant employees and activity.8 

Finally, as to Flextronics, as we note above, the district 

court itself gave Flextronics little weight with respect to 

this factor. We see no error in this conclusion.

III

We conclude our discussion by addressing two additional points from the dissent. First, on numerous occasions, the dissent criticizes us for applying what it refers to 

as “de novo” review. To the contrary, and as we have explained throughout the order, we properly reviewed the 

district court’s order only for reliance on clearly erroneous 

fact findings, erroneous conclusions of law, or misapplications of law to fact. See Volkswagen II, 545 F.3d at 310. 

District courts have no discretion to make these kinds of 

errors. See id. And when such errors accumulate to produce a patently erroneous result, as they have here, we are 

obliged to act. See id.; see also id. at 318 (“[W]e hold that 

the district court’s errors resulted in a patently erroneous 

result.”). To the extent the dissent believes otherwise, it is 

mistaken. A district court’s “exercise of its discretion is not 

unbounded; that is, a court must exercise its discretion 

within the bounds set by relevant statutes and relevant, 

binding precedents.” Id. at 310.

Even more troubling, the dissent says that our order 

will somehow invite mandamus petitions based “almost entirely” on what it refers to as “ad hominem attacks on esteemed jurists.” Dissent at 3. That is a baseless and 

counterproductive statement about our order. Notably, the 

dissent supports its assertion with citations to Apple’s petition that the dissent contends constitute such attacks. 

Our order, however, relies on Apple’s relevant arguments 

and the record in the case, not on anything the dissent refers to as “ad hominem attacks.” For this reason, we do not 

8 And in any event, when discussing the private interest factors, the district court concluded that most relevant party witnesses resided in NDCA, which undercuts 

the dissent’s analysis.

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IN RE: APPLE INC. 21

understand how our order could reasonably be construed 

as inviting such attacks. If anything, the fact that our order completely ignores what the dissent calls “ad hominem 

attacks” will discourage future litigants from wasting precious briefing space on such statements.

CONCLUSION

We have considered Uniloc’s remaining arguments but 

find them unpersuasive. For the foregoing reasons, we 

hold that “the district court’s errors resulted in a patently

erroneous result” and grant Apple’s mandamus petition.

See Volkswagen II, 545 F.3d at 318.

Accordingly,

IT IS ORDERED THAT:

(1) The petition is granted.

(2) The motion to file a sur-reply brief is granted. 

(3) The motion to supplement the record is granted. 

(4) The motion by ACT │ The App Association, The 

Computer & Communications Industry Association, Unified Patents, LLC, and Roku, Inc. for leave to file a brief

amici curiae in support of Apple Inc. is granted.

FOR THE COURT

 November 9, 2020 /s/ Peter R. Marksteiner

 Date Peter R. Marksteiner

 Clerk of Court

Case: 20-135 Document: 55 Page: 21 Filed: 11/09/2020
United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: APPLE INC.,

Petitioner

______________________

2020-135

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:19-

cv-00532-ADA, Judge Alan D. Albright.

______________________

MOORE, Circuit Judge, dissenting.

Our review on a petition for a writ of mandamus is supposed to be limited—we are to grant mandamus to overturn a transfer decision only when the district court has 

clearly abused its discretion, “produc[ing] a patently erroneous result.” In re Volkswagen of Am., Inc., 545 F.3d 304, 

310 (5th Cir. 2008) (Volkswagen II). “Our reluctance to interfere is not merely a formality, but rather a longstanding 

recognition that a trial judge has a superior opportunity to 

familiarize himself or herself with the nature of the case 

and the probable testimony at trial, and ultimately is better able to dispose of these motions.” In re Vistaprint Ltd., 

628 F.3d 1342, 1346 (Fed. Cir. 2010). Our mandamus jurisdiction is not an invitation to exercise de novo dominion, 

as the majority does here, over the district court’s individual fact findings and the balancing determination that 

Congress has committed “to the sound discretion of the 

trial court.” Id. at 1346; 28 U.S.C. § 1404(a). Nor is it an 

invitation for us to criticize the way our district court 

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2 IN RE: APPLE INC.

colleagues generally manage their dockets, or as the majority puts it, “barrel” ahead on the merits in any given case. 

Maj. at 5. 

The district court here thoroughly considered each convenience factor on the record before it. It acknowledged 

that Apple had identified several party witnesses residing 

in the Northern District of California. It ultimately found, 

however, that Uniloc chose a venue in the district in which 

Apple maintains a large campus employing thousands of 

people, where one of the accused products is manufactured, 

where third-party information and potential witnesses are 

located, and which is convenient for potential witnesses 

and sources of proof and which would not impose a significant hardship on Apple. The district court therefore concluded that Apple has not shown that it is clearly more 

convenient for the parties and witnesses to transfer the instant case to the Northern District of California. S.A. 34. 

I do not agree with the majority in light of these facts that 

the district court clearly abused its discretion in refusing 

transfer. 

We must recognize our limited role in this process—

there is no more deferential standard of review than clear 

abuse of discretion. Under the clear abuse of discretion 

standard, our role is to defer to the broad discretion of the 

district court except as necessary to correct a usurpation of 

judicial power or a patently erroneous result. Volkswagen 

II, 545 F.3d at 312 (“But—and we stress—in no case will 

we replace a district court’s exercise of discretion with our 

own; we review only for clear abuses of discretion that produce patently erroneous results.”); In re Volkswagen of 

Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (Volkswagen 

III) (“A suggestion that the district court abused its discretion, which might warrant reversal on a direct appeal, is 

not a sufficient showing to justify mandamus relief.”); In re 

Barnes & Noble, Inc., 743 F.3d 1381, 1383 (Fed. Cir. 2014) 

(“Th[e] standard is an exacting one, requiring the petitioner to establish that the district court’s decision 

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IN RE: APPLE INC. 3

amounted to a failure to meaningfully consider the merits 

of the transfer motion.”). Rather than conducting this limited review, the majority usurps the district court’s role in 

the transfer process, disregards our standard of review and 

substitutes its judgment for that of the district court. I am 

concerned that the majority’s blatant disregard for the district court’s thorough fact findings and for our role in a petition for mandamus will invite further petitions based 

almost entirely on ad hominem attacks on esteemed jurists

similar to those Apple wages here. See, e.g., Petition at 12; 

id. at 14; id. at 14–15; id. at 15; id. at 16. First, parties 

should be mindful that personal attacks against judges 

such as those lodged in this case are not welcome, and at 

least in my opinion completely unwarranted. Second, I am 

not comfortable with the new role the majority has carved 

out for our court, and I believe it is inconsistent with the 

Fifth Circuit law that we are bound to follow. 

I. The Cost of Attendance for Willing Witnesses

The majority’s mere disagreement with the district 

court’s determination that the cost of attendance for willing 

witnesses is neutral does not warrant the extraordinary 

remedy of mandamus. The majority feigns confusion regarding the suggestion that it merely disagrees with the 

district court’s weighing of this factor. Maj. at 12 n.3. But 

it does not contest the district court’s finding that the location of party witnesses only “slightly weighs in favor of 

transfer.” S.A. 26. Nor does it address the court’s finding 

that because “Apple is building its own hotel [in Austin], 

the cost of attending a trial in the Austin division of WDTX 

may also weigh against transfer.” S.A. 13. Nor does it contest, even under Genentech, the district court’s findings

that the Northern District of California would be more inconvenient, time-consuming and costly for potential thirdparty witnesses residing in New York and within the Western District of Texas, or that these facts weigh against 

transfer. S.A. at 26–27; Maj. at 12 (expressly acknowledging that the third-party witnesses will be “‘more 

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4 IN RE: APPLE INC.

inconvenienced by having to travel to California’ than to 

Texas”). Try as it may to cast this as a “misapplication of 

the law to facts,” the majority’s criticism of the district 

court merely amounts to a belief that the district court 

“gave too much significance” to the inconvenience of the 

third-party witnesses. Maj. at 12. That criticism is inconsistent with our role in reviewing district court transfer decisions on mandamus, where the district court’s decision 

must be upheld unless it is “patently erroneous.” 

To justify its appellate fact finding that the inconvenience to party witnesses outweighs the inconvenience to

third-party witnesses, the majority strains to identify a legal error in the district court’s application of the Fifth Circuit’s 100-mile rule. The 100-mile rule is clear: “[w]hen the 

distance between an existing venue for trial of a matter and 

a proposed venue under § 1404(a) is more than 100 miles, 

the factor of inconvenience to witnesses increases in direct 

relationship to the additional distance to be traveled.” 

Volkswagen II, 545 F.3d at 317. The majority seeks to eliminate the application of this rule to third-party witnesses 

residing a plane ride away from both districts. But the 

Fifth Circuit reaffirmed the 100-mile rule in 2008, clearly 

contemplating air travel, and yet imposed no air-travel limits on the rule. The majority contends that the district

court applied the 100-mile rule “in a manner inconsistent 

with Genentech.” Maj. at 12 n.3. But as the majority concedes, even in Genentech, which the majority cites for the 

proposition that the 100-mile rule “should not be rigidly applied,” we applied the 100-mile rule to witnesses residing a 

plane ride away from both the transferee and transferor 

districts, and concluded that those third-party witnesses 

would more be inconvenienced by traveling to the Northern

District of California than to the Eastern District of Texas. 

566 F.3d 1338, 1348 (Fed. Cir. 2009); Maj. at 12. Contrary 

to the majority’s suggestion, it is not a clear abuse of discretion to find the right facts, apply the right law and 

simply weigh a factor differently than an appellate judge 

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IN RE: APPLE INC. 5

would. To the extent there is any dispute regarding the 

extent of inconvenience faced by all willing witnesses, it 

was Apple’s burden to prove that the transferee forum is 

clearly more convenient. The district court found that Apple failed to carry that burden and we must defer to that 

finding absent a clear abuse of discretion. 

II. All Other Practical Problems That Make Trial of a 

Case Easy, Expeditious and Inexpensive

The majority next criticizes the district court’s analysis 

of the practical problems that make trial of a case easy, expeditious and inexpensive. Maj. at 13–16. The district 

court found that this factor weighed heavily in favor of 

denying transfer. S.A. 30. I agree that the district court 

erred in considering events (such as claim construction) occurring after Apple filed its motion to transfer, therefore 

the court’s conclusion that this factor weighs heavily 

against transfer may be flawed. This error alone, however, 

does not mean that this factor flips from heavily against 

transfer to slightly in favor of transfer. Volkswagen II, 545 

F.3d at 315 n.11 (emphasizing that “mandamus does not 

reach all erroneous rulings of the district court”). The district court considered factors of judicial economy separate 

and apart from its own case progress such as trial dates, 

case and docket congestion, and the similarity of other 

pending lawsuits and concluded that these factors also “indicate that keeping the case in WDTX would have a more 

positive impact.” S.A. 29. Setting aside the district court’s 

consideration of its own progress in the case occurring after 

Apple filed its transfer motion, we must defer to the district 

court’s finding that the separate judicial economy considerations also weigh in favor of denying transfer. To the extent the majority believes the district court’s consideration 

of events occurring after Apple filed its motion undermines

the entirety of the district court’s remaining fact findings, 

the appropriate remedy would be to remand for reconsideration. See, e.g., In re Nitro Fluids, No. 2020-142, Slip op. 

at 8 (Fed. Cir. Oct. 28, 2020); In re Dropbox, 814 F. App’x 

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6 IN RE: APPLE INC.

598, 599–600 (Fed. Cir. 2020). It is inappropriate for the 

majority to use a single legal error to justify resolving factual disputes and to reconsider this factor anew on a petition for mandamus. 

The majority seizes on the fact that there are other

cases between Apple and Uniloc that have already been 

transferred to the Northern District of California, and concludes “it is beyond question that the ability to transfer a 

case to a district with numerous cases involving some overlapping issues weighs at least slightly in favor of transfer.” 

Maj. at 15–16. This statement of law that is apparently 

beyond question (though without citation to anything) disregards all the carefully considered facts regarding NDCA 

and the cases themselves which the district court discussed

over many pages of its opinion. The district court determined that judicial economy does not weigh in favor of 

transfer after carefully considering the transferred cases, 

noting that “the asserted patent” and “the documents and 

source code relevant to proving infringement” are “unique 

to this case.” S.A. 29. Given the limited overlap in the 

cases, the “lack of set trial dates and the number of stayed 

cases” between the parties in the Northern District of California, and the congestion of the transferee docket, the 

court found that keeping the case in the Western District 

of Texas would have “a more positive impact.” Id. The district court also noted that the other cases between these 

parties were spread among various Northern District of 

California judges, that the cases were not consolidated before the same trial judge, and the NDCA local rules would 

not steer towards consolidation. S.A. 28–30. In short, the 

court found the other NDCA cases significantly different 

and widely dispersed. The majority barely mentions these 

careful, thoughtful, thoroughly analyzed fact findings en 

route to its conclusion that it will grant transfer. 

Moreover, the court extensively analyzed the congestion in both dockets, explaining that although WDTX historically had only a slightly quicker median time from 

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IN RE: APPLE INC. 7

filing to disposition (25.3 versus 25.9 months), NDCA currently had three times the number of civil cases as WDTX. 

S.A. 29–30. The court further held that its trial date for 

this case would result in a shorter time to trial of 18.4 

months compared with the average time to trial of approximately 32 months for patent cases in NDCA. S.A. 31. The 

majority finds no flaws with these fact findings (and claims 

to credit them), but it nonetheless dismisses them out of 

hand as insufficient to support the district court’s analysis. 

The majority cites our decision in Adobe for the proposition that the district court relied too heavily on the scheduled trial date. But in Adobe, we merely concluded that the 

district court erred in giving dispositive weight to the district court’s general ability to set a trial schedule. 823 F. 

App’x 929, 932 (Fed. Cir. 2020). Contrary to the majority’s 

suggestion, the court here did not conclude “on that basis 

alone” that NDCA is more congested than WDTX. Maj. at 

16. The court instead considered the relative congestion in 

each district, number of pending cases, historical time to 

trial for each district and the projected time to trial in the 

instant case and found that there was an appreciable difference in court congestion. The majority does not refute

these thoughtful, thorough fact findings or point to any evidence that NDCA would resolve this case faster than 

WDTX. Nor does the majority suggest a district court 

should not consider its time to trial. Instead, the majority 

cites Genentech in an attempt to distract from its de novo 

review. Maj. at 16 n.5. But as in Genentech, I do not see 

how we can disturb the district court’s finding that judicial 

economy favors denying transfer under a clear abuse of discretion standard. See Genentech, 566 F.3d at 1347 (“We do 

not disturb the district court’s suggestion that it could dispose of the case more quickly than if the case was transferred to the Northern District of California”). Setting 

aside the district court’s own post-transfer motion case progress, the facts still support the court’s conclusion that this 

factor favors denying transfer. This is true de novo (the 

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8 IN RE: APPLE INC.

standard the majority seems to be applying), and certainly 

true under the actual standard—the clear abuse of discretion standard. 

III. Local Interests in Having Localized Interests Decided at Home

Lastly, the majority criticizes the district court’s weighing of the parties’ local interests. This criticism is overblown and inconsistent with our role as an appellate court. 

As the district court found, even though Apple is headquartered in Cupertino, California, it has a campus of more 

than 8,000 employees in the Western District of Texas. 

S.A. 4. Apple has committed to expanding this presence in 

the district by adding 5,000 to 15,000 employees. S.A. 12. 

It also has multiple retail stores in the district and is building its own local hotel. This is not the same local interest 

as every other district where Apple happens to have a retail 

store. Apple performs some of its revenue reporting and 

accounting activities on its Austin campus and Uniloc alleges (and Apple does not dispute) that these accounting 

activities process revenue tied to the alleged infringing 

functionality. Apple maintains content delivery network 

(CDN) servers in Dallas that store and distribute apps and 

other content. S.A. 20. The district court found that Apple 

has at least seven employees in WDTX with duties concerning Apple’s CDN (related to the actual alleged infringement in this case). 

The majority does not dispute these facts. Instead, the 

majority contends that these facts should not be entitled to 

any weight based on a specious claim that the district court 

did not mention Apple’s CDN servers, engineers or its financial activities “at all in its analysis of this factor.” Maj. 

at 19. This is untrue. The district court referenced Apple’s

CDN servers, CDN engineers and Apple’s financial accounting activities throughout its opinion: 

Uniloc acknowledges the fact that Apple uses a content delivery network (CDN) to store and distribute 

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IN RE: APPLE INC. 9

apps and other content of the accused App Store. 

Because there are Apple-owned CDN servers located in Dallas, and at least seven Apple employees 

in the District have job duties pertaining to Apple’s 

CDN, Uniloc makes a reasonable argument that 

these sources of proof are relevant and located in 

this District. 

S.A. 20. The district court then expressly refers to these 

facts again in support of its conclusion that the local interest factor is neutral: 

Additionally, Uniloc contends that between the 

witnesses it identified (e.g., Ms. Titus, seven employees in Austin with duties concerning Apple’s 

CDN, and others) and the fact that Flextronics is 

located in this District, this factor weighs against 

transfer or is at worst, neutral. 

S.A. 32. 

The district court also found that Apple contracts with 

Flextronics to manufacture one of the accused products in 

Austin (and that Flextronics has hundreds of employees in 

WDTX some of whom may be relevant witnesses). S.A. 33. 

Far from giving “Flextronics little weight” as the majority 

suggests, the district court found that Flextronics’ presence 

in the district “also contribute[s] towards a higher localized 

interest in this case” and weighs against transfer.1 Id. Finally, Apple has multiple retail stores with employees and 

customer support personnel to instruct and train users on 

1 The district court’s conclusion that the local interest factor “would be neutral in terms of transfer” absent 

Flextronics’ presence does not justify the majority’s blatant 

disregard for the fact that Flextronics manufactures an accused product and “has a few hundred employees in the 

District—including some who may be potential witnesses.” 

S.A. 33. 

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10 IN RE: APPLE INC.

how to use the accused functionality. Weighing these facts, 

the district court determined that the local interest factor 

was neutral. S.A. 32–33. 

Contrary to the majority’s suggestion, the district court 

did not “fail[] to give weight” to the connections between 

this case and NDCA. Maj. at 18. The district court expressly acknowledged that Apple alleges that the software 

was designed and developed in NDCA. S.A. 31–32. And, 

as the majority concedes, the district court addressed the 

“relevant party witnesses residing in NDCA,” and nonetheless concluded that this factor was neutral. That there are 

facts on both sides does not mean we grant mandamus. 

The majority may not agree with the district court’s fact 

findings or may have weighed them differently, but it is 

impossible to say (and the majority never does) that the 

district court clearly abused its discretion in its local interest analysis. 

And while the majority would rather not “engage with

th[e] minor semantical point” of what the parties actually 

argue, even Apple’s petition did not argue that it would be 

a clear abuse of discretion to find this factor neutral. Maj. 

at 18 n.7; Petition at 36 (“the local interest factor would at 

most be neutral”); see also Petition at 35 (“Any finding that 

the local-interest factor weighs against transfer would require legal error.”). It wasn’t until its reply brief when Apple for the first time alleged that this factor weighs in favor 

of transfer. I do not see how the majority can conclude that 

a district court clearly abused its discretion in finding this 

factor neutral where even the moving party argued that 

the facts support neutrality. 

The majority dismisses Apple’s and its manufacturer’s 

significant presence in the district. Neither this court nor 

the Fifth Circuit has held that an accused infringer’s general presence in a district is irrelevant to the district’s local 

interest in resolving the case. See, e.g., In re Acer Am. 

Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (considering 

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IN RE: APPLE INC. 11

as relevant to the local interest factor the fact that one of 

the parties alleged to have caused harm resided in the 

transferor district). Moreover, the manufacture of the accused product in the district and the maintenance of a campus that may house documents related to the development 

of the accused products is indisputably relevant to the instant case. And to the extent there is a dispute regarding 

whether Apple or Flextronics have may have information 

or witnesses in Austin relevant to this case, that is a factintensive matter left to the discretion of the district court, 

not the appellate court. See In re Apple Inc., 818 F. App’x. 

1001, 1004 (Fed. Cir. June 16, 2020) (“Whether individuals 

or organizations may have relevant information . . . are 

fact-intensive matters often subject to reasonable dispute. . . . Those determinations are generally entrusted to 

the discretion of the district court.”). 

It is not for us to criticize the district court’s weighing 

of these facts. It is Apple’s burden to prove that the local 

interest factor weighs in favor of transfer. On this record, 

the district court did not clearly abuse its discretion in finding that Apple failed to meet that burden. 

CONCLUSION

I do not believe the district court’s denial of Apple’s 

transfer motion reflects a clear abuse of discretion. The 

majority identifies a “misapplication of law to fact” in 

nearly every factor the district court analyzed. But looking 

beyond this label, which the Fifth Circuit notably has never 

relied on as a basis for granting a petition for mandamus, 

the majority’s criticism amounts merely to a disagreement 

with the district court’s weighing of its thorough fact findings. See, e.g., Maj. at 12 (“The district court misapplied 

the law to the facts of this case” and “gave too much significance to the fact that the inventors and patent prosecutor 

live closer to WDTX than NDCA.”); id. at 16 (“The district 

court misapplied the law to the facts of this case by relying 

too heavily on the scheduled trial date.”); id. at 17 (“The 

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12 IN RE: APPLE INC.

district court thus misapplied the law to the facts by so 

heavily weighing Apple’s general contacts with the forum.”); id. at 18 (“The district court also misapplied the law 

to the facts by failing to give weight” to the connections between NDCA and the suit.); id. at 19–20 (“Moreover, the 

district court did not otherwise provide any reason to give 

these employees and this activity weight above and beyond 

other relevant employees and activity.”). Though the district court erred in considering events that occurred after 

the transfer motion was filed, the court cannot fairly be 

charged with having failed to “meaningfully consider the 

merits of the transfer motion.” See Barnes & Noble, 743 

F.3d at 1383. Nor can we say that the district court’s wellreasoned decision amounts to a “a clear abuse of discretion 

or usurpation of judicial power.” In re Nintendo Co., 589 

F.3d 1194, 1197 (Fed. Cir. 2009). The majority has simply 

substituted its judgment that transfer should be ordered

for that of the district court. At most, the alleged errors 

identified by the majority would support a motion for reconsideration; they do not warrant the extraordinary remedy of mandamus. It is particularly troubling to grant 

mandamus here where the petition itself does not raise 

many of the arguments the majority relies upon in its decision. Under the proper standard of review, I believe the 

only patently erroneous result here is the one reached by 

the majority. I dissent from that result. Though the standard of review is not de novo, because the majority has approached the case as though it is, let me add—I agree with 

the district court and I would have denied transfer de novo. 

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