NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: APPLE INC.,

Petitioner

______________________

2020-115

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 5:19-

cv-00036-RWS, Judge Robert Schroeder, III.

______________________

ON PETITION

______________________

SEALED ORDER FILED: April 22, 2020

PUBLIC ORDER FILED: May 5, 2020*

______________________

Before PROST, Chief Judge, NEWMAN and HUGHES, Circuit 

Judges.

Dissent filed by Circuit Judge NEWMAN.

PER CURIAM. 

O R D E R

* This order originally was filed under seal and has 

been unsealed in full.

Case: 20-115 Document: 39-2 Page: 1 Filed: 04/22/2020
2 IN RE: APPLE INC.

Apple Inc. petitions for a writ of mandamus asking this 

court to direct the United States District Court for the 

Eastern District of Texas to transfer this case to the Northern District of California. Maxell, Ltd. opposes.

Applying law of the United States Court of Appeals for 

the Fifth Circuit in cases arising from district courts in that 

circuit, this court has held that mandamus may be used to 

correct a patently erroneous denial of transfer. That standard is an exacting one, requiring the petitioner to establish 

that the district court’s decision amounted to a failure to 

meaningfully consider the merits of the transfer motion. 

See, e.g., In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); 

In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 

2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); 

In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008); 

In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) 

(en banc). We are unable to say here that Apple has met 

that standard.

We cannot say that the district court clearly abused its 

discretion in concluding that the forum selection clause did 

not compel transfer here. No party contends that the prior 

agreement controls the outcome of this case or has asserted 

a breach of contract claim originating from that agreement. 

Notably, the express purpose of the agreement in question 

was the protection of confidential information related to a 

proposed sale of some of the asserted patents between the 

former patent owner and Apple, which the district court 

reasonably concluded was not the same as the licensing 

discussions at the center of this suit.

We also see no error that is mandamus-worthy in the 

district court’s conclusion that the traditional transfer factors did not clearly weigh in favor of transfer. The district 

court reasonably considered that it had gained “some familiarity with the Asserted Patents and the accused technologies” based on the district court judge’s experience in 

“prior cases involving Maxell and the Asserted Patents,” 

Case: 20-115 Document: 39-2 Page: 2 Filed: 04/22/2020
IN RE: APPLE INC. 3

which could not be said for the transferee forum. The court 

also found meaningful connections between this case and 

the Eastern District of Texas, including (a) Maxell’s affiliate having sources of proof in that district; (b) the fact that

Maxell’s agent and representative for licensing negotiations with Apple concerning some of the patents resides in 

the Eastern District of Texas, making trial more convenient in that district with regard to his testimony; and 

(c) several third-party entities located in the district that 

may have relevant documents and witnesses that were 

within the subpoena power of the district court. 

Accordingly,

IT IS ORDERED THAT:

The petition is denied. 

FOR THE COURT

 April 22, 2020 /s/ Peter R. Marksteiner

 Date Peter R. Marksteiner

 Clerk of Court

s35

Case: 20-115 Document: 39-2 Page: 3 Filed: 04/22/2020
4 IN RE: APPLE INC.

NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: APPLE INC.,

Petitioner

______________________

2020-115

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 5:19-

cv-00036-RWS, Judge Robert Schroeder, III.

______________________

NEWMAN, Circuit Judge, dissenting. 

This patent infringement suit against Apple, Inc. was 

filed by Maxell, Ltd., a subsidiary of Hitachi, Ltd., in the 

United States District Court for the Eastern District of 

Texas. Various issues are described as requiring determination of rights and obligations governed by an agreement 

made in 2011 between Apple and Hitachi. That Agreement 

contains the following clause:

(d) This Agreement shall be construed and controlled by the laws of the State of California, irrespective of choice of law revisions and the parties 

further consent to exclusive jurisdiction and venue 

in the federal courts sitting in Santa Clara County, 

California, unless no federal subject matter jurisdiction exists, in which case the parties consent to 

the exclusive jurisdiction and venue in the Superior Court of Santa Clara County, California. The 

Case: 20-115 Document: 39-2 Page: 4 Filed: 04/22/2020
IN RE: APPLE INC. 5

parties waive all defenses of lack of personal jurisdiction and forum non conveniens with respect to 

these jurisdictions.

2011 Agreement at 4. The Texas district court describes 

the question of the relation between the 2011 Agreement 

and a June 25, 2013 letter sent to Apple:

Maxell asserts that Apple willfully infringed the 

Asserted Patents based on [a] June 25, 2013 letter 

Hitachi sent to Apple. Apple contends that the 

2013 letter was protected by the Confidentiality 

Agreement. To Apple, by relying on the 2013 letter 

as notice of infringement, “there is a dispute between Apple and Maxell relating to the applicability of the 2011 agreement to the 2013 letter[, and 

t]his dispute should be resolved in NDCA under the 

2011 agreement’s forum-selection and choice-oflaw clauses.” 

Dist. Ct. Order at 6 (alteration in original). The Texas district court analyzed the 2011 Agreement and applying it to 

this case. The district court states:

[T]he Confidentiality Agreement establishes that a 

party may disclose its own information as it 

chooses, including Assertion Material, but a Receiving Party generally may not disclose the other 

party’s information, except for Assertion Material 

asserted by the other party against it.

Confidential Information is limited to “any nonpublic information consistent with the Purpose 

above that a party to this Agreement (‘Disclosing 

Party’) designates as being confidential to the party 

that receives such information (‘Receiving 

Party’) . . . .” Id. The Agreement goes on to establish that the Disclosing Party controls the disclosure and designation of information as

Confidential Information. See, e.g., Id. at 3–4 

Case: 20-115 Document: 39-2 Page: 5 Filed: 04/22/2020
6 IN RE: APPLE INC.

(placing all “Obligations Regarding Confidential 

Information” on the Receiving Party). Finally, the 

Confidentiality Agreement establishes that “[a]ll 

Confidential Information is and shall remain the 

property of the original owners. . . . Disclosing 

Party reserves without prejudice the ability to protect its rights under any such patents, copyrights, 

trademarks, or trade secrets unless as expressly 

provided herein.” Id. at 4–5. Thus, whether or not 

the 2013 letter is Assertion Material, the Disclosing 

Party and its successor (Hitachi and Maxell, respectively) is free to disclose the letter as it sees fit, including to support willful infringement claims.

Dist. Ct. Order at 8–9 (second alteration in original).

The Texas district court, in analyzing and interpreting 

the 2011 Agreement, does not purport to apply California 

law, although the 2011 Agreement states that “the Agreement shall be construed and controlled by the laws of the 

State of California.” See supra. And the 2011 Agreement 

explicitly requires that exclusive jurisdiction is in the “federal courts sitting in Santa Clara County, California” or if 

there is no federal cause of action, then in “the Superior 

Court of Santa Clara County, California.” Id.

The bedrock rule concerning forum selection clauses is 

that when the parties choose the forum for resolution of 

any future dispute involving the Agreement, that choice 

must be respected. Although we see transfer motions on 

the ground of forum non conveniens, I recall none where a 

choice of forum was challenged. The Supreme Court has 

well recognized the distinction between the agreed choice 

of forum, and the vagaries of forum non conveniens. The 

Court has summarized: 

In the typical case not involving a forum-selection 

clause, a district court considering a § 1404(a) motion (or a forum non conveniens motion) must 

Case: 20-115 Document: 39-2 Page: 6 Filed: 04/22/2020
IN RE: APPLE INC. 7

evaluate both the convenience of the parties and 

various public-interest considerations.

* * *

The calculus changes, however, when the parties’ 

contract contains a valid forum-selection clause, 

which “represents the parties’ agreement as to the 

most proper forum.” Stewart, 487 U.S., at 31, 108 

S. Ct. 2239. The “enforcement of valid forum-selection clauses, bargained for by the parties, protects 

their legitimate expectations and furthers vital interests of the justice system.” Id., at 33, 108 S. Ct. 

2239 (Kennedy, J., concurring). For that reason, 

and because the overarching consideration under 

§ 1404(a) is whether a transfer would promote “the 

interest of justice,” “a valid forum-selection clause 

is given controlling weight in all but the most exceptional cases.” Id., at 33, 108 S. Ct. 2239. 

Atlantic Marine Const. Co. v. U.S. Dist. Court for W. Dist. 

of Texas, 571 U.S. 49, 62–63 (2013).

Despite the importance of the parties’ choice of forum, 

and the Court’s recognition that this choice is given controlling weight, my colleagues decline to respect the forum

selected by the parties for these issues. Instead, the district court and now my colleagues analyze the facts and 

confidentiality situation consigned to California, decide 

their merits, apparently under Texas law, and upon this 

decision, they reject the form selection clause in the agreement they are interpreting. That is as improper as it is 

illogical. 

In purporting to decide whether to respect the parties’ 

contractual selection of forum for issues involved in the

contract, my colleagues decide the merits of those issues, 

and then announce that the merits will not be decided under the terms to which the parties agreed at the time of 

contracting, that is, under California law in a federal or 

Case: 20-115 Document: 39-2 Page: 7 Filed: 04/22/2020
8 IN RE: APPLE INC.

state court located in California. Issues of disclosure and 

confidentiality are matters of state law. The merits of 

these contested and complex factual issues require trial, 

not adverse decision on brief motion papers. Nonetheless, 

by agreement of the parties, these merits are consigned to 

California law in a federal or state court located in California.

For state law issues such as the laws of confidentiality 

and commerce, the choice of law may be critical. There is 

a long and uncontroversial history of the rights of commercial parties to agree on the forum and law to apply should 

dispute arise. Surely a party to such agreement can expect 

that this choice will be respected.

My colleagues err in ruling that this selection of California law, and a federal or state court located in California

does not apply because there are additional issues in the 

case. Although Maxell apparently successfully shifted the 

issue to one of forum non conveniens, the laws of contracts 

and the rules of commerce require respect for the Agreement that these parties made in 2011. See Omron 

Healthcare, Inc. v. Maclaren Exports Ltd., 28 F.3d 600, 603 

(7th Cir. 1994) (“The dominant policy in contract cases is 

enforcing the parties’ agreement, the better to promote 

commerce.” (citing M/S Bremen v. Zapata Off-Shore Co., 

407 U.S. 1, 9 1972)).

The proper approach, when it appears that issues related to the 2011 Agreement are relevant to this dispute, is 

to respect the choice-of-law and forum-selection clauses. It 

is not disputed that California law applies to the information and confidentiality issues that we are told are likely 

to require resolution. The parties’ agreement to a federal 

or state court located in California must be respected as a 

matter of contract law, and as a foundation of commercial 

activity supported by reliable judicial process.

The integrity of contracts is the foundation of commerce. Here the contract is between two competent

Case: 20-115 Document: 39-2 Page: 8 Filed: 04/22/2020
IN RE: APPLE INC. 9

commercial entities, Apple and Maxell’s parent Hitachi. 

There is no representation of any impropriety in the 2011 

Agreement.* The judicial obligation is to enforce such contracts. From my colleagues’ denial of the petition for transfer, I respectfully dissent. 

.

* It is not disputed that four of Maxell’s claims of 

willful infringement are based on “notice allegedly provided to Apple during discussions in 2013” and subject to 

the 2011 Agreement. Apple Reply at 3. My colleagues 

agree with Apple that “Apple invites this court to interpret 

the agreement’s preamble, construe defined terms, delve 

into the meaning of the parties’ communications; evaluate 

the scope of the disclosure prohibition; and ultimately summarily dispose of Apple’s contractual defense against Maxell’s willfulness claims.” Id. at 4. However, although these 

matters of interpretation and application of the agreement 

are consigned to the California forum, my colleagues decide 

them here, on motion papers, and decide not to permit decision under California law in a federal or state court located in California. This cannot have been the parties’ 

intention when they entered into this contract.

Case: 20-115 Document: 39-2 Page: 9 Filed: 04/22/2020