1 NOTE: This order is nonprecedential.

2

3 United States Court of Appeals 

4 for the Federal Circuit

5 ______________________

6

7 In re: APPLE INC.,

8 Petitioner

9 ______________________

10

11 2021-187

12 ______________________

13

14 On Petition for Writ of Mandamus to the United States 

15 District Court for the Western District of Texas in No. 6:21-

16 cv-00926-ADA, Judge Alan D. Albright.

17 ______________________

18

19 ON PETITION AND MOTION

20 ______________________

21 Before DYK, PROST, and HUGHES, Circuit Judges. 

22 PER CURIAM.

23 O R D E R

24 Apple Inc. petitions for a writ of mandamus directing 

25 the United States District Court for the Western District of 

26 Texas to vacate its order transferring this case from the 

27 Austin Division of the Western District of Texas to the 

28 Waco Division and to stay that order pending disposition of 

29 the petition. Because the district court cites no statutory 

30 authority for its re-transfer and because Austin remains 

31 the more convenient forum, we grant the petition and di32 rect the district court to vacate its order.

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2 IN RE: APPLE INC.

1 I

2 Fintiv, Inc. filed the underlying patent-infringement 

3 suit against Apple in the Waco Division of the Western Dis4 trict of Texas in December 2018. In September 2019, the 

5 district court judge granted-in-part Apple’s motion to 

6 transfer venue of the action to the Austin Division of the 

7 Western District of Texas, where the same judge continued

8 to preside over the case. Although the district court denied 

9 transfer to Apple’s preferred destination in Northern Cali10 fornia, the district court agreed with Apple that the Austin 

11 Division of the Western District of Texas was, at the time,

12 clearly more convenient for trial.

13 The district court scheduled the trial to begin in Austin 

14 on October 4, 2021. But on September 8, 2021, one month 

15 before trial, the district court ordered the case re-trans16 ferred back to Waco. In its order, the district court ex17 plained only that “[j]ury trials in the Austin courthouse 

18 ha[ve] largely been suspended” due to the COVID-19 pan19 demic, that “it remains uncertain whether the Austin 

20 courthouse will be open for jury trial in the foreseeable fu21 ture,” and that such intervening events “frustrated the 

22 original purpose of transferring this action to the Austin

23 Division.” Order at 1–2, Fintiv, Inc. v. Apple Inc., 6:21-cv24 00926-ADA (W.D. Tex. Sept. 8, 2021), ECF No. 386 (“Re25 Transfer Order”).

26 Apple now petitions this court for a writ of mandamus 

27 directing the district court to vacate the re-transfer order

28 and to stay that order pending disposition of the petition. 

29 Fintiv opposes both requests. We have jurisdiction under 

30 28 U.S.C. §§ 1651 and 1295.

31 II

32 Our review here is governed by Fifth Circuit law. See

33 In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 

34 2008). When a writ of mandamus is sought, we review a 

35 decision to transfer for a clear abuse of discretion. See In re 

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IN RE: APPLE INC. 3

1 Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) 

2 (en banc).

3 In In re Intel Corp., we explained that the only author4 ity for an intra-district re-transfer without full consent of 

5 the parties is 28 U.S.C. § 1404(a). 841 F. App’x 192, 193–95

6 (Fed. Cir. 2020). Under § 1404(a), a district court “should 

7 not re-transfer except under the most impelling and unu8 sual circumstances,” such as unanticipated “post-transfer 

9 events [that] frustrate the original purpose for transfer.” In 

10 re Cragar Indus., Inc., 706 F.2d 503, 505 (5th Cir. 1983)

11 (cleaned up). Further, a re-transfer analysis should be

12 “based on the traditional factors bearing on a § 1404(a) 

13 analysis” and “should take into account the reasons of con14 venience that caused the earlier transfer.” Intel, 841 F. 

15 App’x at 195. 

16 Here, the district court inexplicably failed to perform 

17 that analysis, giving “the parties and reviewing courts no 

18 way of understanding how the court reached its conclusion 

19 and providing no assurance that it was the result of consci20 entious legal analysis.” In re Lloyd’s Reg. N. Am., Inc., 

21 780 F.3d 283, 291 (5th Cir. 2015). The district court artic22 ulated no authority in its order to re-transfer, explaining

23 only that “it remains uncertain whether the Austin court24 house will be open for jury trial in the foreseeable future.” 

25 Re-Transfer Order at 1. Not only is this explanation mini26 mal, but it is also not supported by any analysis of the tra27 ditional § 1404(a) factors. Nor is there any indication that 

28 the Austin courthouse is currently closed for trial. The dis29 trict court even acknowledged that some civil trials are pro30 ceeding in Austin and that there is a possibility of “being 

31 able to use a courtroom in Austin” and “mov[ing] forward 

32 with [the trial] in Austin.” Appx175–77.

33 Fintiv suggests that its position statement before the 

34 district court sufficiently explains the district court’s rul35 ing. But “[a]n explanation must be generated by the court, 

36 not inferred by the appellate court from the submissions of 

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4 IN RE: APPLE INC.

1 the parties,” and a “[c]ontrary rule would require us to 

2 guess the basis for the decision without guidance, essen3 tially reducing us to the role of replacing the district court’s 

4 discretion with our own.” Lloyd’s Reg., 780 F.3d at 290–91.

5 To be sure, the district court gestures to our decision in 

6 Intel by stating that “the intervening COVID-19 pandemic 

7 has frustrated the original purpose of transferring this ac8 tion to the Austin Division.” Re-Transfer Order at 1–2. But 

9 the purpose of transfer under § 1404(a) is “for the conven10 ience of parties and witnesses” and the “interest of justice.” 

11 28 U.S.C. § 1404(a). In originally granting Apple’s motion 

12 to transfer venue to the Austin Division, the district court 

13 performed the required analysis and found that Austin was

14 clearly the more convenient venue. Order Denying Defend15 ant Apple’s Motion to Transfer Venue at 4–17, Fintiv, Inc. 

16 v. Apple Inc., 6:21-cv-00926-ADA (W.D. Tex. Sept. 10, 

17 2019), ECF No. 73. It relied in large part on the fact that 

18 there are no sources of proof in the Waco Division and that 

19 the parties and a relevant third party have a significant 

20 presence in Austin, but not in Waco. Id. at 17. We approved 

21 this reasoning in our order denying Apple’s previous peti22 tion for mandamus seeking transfer to the Northern Dis23 trict of California. See In re Apple Inc., No. 2020-104 (Fed. 

24 Cir. Dec. 20, 2019).

25 On the record before us, it is far from clear that the

26 intervening COVID-19 pandemic has frustrated any of the 

27 original purposes for transferring this case from Waco to 

28 Austin under § 1404(a). Relevant witnesses and evidence 

29 remain in Austin, and the parties continue to maintain 

30 their presences there. Pet. Opening Br. at 20. Furthermore, 

31 the parties have prepared for trial in Austin. And Apple’s 

32 employee witnesses will all be traveling from California, 

33 from which there are no direct flights to Waco. Pet. Reply 

34 at 9. So far as the briefing before this court reflects, the 

35 only factor that may have changed as a result of the 

36 COVID-19 pandemic is the public interest “court-conges37 tion” factor—which seems, at most, to slightly weigh in 

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IN RE: APPLE INC. 5

1 favor of re-transfer. But as we have said previously, this 

2 factor is the “most speculative” of the factors bearing on 

3 transfer and “should not alone outweigh all . . . other fac4 tors.” In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 

5 2009). This is particularly so here, given the district court’s 

6 acknowledgement that there is a possibility of “mov[ing] 

7 forward with [the trial] in Austin.” Also, court congestion 

8 was not a factor relied on by the district court as a basis for 

9 transferring the case to Austin.

10 Under these circumstances, where the district court 

11 has failed to perform the requisite § 1404(a) analysis and 

12 where Austin remains the more convenient forum, the dis13 trict court’s decision to re-transfer this case back to the 

14 Waco Division amounts to a clear abuse of discretion. 

15 Accordingly,

16 IT IS ORDERED THAT:

17 (1) The petition for a writ of mandamus is granted. The 

18 district court’s September 8, 2021 order re-transferring the 

19 trial from Austin to Waco is vacated and we remand with 

20 instructions that this action shall proceed in the Austin Di21 vision of the United States District Court for the Western 

22 District of Texas.

23 (2) The motion to stay is denied as moot.

October 01, 2021 

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

24

25 s31

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