N OTE : This order is nonprecedential

. 1

2 

# United States **Court of Appeals** 

3 

# for the Federal Circuit

4

______________________ 5

6

In re : APPLE INC., 7

Petitioner 8

______________________ 9

10

2021

- 187 11

______________________ 12

13

On Petition for Writ of Mandamus to the United States 14

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

- 15

cv

- 00926

- ADA, Judge Alan D. Albright. 16

______________________ 17

18

ON PETITION AND MOTION 19

______________________ 20

Before D YK

, P ROST

, and H UGHES

, Circuit Judges

. 21

P ER C URIAM

. 22

O R D E R 23

Apple Inc. petitions for a writ of mandamus directing 24

the United States District Court for the Western District of 25

Texas to vacate its order transferring this case from the 26

Austin Division of the Wes tern District of Texas to the 27

Waco Division and to stay that order pending disposition of 28

the petition . Because the district court cites no statutory 29

authority for its re

- tra nsfer and b e cause Austin remains 30

the more convenient forum , we grant the petition and di31

rect the district court to vacate its order. 32 Case: 21-187 Document: 23 Page: 1 Filed: 10/01/2021IN RE : APPLE INC

. 2

I 1

Fintiv , Inc. filed the underlying patent

- infringement 2

suit against Apple in the Waco Division of the Western Dis3

trict of Texas in December 2018. In September 2019, the 4

district court judge granted

- in

- part Apple’s motion to 5

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

Western District of Texas, where the same judge continue d 7

to preside over the case

. Although the district court denied 8

transfer to Apple’s preferred destination in Northern Cali9

fornia, the district court agreed with Apple that the Austin 10

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

clearly more convenient for trial. 12

T he district court scheduled the trial to begin in Austin 13

on October 4, 2021. But on S eptember 8, 2021, one month 14

before trial, the district court ordered the case re

- trans15

ferred back to Waco . In its order, the district court ex16

plained only that “[j]ury trials in the Austin courthouse 17

ha[ve] largely been suspended” due to the COVID

- 19 pan18

de mic, that “it remains uncertain whether the Austin 19

courthouse will be open for jury trial in the foreseeable fu20

ture,” and that such intervening events “frustrated the 21

original purpose of transferring this action to the Austin 22

Division

. ” Order at 1

– 2, Finti v, Inc. v. Apple Inc.

, 6:21

- cv

23

00926

- ADA (W.D. Tex. Sept. 8, 2021)

, ECF No. 386 (“Re

24

Transfer Order”)

. 25

Apple now petitions this court for a writ of mandamus 26

directing the district court to vacate the re

- transfer order 27

and to stay that order pending disposi tion of the petition. 28

Fintiv opposes both requests. We have jurisdiction under 29

28 U.S.C. §§ 1651 and 1295. 30

II 31

Our review here is governed by Fifth Circuit law

. See 32

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

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

decision to transfer for a clear abuse of discretion

. See In re 35 Case: 21-187 Document: 23 Page: 2 Filed: 10/01/2021IN RE : APPLE INC

. 3

Volkswagen of Am., Inc. , 545 F.3d 304 , 3 10 (5th Cir. 2008) 1

(en banc). 2

In In re Intel Corp.

, we explained that the only author3

ity for an intra

- district re

- trans fer without full consent of 4

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

– 95 5

(Fed. Cir. 2020)

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

not re

- transfer except under the most impelling and unu7

sual circumstances ,” such as unanticipat ed “ post

- transfer 8

events [that] frustrate the original purpose for transfer

. ” In 9

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

(cleaned up)

. Further, a re

- transfer analysis should b e 11

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

analysis ” and “ should take into account the reasons of con13

venience that caused the earlier transfer .” Intel

, 841 F. 14

App ’ x at 195

. 15

Here, t he district court inexplicably failed to perform 16

that analysis, g i v ing “the parties and reviewing court s no 17

way of understanding how the court reached its conclusion 18

and provid ing no assurance that it was the result of consci19

entious legal analysis.” In re Lloyd’s Reg. N. Am., Inc.

, 20

780 F.3d 283, 291 (5th Cir. 2015)

. The district court artic21

ulated no authority in its order to re

- transfer, explaining 22

only that “it remains uncertain whether the Austin court23

house will be open for jury trial in the foreseeable f uture .” 24

Re

- Transfer Order at 1

. Not only is this explanation mini25

mal

, but it is also not supported by any analysis of the tra26

ditional § 1404(a) factors. Nor is there any indication that 27

the Austin courthouse is currently closed for trial. The dis28

trict cour t even acknowledged that some civil trials are pro29

ceeding in Austin and that there is a possibility of “being 30

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

with [the trial] in Austin.” Appx 175

– 77. 32

Fintiv suggests that its position statement before the 33

district court sufficiently explains the district court’s rul34

ing. But “[a]n explanation must be generated by the court, 35

not inferred by the appellate court from the submissions of 36 Case: 21-187 Document: 23 Page: 3 Filed: 10/01/2021IN RE : APPLE INC

. 4

the parties

, ” and a “[c]ont rary rule would require us to 1

guess the basis for the decision without guidance, essen2

tially reducing us to the role of replacing the district court’s 3

discretion with our own.” Lloyd’s Reg.

, 780 F.3d at 290

– 91. 4

To be sure, t he district court gestures to ou r decision in 5

Intel by stating that “the intervening COVID

- 19 pandemic 6

has frustrated the original purpose of transferring this ac7

tion to the Austin Division.” Re

- Transfer Or der at 1

– 2. But 8

the purpose of transfer under § 1404(a) is “for the conven9

ience of parties and witnesses” and the “interest of justice.” 10

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

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

performed the required analysis and found that Austin was 13

clearly the more conven ient venue. Order Denying Defend14

ant Apple’s Motion to Transfer Venue at 4

– 17

, Fintiv, Inc. 15

v. Apple Inc.

, 6:21

- cv

- 00926

- ADA (W.D. Tex. Sept. 10

, 16

20 19 )

, ECF N o. 73. It relied in large part on the fact that 17

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

the parties and a relevant third party have a significant 19

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

this reasoning in our order denying Apple’s previous peti21

tion for mandamus seeking transfer to the Northern Dis22

trict of California. See In re Apple Inc.

, No. 2020

- 104 (Fed. 23

Cir. Dec. 20, 2019)

. 24

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

intervening COVID

- 19 pandemic has frustrated any of the 26

original pur poses for transferring this case from Waco to 27

Austin under § 1404(a) . R elevant w itnesses and evidence 28

remain in Austin , and the parties continue to maintain 29

their presences there

. Pet. Op ening Br. at 20. Furthermore, 30

the parties have prepared for trial in Austin

. And Apple’s 31

employee witnesses will all be traveling from California

, 32

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

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

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

COVID

- 19 pandemic is the public interest “ court

- conges36

tion ” factor

— which seems

, at most

, to slightly weigh in 37 Case: 21-187 Document: 23 Page: 4 Filed: 10/01/2021IN RE : APPLE INC

. 5

favor of re

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

factor is the “most speculative” of the factors be aring on 2

transfer and “should not alone outweigh all

. . . other fac3

tors.” In re Genentech, Inc ., 566 F.3d 1338, 134 7 (Fed. Cir. 4

2009)

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

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

forwa rd with [the trial] in Austin

. ” Also, court congestion 7

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

transferring the case to Austin. 9

Under these circumstances, where the district court 10

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

where Austin remains the more convenient forum , the dis12

trict court’s decision to re

- transfer this case back to the 13

Waco Division amounts to a clear abuse of discretion. 14

Accordingly

, 15

I T I S O RDERED T HAT : 16

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

district court’s September 8, 2021 order re

- transferring the 18

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

instructions that this action shall proceed in the Austin Di20

vision of the United States District Court for the Western 21

District of Texas

. 22

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

O c t o b e r 0 1 , 2021

Date F OR THE C OURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

24

s31 25 Case: 21-187 Document: 23 Page: 5 Filed: 10/01/2021