Federal Circuit Usurps Judge Albright’s Judicial Power

by Dennis Crouch

In re Apple (Fed. Cir. 2020)

The Federal Circuit has granted Apple’s petition for writ of mandamus and ordered the infringement lawsuit against the tech-giant be moved from W.D. Texas (Waco) to N.D. Cal. — finding that the company’s convenience is paramount.  The majority opinion was written by Chief Judge Prost and joined by Judge Hughes.  Judge Moore wrote in dissent.  Judge Albright is the W.D. Tex. Judge who had refused to transfer the case.

28 U.S.C. § 1404(a) (partially) codified the common law doctrine of forum non conveniens. The statute:

(a) For 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.

28 U.S.C. § 1404(a). The statute provides the original district court with discretionary authority to transfer a case to another district upon a showing that a different venue is “clearly more convenient.”   Although that abuse-of-discretion might be reviewed on appeal after final-judgment in a case, the error would probably be seen as harmless by that point. (Court’s don’t order new trials on convenience grounds unless they actually and meaningfully impacted the trial.) Thus, in a number of cases the Federal Circuit has granted mandamus on § 1404(a) issues.  Still, the approach is controversial because (1) district courts are given substantial deference regarding their 1404(a) determinations; and (2) mandamus is such an extraordinary writ.

Writ of mandamus is “an extraordinary remedy available [only] to correct a clear abuse of discretion or usurpation of judicial power.” Slip. Op. Note here that the standard of “clear abuse of discretion” goes beyond ordinary “abuse of discretion.”  As Judge Moore wrote in dissent: “there is no more deferential standard of review than clear abuse of discretion.”  The appellate panel found that high standard met.

In my experience, § 1404(a) arguments have become highly-formal and fairly divorced from the “interest of justice” command found in the statute. The majority opinion here nitpicks its way through Judge Albright’s case-management style and opinion in a way that goes beyond even typical de novo review of claim construction on an issue that is traditionally fully within the district court’s discretion. In particular, the majority appears to take real issue with Judge Albright’s express and actual focus on moving his docket forward quickly and efficiently.

As you might expect, the dissent is more interesting. Judge Moore:

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.” Nor is it an invitation for us to criticize the way our district court colleagues generally manage their dockets, or as the majority puts it, “barrel” ahead on the merits in any given case. . . .

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.

Slip Op. (Dissent by Judge Moore).  The majority responds in kind:

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. District courts have no discretion to make these kinds of
errors. And when such errors accumulate to produce a patently erroneous result, as they have here, we are obliged to act

Id. (Majority by Chief Judge Prost).  The majority spends pages walking through the various “misapplications of law to fact” by the District Court.  While none of the errors were dispositive, their collective weight was sufficient for the majority to find that the only answer is to order transfer.

Section 1404(a) is simply written, asking courts to consider “convenience of parties and witnesses, in the interest of justice.”  However, the 5th Circuit has turned that open approach into an eight factor analysis:

  • Private Factors
    1. Private: Relative ease to access to sources of proof;
    2. Private: Availability (and need for) compulsory process to secure witness attendance;
    3. Private: Cost of attendance for willing witnesses; and
    4. Private: Other practical considerations associated with and “easy, expeditious and inexpensive” trial.
  • Public Factors
    1. Public: Administrative difficulties associated with court congestion;
    2. Public: Local interest in having a case decided ‘at home’;
    3. Public: Familiarity of the forum with the law that will govern the case; and
    4. Public: Avoidance of potential conflict-of-law problems.

In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc)  Here, we’re using 5th circuit law since this is a procedural issue, not a patent-law issue. In this opinion, the Federal Circuit appears to add additional tricks-and-traps to the analysis.

Again the dissent:

[The district court] ultimately found … 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.

Id. This is the baseline for me. If none of the convenience factors are determinative then there is no clear abuse of discretion or patent travesty of justice.

= = = =

Section 1404(a) as a Pretext: The obvious background to this case is that Apple believes it will have a better outcome of the case, and with more significant delays, if it is assigned to a judge in the Northern District of California rather than Judge Albright. The convenience argument is simply a pretext on that front.

= = = =

Finally, we should all note that the convenient-venue analysis is entirely different than the proper-venue analysis that does not provide discretion in any way.  Apple agrees that venue is proper in W.D. Tex. If you remember, Apple previously closed its Apple Store in Plano to avoid proper venue in E.D. Tex. but has thousands of employees in W.D. Tex. and is in the midst of building a $1 billion campus in Austin (where this trial likely would have been held).

43 thoughts on “Federal Circuit Usurps Judge Albright’s Judicial Power

  1. 7

    This is an odd set of opinions and an odd case.

    Behind all of these transfer mandamus orders seems to be a tension behind two ideas: (1) courts of appeals should be extremely deferential when considering a district court’s discretionary orders on mandamus review, and (2) courts of appeals should be able to police creative district court shenanigans that encourage forum shopping. The second point is debatable, and courts and litigants will usually state it in more polite terms, but that seems to be what’s driving a lot of these decisions: does the court of appeals think the district court was fairly considering whether to transfer the case, or was it going out of its way to keep a case it shouldn’t?

    The beginning of all of these transfer-mandamus cases in the Federal Circuit was an en banc 5th Circuit decision in which amicus briefs argued over whether the Eastern District of Texas was systematically hanging onto cases it shouldn’t have. Prof. Crouch has been suspicious of this line of cases since the beginning, and probably reasonably so:

    Comment: In patent cases, these venue games tend to approach the absurd, and I am surprised that the Federal Circuit has taken these cases so seriously. Defendants want to move out of the Eastern District of Texas because they fear trial and the potential major damage award. The “convenient venue” argument is concocted because the Eastern District of Texas is clearly a “proper forum” with personal jurisdiction over the defendants.

    link to patentlyo.com

    Anyone who cares about this issue should read the 5th Circuit’s en banc Volkswagen decision, and the AIPLA and ED Texas “ad hoc committee” amicus briefs.
    The opinion is here.
    link to scholar.google.com
    The AIPLA brief is covered here and is on Westlaw
    link to patentlyo.com
    The ad hoc committee brief is here
    link to cdn.patentlyo.com

    The 5th Circuit majority wrestles with the question of deference at pp. 309-310 before ultimately granting mandamus.

    The 5th Circuit dissent sounds a lot like Judge Moore’s dissent in the Apple case.

    1. 7.1

      Excellent del. Especially your first paragraph. But also that too many people are not aware of the 5th Cir. VW decision [not a patent case] you note re preferential transfers of cases to the district where the witnesses and documents are from a district where there are none, and that this 5th Cir. decision applies to all Texas districts, and has been properly followed by the Fed. Cir. for patent cases in Texas as Circuit supervisory authority.

      1. 7.1.1

        P.S. As to the concern for mandamus overuse, how many mandamus petitions have been granted in patent cases by the Fed. Cir. OTHER than from small towns in Texas actively trying to collect and keep a large percentage of total U.S. patent litigation in a lucrative local industry? I would bet Dennis that it as is as small a percentage as ever, but he has the statistical research tools to prove otherwise if he wants to.


          Good points Paul.

          Even such, would a court aiming to provide such a service be — in itself — wrong in any way?

          I could see if the actions of that court were to be, oh, rewriting statutory law, that there would be a problem.

          But I have to say, that your intonation smacks of a “Oh N0es Tr011s” vibe.

    2. 7.2

      dcl, the reason the tension between (1) and (2) exists is because the vast majority of federal district judges decide transfer motions impartially, without procedural shenanigans or an agenda that infects the decision-making process. It makes no sense to dismantle the decades-old framework of deference for transfer motion mandamus petitions, simply because of a couple of outlier judges who have some agenda and are believed to be abusing the system. So the Federal Circuit resolves (1) and (2) the same way every other appellate court does–pretend that they’re applying the same consistent deferential standard of review, but in reality, provide a more thorough and searching review and analysis of discretionary decisions issues from the judges who are perceived to be problems.

  2. 6

    The FC could have same some time and paper by writing a much shorter opinion:
    “All animals are equal, but some animals are more equal than others. George Orwell, Animal Farm (1945). Reversed.”

  3. 5

    Ooh, Dennis took down my comment. I’ll wager it was because of something not nice I said about Prost, so I’ll try again without that part:

    I don’t know what’s worse: the fact that two judges would go to such great lengths to make it look like there’s a legal basis to their decision, when clearly there’s none (as Judge Moore notes), and they simply are annoyed with Judge Albright; or the fact that those two judges think that people like us are so dumb that we’ll believe the @#$% they put in their opinion.

    1. 5.2

      The notion that “not nice” is equated with “take down” is absolutely appalling.

      The better path would be to show the “not nice” is not accurate.

  4. 3

    “..reliance on clearly erroneous fact findings, erroneous conclusions of law, or misapplications of law to fact” are not “nitpicking.” Furthermore, this new Waco E.D.TX judge deliberately refused to decide the preliminary transfer motion long enough to set pre-trial orders to try to prevent it, which I am quite sure this Court found disturbing.

    1. 3.1

      No doubt some CAFC judges were keen to nip in the bud a possible issue in W.D. Tex. that at one point required something like 10 mandamus writs issued to E.D. Tex. judges in the span of two years. As to outcomes, much ink has been spilt on whether the district of trial is dispositive. I’m of the belief that it is not as to the ultimate outcome, but it often is as to the means of getting there. Contrary to Dennis’s snarky contention, a granted 12(b) or summary judgment motion upheld on appeal is a faster and more efficient resolution than an overturned jury verdict remanded to the district court, notwithstanding the speed of the district court’s docket.

  5. 1

    The obvious background to this case is that Apple believes it will have a better outcome of the case, and with more significant delays, if it is assigned to a judge in the Northern District of California rather than Judge Albright. The convenience argument is simply a pretext on that front.

    I don’t know if this the only valid interpretation. Given the previous discussion on what some feel is Judge Alright’s questionable ethical behavior, an equally valid interpretation is that they figured they’d be better off not having this sort of judge.

    1. 1.1

      … says the Ordinary Squirrel who screamed “Ethics Violation” against Iancu, then disappeared when the pertinent law was provided…

      Gee, how compelling.


            You were not totally ignored and almost got somebody to “engage” with you. My colleagues have decided you will receive twenty (20) US dollars.


              Thank$ pal.

              Have you figured out yet what is telling about your lack of originality on a meme that you wish to project onto me with your obsess10n?


                The mark is still “engaging” with you. My colleagues have decided there will be a sizable Christmas bonus for you.


            Indeed, IMHO, Iancu is doing a good job restoring the rule of law and importantly moving PTAB to work in harmony with the Art III courts. Thereby providing some stability and much needed predictability to patent system.


              He is trying. But I am curious as to why Squirrel is so upset. Is there some specific act from Iancu that Squirrel finds especially appalling? Maybe that tweet? Of course, Squirrel went apoplectic, but then disappeared when the basis of his rant was exposed, so, it is likely here that Squirrel also disappears without providing any substantive backing for his feelings.


            He is a Trump toady who used his office and the communicative apparatus of his office to campaign for Trump. That is a violation of the Hatch Act, as quoted by Paul. It may not be a huge violation compared to other federal officers recently, but it is a violation. Get him out of there. If you want to stay across administrations, you should stick to your lane and not stick your neck out like he did.


                In retrospect, after the heat of the moment has worn off, I don’t think it would be enough for him to resign. But, I definitely think that it is enough that he shouldn’t move on with the next administration.


              You don’t know what you are talking about. Or even worse, you do not care that the Hatch Act section on point was shared with you and should have disabused you of your emotional rant.

              Come back when you actually have something substantive to pin your emotions to.


                My analysis is based on the text of the Hatch Act, I do not understand your argument that there is some textual feature of the Hatch Act that makes this behavior not a violation.

                But, I’ll just put this here. By the Department of Commerce’s own guidance, it is a violation.

                1. Thank you for the link.

                  Nothing in that link supports your contention that a violation of the Hatch Act occurred.

                2. Your false assertion is that I do not understand.

                  I do understand.

                  That’s fine if you don’t think that Squirrel’s ‘read’ was off in the least. Nothing in the Harch Act — in particular — nor the newly supplied link supports the notion that Iancu violated the Hatch Act.

                  This comes from a proper understanding of law — I fully give that any lay person who does not get how to read and understand law can themselves (like Squirrel, and obviously you piggybacking on Squirrel) can have ‘their read’ come out with some view that is not in accord with the proper legal view.

                  I did attempt to have Squirrel actually point to the section of the Hatch Act that he was relying on. Squirrel chose not to. So while it may be difficult then for you to read his mind, maybe you want to take up that point and provide the specific support directly from the Hatch Act.

                  But — like links — you seem unwilling (unable) to DO answers…

                3. Your false assertion of Hatch is noted.

                  Maybe read the section that I have already noted.

                  Or, you can also check out what LodeRunner stated.

                  I know I know, you are only obsessed over me.

                4. Except, no such falsity in my assertion TO note there Shifty.

                  Feel free to actually provide even a hint of the falsity.

                5. Your ‘bold proclamation” loses its steam on the multiple cut-n-pastes that you have used across the many threads in which you are displaying your obsess10n over me.

                  It’s telling that you have no creativity.

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