Who Says its Not Convenient? Mandamus on 1404(a) Convenience

by Dennis Crouch

In re Apple (Apple v. Uniloc), Misc. Docket No. 20-135 (Fed. Cir. 2020)

In November 2020, the Federal Circuit granted Apple’s mandamus petition and ordered the case of Uniloc v. Apple to be transferred from W.D.Tex. (Albright, J) to Apple’s other home-court of N.D. Cal.  In the Federal Circuit’s opinion, the district court had clearly abused its discretion in finding that N.D. Cal. was not clearly the more convenient forum.  Notice the double-use of the word clearly above — the district court will transfer only when the proposed forum is “clearly more convenient”; and mandamus will only be granted for “clear abuse of discretion.”

Uniloc has now petitioned the court for en banc rehearing–arguing that the appellate panel failed to provide the double-deference required for mandamus review of a discretionary transfer decisions. As Judge Moore wrote in her dissent, “There is no more deferential standard of review.

I remember talking with soon-to-be Chief Judge Rader back in 2009 about the court’s most important opinions of the term.  My view for top-on-the-list was In re TS Tech USA Corp., No. 09-M888 (Fed. Cir. Dec. 29, 2008).  That was the first case where the court granted mandamus on a denial of venue transfer under 28 U.S.C. § 1404(a). At that time, patent litigation was highly concentrated in the Eastern District of Texas, and the proper venue statute, 28 U.S.C. § 1400(b), had been fully nullified by the Federal Circuit.  E.D. Tex. remained a hot venue in patent cases following TS Tech, even as district court patent litigation declined based upon eligibility dismissals and the rise of administrative trials in the form of inter partes review (IPR). The real venue hammer came down with the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).  In that decision, the court reinvigorated the notion of “proper venue” under § 1400(b).  Now, patent cases can only be sued in districts within where the defendant is incorporated or where where the defendant has infringed the patent and keeps a regular-and-established-place-of-business.  By closing its Plano, TX Apple Store, Apple was able to avoid the E.D. Tex. because venue was no longer proper.

In my view this history is important.  The pre-TC Heartland nullification of the proper-venue statute (§ 1400(b)) was a but-for cause of the E.D. Tex. concentration “problem”; and the Federal Circuit used the convenient-venue statute (§ 1404(a)) to relieve that policy pressure.  Now that proper-venue has been revitalized, it is time for the court to also reconsider its approach to convenient-venue.

In this case, it is clear that W.D. Texas is a proper venue for Apple; It also seems like it is pretty darn convenient. Apple has 8,000+ employees in the district and maintains its second-largest headquarters outside of Cupertino. One of the accused products is made in the district. And, even if Apple needs to fly-in witnesses it will be OK because the company is in the process of building its own 192 room hotel in the district.

= = =

Extraordinary Writ?: I may do a separate essay that focuses more on the legal issues of the petition, but I thought I would leave-of with an interesting statistic from the petition:

Since 2008, [the Federal Circuit] has issued over seventy mandamus decisions; the Fifth Circuit by comparison has issued seven. And this Court grants the “exceptional remedy” of mandamus in approximately 1-out-of-3 petitions.

Petition at 2.


18 thoughts on “Who Says its Not Convenient? Mandamus on 1404(a) Convenience

  1. 6

    This cannot be the proper interpretation of the law. It is never abuse of discretion to not transfer a case. It is only abuse of discretion when a lazy judge improperly transfers a case. This is ridiculous to force a judge to transfer a case. The Federal Circuit is legislating from the bench.

    Where does it say a judge must transfer a case when it is more convenient for the parties and witnesses? I can’t find that law anywhere.

    1. 6.2

      The Federal Circuit is legislating from the bench.

      This is a strange gripe. Forum non conveniens is a common law doctrine. Yes, they are “legislating from the bench.” That is what common law doctrines are—legislation from the bench.

      1. 6.2.1

        I think that the larger issue is in the general LACK of understanding of when it is appropriate to apply Common Law – and the limitations on the judiciary in regards to ANY application of Common Law.

        Our larger system of government does NOT permit unbridled Common Law — something that only too often (even) attorneys
        to grasp.


          I will cheerfully concede that this is not really my bailiwick, so if you think that I am running off the rails here, maybe I am. What binding authority would you cite to show that the CAFC may not implement 28 U.S.C. §1040(a) as it has done here? If there is no such binding authority, then my comment above about judge-made law stands.


            You need “binding authority” for limitations on how the judicial branch may “implement” statutory law?

            Are you really an attorney, Greg?

            Your comment about judge made law needs a serious reality check. This IS the United States, after all. The land of limited government, replete with checks and balances. The notion that the judicial branch is fully free to do whatever they want absent “binding authority” appears to not understand the single most “binding authority” undergirding ALL of US law.


          Good point, but as this Fed. Cir. mandamus opinion notes: “..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.”).”


            … allows or demands?

            (serious question – traveling right now, so have not checked your case cites)

  2. 5

    The fact that the CAFC hears more mandamus petitions than other circuits is not remarkable in the least bit. The CAFC has exclusive jurisdiction over patent cases, so any 1404(a) mandamus in a patent case would of course go there. Additionally, patent cases are also far more susceptible to venue manipulation because the tort of infringement isn’t specific to any particular venue; against larger companies, acts of alleged infringement generally occur in every district in the United States. Compare this to a typical tort suit such as a car accident, where the injury typically occurs in a particular easily-identified district. Suits like In re Volkswagen (5th Cir. 2008), in which a plaintiff sues in the Eastern District of Texas for an automobile accident that occurred in Dallas (Northern District), are actually pretty rare and rarely filed these days. Patent suits filed in districts with tenuous connections to the parties and the underlying events, on the other hand, are more common today than suits filed in more appropriate districts.

    1. 5.1

      LR: “Patent suits filed in districts with tenuous connections to the parties and the underlying events, on the other hand, are more common today than suits filed in more appropriate districts.”
      Indeed. Exhibit A: how did suddenly this year 20% of all new U.S. patent suits get filed before the same single judge in Waco West Texas? Because “it is clear that W.D. Texas is a proper venue .. [and] pretty darn convenient? ” Really?

      1. 5.1.1

        Are you confusing “convenient” and “most convenient?”

        IF you want a bright-line rule that ONLY in the “most convenient” districts, you will invoke gamesmanship of the most detrimental kind – WAY MORE than what you see with ‘shopping’ for forums in which judges advertise that they will look at patent rights without the taint from the anti-patent Supreme Court (and the simians in cages that they have trained).

        Be (VERY) careful of what you wish for Paul – that type of ‘logic’ becomes only too easily morphed into ALL TYPES of “Ends justify the Means” actions.

  3. 4

    If the CAFC weren’t doing much more mandamus business than the other circuits, THAT would be a surprise. Cases from all districts flow to one court; of course they are concentrated.

    Whatever the venue rules may be, they should consider material differences in district court procedure as judicially undesirable and against the public interest as a policy matter.

    Every court will have local variation, some of that will be material & some won’t. This will be case dependent as well.

    If litigants are maneuvering extravagantly to avoid a venue, such as closing facilities etc. , and the CAFC finds the variations potentially material, it should order the parties, and the judge, to stipulate to acceptable process in both proposed venues as a condition of the appeal. Judicial freedom is important, but due process demands some kind of balance between districts in specialized forms of litigation.

    If that is beyond the CAFC’s proper powers (and I think not considering…), Congress should act.

    1. 4.1

      should consider material differences in district court procedure as judicially undesirable and against the public interest as a policy matter.

      You are (or perhaps better stated as ‘should be’) aware that as a general rule for all matters, the Supreme Court has long pushed in the opposite direction, eh?

      The notion of such ‘bright lines’ does NOT register with the Supreme Court’s notion of ‘public interest as a policy matter.’

      Hence: broken score boards and Gordian Knots.

  4. 3


    Since when does the CAFC hold itself to that which it holds others to?

    Since when does the CAFC apply stare decisis?

    Like SCOTUS . . . only when it suits them.

    Only then.

  5. 2

    Re: “Since 2008, [the Federal Circuit] has issued over seventy mandamus decisions; the Fifth Circuit by comparison has issued seven. And this Court grants the “exceptional remedy” of mandamus in approximately 1-out-of-3 petitions.”
    Even assuming this is correct, that is less than 6 petitions per year and only 2 granted. Furthermore, most were disputes in recent years over the reapplication of, and disputed statutory interpretation factual requirements for, the special patent venue statute, which of course no other circuit court has to deal with. So not even a valid comparison. The few granted mandamus petitions relating to inconvenient forums are almost entirely from only two unique Texas courts routinely refusing transfers, and were based on a 5th Cir. mandamus decision in the Volkswagen case, not initiated by the Fed. Cir.
    Far rarer than granted mandamus petitions are grants of en banc reviews of them. Has the Fed. Cir. ever granted one?

    1. 2.1

      As the Fed. Cir. already considered in this case, this is a patent suit about certain specific software features of Apple products for which relevant witnesses are not going to be from salespersons from any mere Apple Store in WDTX. The accused features were not designed or built or patented in WDTX by either party. E.g., “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..”

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