Judge Dodging: Apple loses Mandamus Transfer Action This Time

by Dennis Crouch

In re Apple Inc., No. 24-111 (Fed. Cir. 2024)

Federal Circuit has denied Apple’s petition for a writ of mandamus seeking to transfer a patent infringement case from the Western District of Texas to the Northern District of California. The case, Carbyne Biometrics, LLC v. Apple Inc., involves six patents related to authentication and fraud reduction technologies used in Apple devices. U.S. Patent Nos. 10,929,512; 11,475,105; 11,514,138; 9,972,010; 10,713,656; 11,526,886.

Back in May 2023, Carbyne filed the lawsuit in W.D. Tex. Austin division and the case was assigned to Judge Yeakel who promptly retired a few weeks later.  Unlike the cases filed in Waco, Carbyne’s Austin filing was clearly not a case of judge shopping, but is probably explained as forum shopping.  Apple’s HQ is N.D. Cal, and Carbyne appears to be NYC based — neither forum is seen as patentee friendly. Austin is a good choice here because Apple has a billion dollar facility in the city where it manufactures some of the accused devices.

After some shuffling, the case was reassigned to Judge Alan Albright. Although Albright is in the Waco division, he loves patent cases; has extra bandwidth because patent cases have been diverted from his Waco courthouse; and he’s willing to hear cases in Austin.

Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue under Section 1404(a) — arguing that the venue was inconvenient despite the fact that Austin is the company’s second-home.  The opposite of Judge Shopping, I might Apple’s approach here “Judge Dodging.”

Judge Albright indicated his intention to deny the motion in December 2023 and Apple quickly filed a mandamus petition with the Federal Circuit, requesting the court to direct the district court to stay proceedings until the written decision was issued or to transfer the case to the Northern District of California.

While the mandamus petition was pending, Judge Albright issued the written decision denying Apple’s transfer motion. The court found that Carbyne’s infringement contentions implicated both hardware and server-side aspects of the accused products. It then analyzed the traditional transfer factors, finding that the willing witness factor weighed against transfer due to the presence of five Apple employees in Austin with knowledge of the relevant aspects of the accused products. The court also found that the compulsory process factor slightly weighed against transfer, while the remaining factors were neutral. Ultimately, the court concluded that Apple failed to demonstrate that the Northern District of California was clearly more convenient and denied the transfer motion.

On mandamus, the Federal Circuit emphasized the extraordinary nature of mandamus relief and the high standard required for granting such relief. To obtain a writ of mandamus, a petitioner must show a clear and indisputable right to relief, the absence of any other adequate method of obtaining relief, and that the writ is appropriate under the circumstances.  Here, the court found that Apple’s petition failed to make a showing of a clear abuse of discretion.

The parties primarily dispute the “willing witness” factor, which largely turns on the district court’s finding that the accused products’ hardware and server-side functionality are potentially relevant to the infringement issues. Apple looked to show that its Austin-based employees do not possess relevant and material information because, in their view, case is limited to just the software features of the products. But the district court, after considering the scope of the asserted claims and information in possession of these Apple employees, reached a contrary conclusion.

On appeal, the Federal Circuit chose to defer to the district court — recognizing that fact-intensive matters typically entrusted to the district court. In re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010).  “[W]e are not prepared to say that the district court’s assessment on this factor was so clearly wrong that it produced a patently erroneous result.”

= = =

Pending before Judge Albright now is Apple’s 12(b)(6) motion to dismiss — alleging that the asserted patent claims are all ineligible under 35 U.S.C. 101 as directed to an abstract idea.  The briefing includes the color coded exemplary claim below that Apple argues the claim is “directed to the abstract idea of collecting, receiving, and analyzing information about a user—namely, biometric (and, [in some claims], location) information—to enable a transaction.”  One thing that you’ll see here is that the claim requires the step of “determining … that the user is alive.” Although not required in claim 9, the specification indicates that aliveness can be determined “e.g., by taking multiple photographs in rapid succession.”

In its responsive briefing, Carbyne has argued that this claim is not representative and Apple did not overcome the presumption of independent validity of each claim of each patent.  The briefing goes on to explain that the claims “provide a technological improvement over prior authentication techniques for electronic payment transactions by enabling an electronic device to capture and analyze a user’s biometric information to determine that the user is alive. As one example, the claims provide for determining a user’s “aliveness” by taking multiple photographs of the user in rapid succession to ensure that a fraudster is not simply presenting a printed photo of the legitimate user, thus overcoming the flaw in the earlier photo-verification techniques noted above.”



26 thoughts on “Judge Dodging: Apple loses Mandamus Transfer Action This Time

  1. 8

    I think this describes checking someone’s photo ID at the front door.

    Very, very novel & important stuff right here.

    1. 8.1

      I think this describes checking someone’s photo ID at the front door.
      Then file an IPR (or ex parte reexamination) with some written document describing how to check photo ID’s at a front door.

      Let us know how successful you are.

      1. 8.1.1

        How would that serve the purpose of getting everyone involved paid a bunch of money pretending these “inventions” are “intellectual property”?

        After all, we hardly knew that the “fraud detection” arts are vastly served by looking at pictures of people to suggest that they are a) alive and b) the people they purport to be.

        I mean, imagine the R&D needed to come up with that, and the incentives!

      2. 8.1.2

        You seem to have mostly contact with inferior legal minds, WT. Absolute J u n k claims like this are easier to obliterate than you think, especially when you learn to identify, scorn and mock the t r a s h arguments inevitably made by the desperate applicant/patentee behind the grift.

        Still plenty of time to grow up, though! Best of luck.


          Still plenty of time to grow up, though!

          … and join the non-grown-up immature arts…

    2. 8.2


      1. 8.2.1

  2. 7

    Does determining if someone is “alive” indicate whether or not that person is brain dead? There are quite a few people whose body might be functioning but their brain definitely isn’t.

    1. 7.1


    2. 7.2

      +1 (again – damm filters)

    3. 7.3

      “There are quite a few people whose body might be functioning but their brain definitely isn’t.”

      Roh-Roh. Is this a statement about Trump supporters? Or Biden’s?

      Perhaps both?

      (Hey, cut me some slack here. It is Friday afternoon, after all. 🙂

      1. 7.3.1

        “ Is this a statement about Trump supporters? Or Biden’s”

        It’s about people like you who can’t tell the difference between a r a p I s t con artist fraud L I A R bankrupt l o s e r and a decent human being.


          lol – that you really think that Biden is “a decent human being” says more about you than you realize.

          Both options B L 0 W.


            “Both options B L 0 W.”

            Aw, poor widdle baby doesn’t like the choices. Boo hoo hoo. So Baby Billy just chooses to leap up to defend the r a p I s t, con man, serial l i a r, bankrupt n a z i lover whenever the opportunity arises. Poor widdle baby.


              Your one-bucketing is showing.

  3. 6

    Ahhh . . . the dust-kicking and hand-waving is strong in this (Apple) one.

  4. 5

    “Judge Dodging” should not be entertained.

    This is simply Judge Shopping by the other party.

    Funny thing though – those bringing the complaint have the rightful power to choose.

  5. 4

    A method of determine that a user is alive using information.

    Sure, why not. What a farce. Hey but at least Judge Albright can get his rocks off.

  6. 3

    “..filed the lawsuit in W.D. Tex. Austin division and the case was assigned to Judge Yeakel who promptly retired a few weeks later.”

    I have had a District Court judge tell me that they do not want any patent cases on their docket, but this is the most extreme reaction I have heard of. [joke]

    1. 3.1


  7. 2

    Merrick Garland’s antitrust case against Apple — in the news today — is an inevitable result of the Supreme Court’s Alice and eBay decisions.

    When little companies are prevented from obtaining patents on their innovative software businesses and handcuffed in seeking injunctive relief when patents are available, big companies like Apple will take advantage.

    1. 2.1


    2. 2.2

      It will be interesting to see if any part of this new U.S. antitrust (anti-monopolization) suit would somehow specifically challenges Apples reputation for aggressive deep pockets patent litigation defenses in general, or inventions they bought or licensed from willing sellers on an exclusive basis? [I suspect it will focus far more on their leverage of their huge customer-base market-share to get profit-margin-advantageous deals, and incompatibility restrictions?]


          Thanks, and call me old-fashioned, but most of this Apple JD FRCP? “compliant” reads more like an investigative reporter’s overly lengthy sensational news magazine article than a real complaint until it finally gets around to presenting actual statutory AT counts around page 70 or so.

  8. 1

    >Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue

    I wish the Fed. Circuit just said “Sorry, too late.” As is, this looks pretty ugly.

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