Deference to District Courts: Federal Circuit's New Approach to Venue Transfer Petitions

by Dennis Crouch

In a recent order, the Federal Circuit denied Apple’s petition for a writ of mandamus seeking yet again to transfer a patent infringement case from the Western District of Texas (Judge Albright) to the Northern District of California. In re Apple Inc., 24-129 (Fed. Cir. 2024).

Background: In June 2023, Resonant Systems, Inc. sued Apple in the Western District of Texas. The complaint alleges that various Apple products, including mobile phones, computers, and watches, infringe four patents related to haptic feedback — creating tactile sensations in touchscreen devices. U.S. Patent Nos. 8,093,767, 8,860,337, 9,941,830, and 11,152,882

Apple, as is often its strategy, moved to transfer the case to the Northern District of California under 28 U.S.C. § 1404(a). Despite the fact that the tech giant has thousands of employees located in W.D.Tex, the Apple argued that the convenience factors strongly favored transfer, particularly emphasizing that the majority of its engineers responsible for the accused technology were located in California.

Judge Albright denied Apple’s motion to transfer. In his analysis, Judge Albright focused on several key points:

The relevance of third-party supplier Cirrus Logic, based in Austin, Texas, to the infringement allegations.
The presence of sources of proof and connections to the Western District of Texas.
Perceived deficiencies in Apple’s motion and supporting declarations, particularly those of Chang Zhang, an Apple engineer.

Judge Albright found that Apple’s declarations were too narrow in scope, focusing solely on Apple’s branded “Taptic Engine” technology while ignoring other potentially infringing components. He also questioned the clarity of Zhang’s oversight over other relevant Apple engineering teams and noted the lack of specific information about other potential witnesses.

Judge Albright’s decision also faults Apple for failing to provide comparative analysis between Texas and California. In particular, Resonant had requested that Apple provide a list of Texas-based employees who had worked on the accused products, but Apple failed to investigate this issue and apparently “blocked Resonant from identifying them during discovery.” Apple’s reasoning is unclear because it is kept confidential. In particular, Apple provided the following statement during venue discovery: “Apple does not maintain a company-wide list of all the products that each employee works on. This is because Apple [Reason Redacted].”

On mandamus, the Federal Circuit panel (Judges Lourie, Cunningham, and Stark) denied Apple’s petition for a writ of mandamus. The court’s reasoning centered on two main points:

Deference to the district court’s case-specific assessment: The Federal Circuit emphasized that Judge Albright was “uniquely well-positioned” to make a case-specific assessment of the record. This echoes the principle from In re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010), where the court noted the importance of deferring to district courts in these fact-intensive inquiries.
Reasonable findings on convenience: The appellate court found that Judge Albright reasonably concluded that the Western District of Texas is convenient for individuals with relevant and material information to the case.

The Federal Circuit applied the stringent mandamus standard, requiring a “clear abuse of discretion” to overturn the lower court’s decision. In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008).

This decision continues a recent new trend of reduced judicial scrutiny over Judge Albright’s decision-making — particularly venue issues. It stands in contrast to some earlier Federal Circuit decisions that seemed more inclined to grant mandamus relief in similar circumstances. In my opinion, the change is due to W.D.Tex. local rules that no longer allow patent plaintiffs to particularly choose Judge Albright (aka Judge Shopping) by simply filing their case (electronically) in Waco. Rather, Waco-filed patent cases are being distributed among a number of W.D.Tex. judges.

The Importance of Third-Party Witnesses: For me, a key aspect of convenient venue – is whether third-party witnesses will be ready-willing-and-able to show up for trial. While the court can force parties to bring their witnesses to Texas, it typically cannot compel third-party witnesses outside of their geographic area. In this case, the plaintiffs explained that Cirrus Logic supplied components to the infringing system — and that Cirrus and its engineers are based in Austin.

Apple’s Significant Presence in Western District of Texas: In my view, an important factor that is rarely addressed is a defendant’s size and its general presence in the district. Apple is a multi-billion-dollar company that sells many millions of products and services in every district of the U.S. The company particularly has a major footprint in Austin with 10,000 employees and a billion-dollar second headquarters campus in the city. The company has also litigated many cases (patent and otherwise) within the district.

I believe that this substantial local presence should be given weight when considering transfer motions. However, the focus traditionally is on the location of the specific employees and documents related to the accused products. And, as is usual, the Federal Circuit did not explicitly address this aspect of Apple’s connection to the forum.

Scrutiny of Declarant Authority and Scope: The Federal Circuit’s approval of Judge Albright’s critique of Apple’s declarations suggests that courts may increasingly demand more comprehensive and authoritative testimony from parties seeking transfer. The declarations (from both sides) regarding witness and evidence availability often seems to be manufactured for the litigation game rather than truly reflecting the justice principle highlighted by Section 1404(a).

Apple and Google’s persistent venue complaints echo the victimhood narratives of a certain billionaire former president, despite their vast resources and multi-state presence. One can hope that this decision signals a reduction in mandamus actions, particularly from major tech entities whose transfer motions often appear less about genuine inconvenience and more about judge-avoidance strategies.

= = =

In the mandamus, Apple was represented by lead attorney Melanie Bostwick of Orrick, along her team of Jeffrey T. Quilici and Emily Villano. Roger A. Denning and Joy Kete from Fish & Richardson were also on the brief. (Fish is handling the district court litigation, and seemingly hired Orrick for the appeal).

Resonant Systems was represented by lead attorney Reza Mirzaie, along with Qi Tong and Shani M. Williams, all from Russ August & Kabat. This same team is litigating the case before Judge Albright.