In In Re Apple Inc. (Fed. Cir. 2020), a mandamus petition from the Western District of Texas, the Federal Circuit found that Apple demonstrated a clear and indisputable right to issuance of the writ because the District Court’s denial of Apple’s request for transfer was a clear abuse of discretion. In determining whether the District Court’s denial clearly abused its discretion, the Federal Circuit analyzed the transfer request under the Fifth Circuit’s private and public factors. In its assessment of the relevant factors, the Federal Circuit found several errors in the District Court’s application of the factors to the circumstances. For example, with respect to the fourth private factor which aims to assure an “easy, expeditious and inexpensive” trial, the Federal Circuit found that the District Court improperly found the factor to heavily weigh against transfer because “significant steps” were taken by the District Court; however the Fed. Cir. emphasized that such steps were taken after Apple’s motion for transfer was filed.
Uniloc also argued that Apple waived a number of its arguments that were presented for the first time in Apple’s reply brief filed after the district court’s transfer order, rather than the mandamus petition filed before the district court’s transfer order. The Federal Circuit again emphasized that the motion for transfer should have taken top priority, rather than the district court proceeding with the Markman hearing and claim construction. In view of this, the Federal Circuit exercised its discretion to not waive Apple’s arguments, which were presented at the first opportunity after the transfer order, and further granted Uniloc’s motion to file a sur-reply in opposition to Apple’s newly presented arguments.
The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-135.ORDER.11-9-2020_1682410.pdf