Federal Circuit Denies Apple's Petition to Transfer Venue of Patent Infringement Action
Aude Gerspacher | Bloomberg Law
- The Federal Circuit denied Apple’s petition to transfer venue in a patent infringement action, citing Apple’s failure to meet its burden in establishing greater convenience in the transferee venue and Apple’s delay in taking action.
In a nonprecedential decision, the U.S. Court of Appeals for the Federal Circuit denied Apple Inc.’s petition for writ of mandamus for a transfer of venue pursuant to 28 U.S.C. §1404(a). The U.S. District Court for the Eastern District of Texas had denied Apple’s motion to transfer the case to the Northern District of California, and Apple petitioned the Federal Circuit to compel the district court to transfer.
SimpleAir’s Patent Infringement Action
In 2009, SimpleAir, Inc. filed a patent infringement action against Apple, Research-In-Motion (“RIM”), Disney Online, ESPN Enterprises, ABC, and Handmark in the Eastern District of Texas. SimpleAir’s complaint alleged infringement of its patents relating to wireless notifications for mobile computing devices and predicated venue on 28 U.S.C. §1400(b) which authorizes venue jurisdiction over any patent infringement suit where an alleged act of infringement has been committed. Defendants did not dispute that products and services involving wireless notifications are available in the Eastern District of Texas. Apple moved to transfer the case out of the Eastern District of Texas to the Northern District of California based on convenience reasons and location of potential witnesses and evidence. Fifteen months later, citing the location of RIM in Irving Texas and the identification of potential witnesses and documents in or near the Eastern District of Texas, the district court denied Apple’s motion for transfer. More than three months later, Apple filed a petition for writ of mandamus to the Federal Circuit to compel the district court to grant the venue change.
Federal Circuit Denies Petition for Writ of Mandamus
The Federal Circuit agreed with SimpleAir’s argument that Apple’s delay in getting this issue resolved militates against granting the petition. The court noted that not only did Apple wait over three month to petition the Federal Circuit, but it failed to employ any strategy to compel the court to act on its motion to transfer. However, the Federal Circuit recognized that there is a well established line of authority that mandamus may issue to direct the Eastern District of Texas to transfer a case to a more convenient and fair venue. In Re Apple at 3. The court noted that although the writ of mandamus has been used in this context, it has only been granted where the district court has denied a transfer motion without considering the merits or in cases where the district court has blatantly deviated from the established case law.
Apple argued that the district court gave no weight in its analysis to SimpleAir’s connection to the Eastern District of Texas which, Apple contends, is recent and “ephemeral,” having only established an office and incorporated in Texas one month prior to the filing of this action. In Re Apple at 4. However, the Federal Circuit stated that more importantly, Apple did not meet its burden of establishing that the Northern District of California is more convenient. The court noted that, compared to cases where petitions for writ of mandamus has been granted, there are fewer defendants in the transferee venue and potential evidence already identified in the Eastern District of Texas. Other reasons which might weigh in favor of Apple would have been pre-trial and discovery considerations, but the court pointed out that these considerations deserve less weight so close to trial. For these reasons and Apple’s delay, the Federal Circuit denied the petition.
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