throbber
Case: 22-162 Document: 17 Page: 1 Filed: 09/19/2022
`
`Miscellaneous Docket No. 22-162
`
`
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`IN RE APPLE INC.,
`
`Petitioner.
`
`
`
`
`On Petition for Writ of Mandamus to the
`United States District Court for the
`Western District of Texas
`No. 6:21-cv-01101-ADA, Hon. Alan D Albright
`
`
`
`APPLE INC.’S REPLY IN SUPPORT OF EMERGENCY MOTION
`FOR A STAY OF PROCEEDINGS IN THE DISTRICT COURT
`PENDING RESOLUTION OF APPLE’S MANDAMUS PETITION
`
`
`
`Andrew N. Thomases
`Andrew T. Radsch
`ROPES & GRAY LLP
`1900 University Avenue,
`6th Floor
`East Palo Alto, CA 94303
`
`Melanie L. Bostwick
`Lauren A. Weber
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`Counsel for Petitioner
`
`
`
`
`
`

`

`Case: 22-162 Document: 17 Page: 2 Filed: 09/19/2022
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ...................................................................... ii
`INTRODUCTION ...................................................................................... 1
`ARGUMENT ............................................................................................. 2
`I.
`Apple’s Petition Makes A Compelling Case For
`Mandamus. .............................................................................. 3
`II. Absent A Stay, Apple Would Be Irreparably Harmed
`By Participating In Substantive Proceedings In Texas. ........ 6
`III. A Brief Stay Would Not Harm Aire. ..................................... 10
`IV. The Public Interest Favors A Stay. ...................................... 11
`CONCLUSION ........................................................................................ 12
`CERTIFICATE OF COMPLIANCE
`
`
`i
`
`

`

`Case: 22-162 Document: 17 Page: 3 Filed: 09/19/2022
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`Cases
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ..................................................... 1, 5, 8
`E-Watch, Inc. v. Lorex Can., Inc.,
`No. H-12-3314, 2013 WL 5425298 (S.D. Tex. Sept. 26, 2013) ........... 11
`In re EMC Corp.,
`501 F. App’x 973 (Fed. Cir. 2013) ......................................................... 7
`In re Google Inc.,
`No. 2015-138, 2015 WL 5294800 (Fed. Cir. July 16, 2015) ......... 5, 6, 7
`Hilton v. Braunskill,
`481 U.S. 770 (1987) ..................................................................... 3, 4, 10
`In re Horseshoe Ent.,
`337 F.3d 429 (5th Cir. 2003) ............................................................. 5, 8
`In re Lloyd’s Register N. Am., Inc.,
`780 F.3d 283 (5th Cir. 2015) ................................................................. 7
`New Hampshire v. Maine,
`532 U.S. 742 (2001) ............................................................................. 10
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ..................................................... 5, 8
`Nken v. Holder,
`556 U.S. 418 (2009) ......................................................................... 3, 10
`Pegram v. Herdrich,
`530 U.S. 211 (2000) ............................................................................. 10
`In re SK hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ......................................................... 5
`
`ii
`
`

`

`Case: 22-162 Document: 17 Page: 4 Filed: 09/19/2022
`
`Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
`897 F.2d 511 (Fed. Cir. 1990) ............................................................... 4
`In re Superior Crewboats, Inc.,
`374 F.3d 330 (5th Cir. 2004) ............................................................... 10
`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ..................................................... 3, 6
`Van Dusen v. Barrack,
`376 U.S. 612 (1964) ............................................................................... 7
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ................................................................. 7
`Statutes
`28 U.S.C. § 1404(a) .................................................................................... 7
`
`
`iii
`
`

`

`Case: 22-162 Document: 17 Page: 5 Filed: 09/19/2022
`
`INTRODUCTION
`Apple Inc. petitioned for mandamus because the district court
`
`impermissibly postponed ruling on Apple’s fully briefed transfer motion
`
`for more than eight months, while ordering the parties to complete fact
`
`discovery and take other substantive steps in the litigation. Apple
`
`moved for a stay in the district court pending this Court’s review of the
`
`mandamus petition and then, after not receiving a ruling on that
`
`motion, moved for a stay in this Court. The district court has since
`
`denied Apple’s stay motion.
`
` Apple moved for a stay because the district court was moving
`
`“ahead on the merits in significant respects.” In re Apple Inc., 979 F.3d
`
`1332, 1338 (Fed. Cir. 2020). Without a pause in the district court
`
`proceedings, the parties will continue proceeding through fact discovery
`
`and other substantive aspects of this case, and the district court will
`
`address the merits of the case, such as hearing discovery disputes.
`
`The Court’s stay authority exists for cases like this. Granting
`
`Apple’s motion will ensure that the Court has time to meaningfully act
`
`on a compelling petition for mandamus relief. It will prevent several
`
`irreparable harms to Apple, including spending time and resources
`
`1
`
`

`

`Case: 22-162 Document: 17 Page: 6 Filed: 09/19/2022
`
`litigating the merits of this case in an inconvenient venue. A stay will
`
`also serve the public’s interest in convenient venue and conservation of
`
`judicial resources. Aire, meanwhile, would suffer no harm from a short
`
`delay.
`
`Aire’s only answer is to blame Apple for the delay imposed by the
`
`district court’s new scheduling order and to minimize the irreversible
`
`harm that litigating in an inconvenient venue will cause Apple.
`
`Meanwhile, Aire’s defense of the district court’s scheduling order
`
`disregards this Court’s precedent requiring district courts to address
`
`transfer motions at the outset of litigation.
`
`None of this counters the merits of Apple’s motion, which shows
`
`that each factor of the governing test favors a stay. The Court should
`
`grant the motion and stay the district court proceedings until this Court
`
`determines whether the district court must resolve Apple’s transfer
`
`motion before the case moves forward on the merits.
`
`ARGUMENT
`As Apple’s motion demonstrated (at 12-19), all four factors of the
`
`governing test favor a stay: (1) the mandamus petition “has made a
`
`strong showing” on the merits; (2) Apple “will be irreparably injured
`
`2
`
`

`

`Case: 22-162 Document: 17 Page: 7 Filed: 09/19/2022
`
`absent a stay”; (3) a short delay will not “substantially injure” Aire; and
`
`(4) a stay is in “the public interest.” Nken v. Holder, 556 U.S. 418, 425-
`
`26 (2009) (quoting Hilton v. Braunskill, 481 U.S. 770, 776 (1987)).
`
`Aire’s opposition does not call any of these factors into question.
`
`I.
`
`Apple’s Petition Makes A Compelling Case For Mandamus.
`Apple’s mandamus petition shows that the district court clearly
`
`abused its discretion by delaying a ruling on Apple’s transfer motion
`
`until the end of fact discovery, and more than a year after Apple filed its
`
`motion. Mot. 12-15; Pet. 16-22. The district court’s new discovery and
`
`scheduling order—issued sua sponte and contrary to both parties’
`
`preference for a prompt resolution of the transfer motion—not only
`
`significantly delays a transfer decision, but it also requires the parties
`
`to litigate the merits of the case before the court will even consider
`
`transferring the case.
`
`This Court has already held that proceeding on the merits before
`
`deciding transfer is improper, and gives rise to a clear right to
`
`mandamus relief. See In re TracFone Wireless, Inc., 848 F. App’x 899,
`
`900-01 (Fed. Cir. 2021); Mot. 2; Pet. 16-22. Apple’s merits case is thus
`
`compelling. At the very least, it is “substantial,” which warrants a stay
`
`3
`
`

`

`Case: 22-162 Document: 17 Page: 8 Filed: 09/19/2022
`
`here because “the other factors militate in [the] movant’s favor.”
`
`Standard Havens Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 513
`
`(Fed. Cir. 1990) (quoting Hilton, 481 U.S. at 778) (emphasis omitted).
`
`Aire challenges the strength of Apple’s petition only by repeating
`
`its meritless argument from its mandamus opposition—namely that
`
`Apple is to blame for the court-ordered delay in this case. Aire argues
`
`that Apple injected delay into the case by seeking to supplement the
`
`venue record. As Aire has conceded, however, Apple’s supplement
`
`contained no new evidence and merely confirmed the information
`
`already provided by Apple’s corporate venue defendant. Pet. Reply 5.
`
`Far from causing any delay, Apple told the district court that “a
`
`continuance [wa]s not necessary.” Appx177. And although Apple said
`
`it would not oppose “a reasonable continuance” if Aire requested one,
`
`Aire never made such a request. Pet. Reply 10-11. In any event, as
`
`stated in Apple’s motion to supplement, the “reasonable continuance”
`
`that Apple would have agreed to “would not affect the overall trajectory
`
`of this case.” Appx181. It was the district court’s new scheduling order
`
`that upended that trajectory. There was no reason for the district court
`
`4
`
`

`

`Case: 22-162 Document: 17 Page: 9 Filed: 09/19/2022
`
`to enter a new scheduling order at all, much less one that postponed a
`
`decision on Apple’s transfer motion for more than eight months.
`
`Aire further argues that, despite an eight-month delay in deciding
`
`the transfer issue, the district court has nevertheless “discharged its
`
`responsibility to afford ‘top priority’ to Apple’s transfer motion ‘at the
`
`outset of litigation.’” Opp. 3. But Aire fails to explain how postponing a
`
`transfer decision until after fact discovery is complete (and a full year
`
`after the transfer motion was filed) could possibly meet that
`
`requirement. See In re Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir.
`
`2013); In re Horseshoe Ent., 337 F.3d 429, 433 (5th Cir. 2003); Pet. 16-
`
`18. It is not enough to just postpone the Markman hearing itself until
`
`after transfer is resolved. Rather, as this Court has explained, other
`
`substantive steps should also await a transfer decision, including fact
`
`discovery and the resolution of any discovery disputes. See Apple, 979
`
`F.3d at 1338; In re SK hynix Inc., 835 F. App’x 600, 600-01 (Fed. Cir.
`
`2021); In re Google Inc., No. 2015-138, 2015 WL 5294800, at *1 (Fed.
`
`Cir. July 16, 2015).
`
`Aire credits the district court’s original standing order with
`
`prioritizing transfer issues before fact discovery and the Markman
`
`5
`
`

`

`Case: 22-162 Document: 17 Page: 10 Filed: 09/19/2022
`
`hearing. But Apple is not challenging that order, which no longer
`
`governs this case. Rather, Apple’s petition seeks to remedy the district
`
`court’s clear abuse of discretion in issuing a new scheduling order that
`
`requires the parties to spend an additional eight months litigating this
`
`case on the merits before the court will consider Apple’s fully briefed
`
`transfer motion. Pet. 4.
`
`This clear abuse of discretion presents a substantial case on the
`
`merits warranting a brief stay while this Court considers Apple’s
`
`petition.
`
`II. Absent A Stay, Apple Would Be Irreparably Harmed By
`Participating In Substantive Proceedings In Texas.
`Apple has also demonstrated that it would suffer irreparable harm
`
`from litigating this case on the merits in an inconvenient forum. Mot.
`
`15-17. Allowing Apple’s transfer motion to linger while “pressing
`
`forward with discovery and claim construction issues” will require
`
`Apple to spend time and resources litigating the merits of a case “in an
`
`inconvenient venue.” TracFone Wireless, 848 F. App’x at 900 (quoting
`
`Google, 2015 WL 5294800, at *1). And allowing this case to proceed
`
`toward trial in the Western District of Texas risks causing parties and
`
`6
`
`

`

`Case: 22-162 Document: 17 Page: 11 Filed: 09/19/2022
`
`witnesses “the very harm sought to be avoided by transferring venue.”
`
`In re Lloyd’s Register N. Am., Inc., 780 F.3d 283, 289 (5th Cir. 2015).
`
`Aire cannot dispute that these harms could not “be put back in the
`
`bottle.” Id. at 289-90 (quoting In re Volkswagen of Am., Inc., 545 F.3d
`
`304, 319 (5th Cir. 2008) (en banc)). So it seeks to diminish them. Aire
`
`first argues that Apple will suffer no injury absent a stay because it
`
`“would still have to undergo the same steps regardless how the transfer
`
`issue is decided.” Opp. 5. But that is not how § 1404(a) is supposed to
`
`work. Requiring parties to fully litigate a case before deciding transfer
`
`motions would completely frustrate the purpose of § 1404(a), which is
`
`“to ‘prevent the waste of time, energy, and money and to protect
`
`litigants, witnesses and the public against unnecessary inconvenience
`
`and expense.’” Google, 2015 WL 5294800, at *1 (quoting Van Dusen v.
`
`Barrack, 376 U.S. 612, 616 (1964)).
`
`For this reason, and contrary to Aire’s argument, the venue
`
`statute is not focused solely “on convenience for trial,” Opp. 5, but
`
`rather on the convenience of the forum throughout the litigation. That
`
`is why this Court has repeatedly underscored “the importance of
`
`addressing motions to transfer at the outset of litigation.” In re EMC
`
`7
`
`

`

`Case: 22-162 Document: 17 Page: 12 Filed: 09/19/2022
`
`Corp., 501 F. App’x 973, 975 (Fed. Cir. 2013); see also Apple, 979 F.3d at
`
`1337-38; Nintendo, 544 F. App’x at 941. The Fifth Circuit likewise
`
`requires transfer motions to take “top priority” in litigation. Horseshoe
`
`Ent., 337 F.3d at 433.
`
`Indeed, two recent developments in this case underscore the need
`
`for a stay. The day before filing its opposition to this stay motion, Aire
`
`complained about Apple’s document production, demanding that Apple
`
`immediately produce additional source code and refusing Apple’s
`
`requested discovery limitations. Although Aire’s complaints are
`
`baseless, the district court could be asked imminently to resolve this
`
`looming discovery dispute, as well as others, in a case that should not
`
`be tried in the Western District of Texas. Aire has also recently
`
`confirmed its intent to file a motion for leave to assert a new
`
`independent claim accusing a feature that was not previously at issue
`
`in this case. That motion will require the district court to assess
`
`whether good cause exists for this belated expansion of the parties’
`
`dispute. To avoid precisely this kind of premature merits litigation, this
`
`Court has repeatedly explained that fact discovery and resolution of
`
`8
`
`

`

`Case: 22-162 Document: 17 Page: 13 Filed: 09/19/2022
`
`discovery disputes should take place after transfer is decided. Mot. 13-
`
`14; Pet. 17-22.
`
`Finally, Aire mistakenly asserts that Apple is “judicially estopped”
`
`from arguing that fact discovery should be put on hold, because Apple
`
`“admitted that fact discovery should continue unimpeded while the
`
`transfer process unfolds.” Opp. 7-8. Aire mischaracterizes Apple’s
`
`motion to supplement, which did not endorse the completion of fact
`
`discovery over several months, followed by partial re-briefing of the
`
`transfer motion. Rather, Apple merely acknowledged that, under the
`
`district court’s standing order, “fact discovery will commence on July 18
`
`regardless of whether a continuance is or is not granted.” Appx181.
`
`But Apple was clear that it was consenting only to a “reasonable
`
`continuance” that would still allow for transfer briefing to be completed
`
`by July 21, 2022. Appx181.
`
`And once commenced, discovery would have proceeded for at most
`
`only about six weeks before the district court addressed transfer, which
`
`would have happened before the then-scheduled Markman date of
`
`September 1. Apple did not ask for that date to be extended; Apple
`
`asked the district court to maintain a transfer briefing schedule that
`
`9
`
`

`

`Case: 22-162 Document: 17 Page: 14 Filed: 09/19/2022
`
`would allow for that date to hold. See Appx179. Because Apple’s
`
`position has remained consistent, judicial estoppel does not apply. See
`
`New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (explaining that
`
`judicial estoppel “generally prevents a party from prevailing in one
`
`phase of a case on an argument and then relying on a contradictory
`
`argument to prevail in another phase”) (quoting Pegram v. Herdrich,
`
`530 U.S. 211, 227 n.8 (2000)).1
`
`III. A Brief Stay Would Not Harm Aire.
`Meanwhile, Apple has shown that the requested stay would not
`
`“substantially injure” Aire. Nken, 556 U.S. at 426 (quoting Hilton, 481
`
`U.S. at 776); Mot. 17-18. There is no dispute that the stay is likely to be
`
`brief. Mot. 17-18. And Aire could be compensated for any delay with
`
`money damages should it prevail in this lawsuit, as it does not make or
`
`sell products that compete with Apple. Mot. 18.
`
`Aire argues that it has already been prejudiced by the delay in the
`
`Markman hearing, and that it will suffer further harm from a stay
`
`
`1 By contrast, the one case that Aire cites to support its judicial estoppel
`assertion involved “clearly inconsistent” positions taken by debtors in
`bankruptcy court and in their personal injury litigation. In re Superior
`Crewboats, Inc., 374 F.3d 330, 335 (5th Cir. 2004).
`
`10
`
`

`

`Case: 22-162 Document: 17 Page: 15 Filed: 09/19/2022
`
`because it “would injure Aire’s ability to timely enforce its patents.”
`
`Opp. 8-9. But “delay alone does not constitute prejudice sufficient to
`
`deny a request for [a] stay.” E-Watch, Inc. v. Lorex Can., Inc., No. H-12-
`
`3314, 2013 WL 5425298, at *2 (S.D. Tex. Sept. 26, 2013). Moreover,
`
`given that the district court sua sponte postponed the Markman
`
`hearing for more than eight months, a brief delay to allow this Court to
`
`decide Apple’s mandamus petition would cause no harm to Aire.
`
`IV. The Public Interest Favors A Stay.
`Finally, Apple has demonstrated that the public interest favors a
`
`stay. Mot. 19. The Northern District of California has a strong local
`
`interest in the case, and the Western District of Texas has none. A stay
`
`would protect that local interest until this Court has a chance to
`
`intervene. It would also preserve judicial resources. Because Apple’s
`
`mandamus petition has a strong chance of success, there is a strong
`
`chance that the district court’s review of substantive issues in the case
`
`in the interim will needlessly waist judicial resources. Mot. 19.
`
`Aire does not meaningfully dispute this, arguing only that this
`
`factor turns on the merits of Apple’s transfer motion and the strength of
`
`its mandamus petition. Apple moved for a stay, however, because the
`
`11
`
`

`

`Case: 22-162 Document: 17 Page: 16 Filed: 09/19/2022
`
`merits of its mandamus petition and the underlying equities warrant
`
`one. This Court should grant Apple’s motion for the same reason.
`
`CONCLUSION
`The Court should stay the district court proceedings pending
`
`resolution of Apple’s mandamus petition.
`
`September 19, 2022
`
`Andrew N. Thomases
`Andrew T. Radsch
`ROPES & GRAY LLP
`1900 University Avenue,
`6th Floor
`East Palo Alto, CA 94303
`
`
`
`Respectfully submitted,
`
`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`Lauren A. Weber
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`(202) 339-8400
`
`Melanie R. Hallums
`ORRICK, HERRINGTON &
` SUTCLIFFE LLP
`2121 Main Street
`Wheeling, WV 26003
`
`
`Counsel for Petitioner
`
`
`12
`
`

`

`Case: 22-162 Document: 17 Page: 17 Filed: 09/19/2022
`
`CERTIFICATE OF COMPLIANCE
`
`This reply complies with the type-volume limitation of Federal
`
`Rule of Appellate Procedure 27(d)(2)(C). The reply is printed in Century
`
`Schoolbook 14-point font, and it contains 2244 words, excluding the
`
`items listed in Federal Rule of Appellate Procedure 27(a)(2)(B).
`
`
`
`
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`/s/ Melanie L. Bostwick
`Melanie L. Bostwick
`Counsel for Petitioner
`
`
`
`
`
`

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