Case: 22-162 Document: 19 Page: 1 Filed: 11/08/2022
`United States Court of Appeals
`for the Federal Circuit
`In re: APPLE INC.,
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:21-
`cv-01101-ADA, Judge Alan D. Albright.
`MELANIE L. BOSTWICK, Orrick, Herrington &
`Sutcliffe LLP, Washington, DC, for petitioner Apple Inc.
`Also represented by LAUREN WEBER; MELANIE
`ANDREW N. THOMASES, Ropes & Gray LLP, East Palo
`Alto, CA
`BRETT E. COOPER, BC Law Group, PC, New York,
`NY, for respondent Aire Technology Ltd. Also repre-
`Before DYK, REYNA, and TARANTO, Circuit Judges.
`REYNA, Circuit Judge.
`O R D E R
`Apple Inc. petitions this court for a writ of mandamus
`directing the United States District Court for the Western


`Case: 22-162 Document: 19 Page: 2 Filed: 11/08/2022
`District of Texas to vacate its scheduling order, promptly
`rule on Apple’s pending transfer motion, and stay all pro-
`ceedings on the merits until transfer is resolved. Apple
`also moves for this court to stay the district court proceed-
`ings pending resolution of Apple’s petition. Aire Technol-
`ogy Limited opposes the petition and motion.
`Aire sued Apple for patent infringement in the Western
`District of Texas in October 2021. In April 2022, Apple
`moved, pursuant to 28 U.S.C. § 1404(a), for transfer to the
`United States District Court for the Northern District of
`California. Apple submitted a declaration from Mark Rol-
`lins, an Apple finance manager, “to establish certain facts,
`such as the relevance, role, and locations of witnesses and
`their teams, as well as the relevance and locations of vari-
`ous categories of documents.” Pet. at 6.
`Shortly before the close of venue discovery, Apple
`sought leave to supplement its motion with additional dec-
`larations from employees who Mr. Rollins had consulted in
`preparing his declaration to bolster the credibility of his
`statements. Apple offered to make the declarants available
`for deposition and stated non-opposition to a “reasonable
`continuance” of the transfer proceedings. Appx181. The
`district court granted Apple’s motion, but sua sponte or-
`dered the parties to complete fact discovery on the merits
`(which it extended for an additional 30 weeks) and then go
`through another six weeks of re-briefing of the motion be-
`fore it would rule on Apple’s request to transfer under §
`1404(a). Apple then filed this petition seeking review of
`that order.
`Although a district court has discretion in managing its
`own docket, see Landis v. N. Am. Co., 299 U.S. 248, 254–55
`(1936), an appellate court may grant mandamus to correct
`a clearly arbitrary refusal to act on a longstanding pending
`transfer motion. See, e.g., In re Horseshoe Ent., 337 F.3d
`429, 433 (5th Cir. 2003) (“[I]n our view disposition of that
`[transfer] motion should have taken a top priority in the


`Case: 22-162 Document: 19 Page: 3 Filed: 11/08/2022
` 3
`handling of this case by the . . . District Court.”); In re
`TracFone Wireless, Inc., 848 F. App’x 899, 900–01 (Fed. Cir.
`2021) (citing Horseshoe Ent., 337 F.3d at 433); 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 *1–2 (Fed.
`Cir. July 16, 2015); see also In re EMC Corp., 501 F. App’x
`973, 975–76 (Fed. Cir. 2013) (“Congress’ intent to prevent
`the waste of time, energy and money and to protect liti-
`gants, witnesses and the public against unnecessary incon-
`venience and expense . . . may be thwarted where, as here,
`defendants must partake in years of litigation prior to a
`determination on a transfer motion.” (internal quotation
`marks and citation omitted)).
`Apple contends that the district court clearly abused its
`discretion in ordering the parties to complete 30 more
`weeks of fact discovery while pressing forward on the mer-
`its and then spend another six weeks re-briefing the issue
`before deciding Apple’s transfer request. Apple notes that
`by the time the court plans on considering Apple’s motion,
`it will have been a full year after Apple initially sought
`transfer, and the parties will have completed fact discovery
`(with the Western District of Texas resolving all discovery
`disputes), served final infringement and invalidity conten-
`tions (with leave of court required for any subsequent
`amendment),1 narrowed the number of asserted claims and
`prior art references to the number permitted by this dis-
`trict court, and exchanged preliminary trial exhibits and
`witness lists. Pet. at 1–2. We agree with Apple that the
`district court’s scheduling order goes too far.
`Aire “consents to resolving Apple’s transfer motion at
`any time, provided that no stay interfere with discovery,
`Markman proceedings, or the preparation of this case for
`1 Aire has already filed an opposed motion to amend
`its infringement contentions to include an additional claim.


`Case: 22-162 Document: 19 Page: 4 Filed: 11/08/2022
`trial.” ECF No. 9 at 2.2 And precedent entitles parties to
`have their venue motions prioritized. See In re Apple Inc.,
`979 F.3d 1332, 1337 (Fed. Cir. 2020); see also Horseshoe
`Ent., 337 F.3d at 433. Applying that principle, the Third
`Circuit in McDonnell Douglas Corp. v. Polin, 429 F.2d 30,
`30–31 (3d Cir. 1970), held that it is “not proper to postpone
`consideration of the application for transfer under
`§ 1404(a) until discovery on the merits is completed,” as the
`district court has done in this case. Where, as here, the
`parties agree that no additional discovery or briefing is nec-
`essary and there are clearly less time-consuming and more
`cost-effective means for the court to resolve the motion (in-
`cluding considering whether the court should give less
`weight to certain evidence), it is a clear abuse of discretion
`to require the parties to expend additional party and court
`resources litigating the substantive matters of the case
`while Apple’s motion to transfer unnecessarily lingers on
`the docket.
`The district court took the view that by delaying the
`decision until after full fact discovery and re-briefing, it
`could reduce “speculation” and “allow the parties to provide
`the Court with the best evidence for ruling on a motion to
`transfer.” Appx1. Discovery on the transfer motion itself
`is sufficient to allow decision of that motion.3 Moreover, an
`undue delay for a motion under § 1404(a), as other district
`courts have
`found, may unnecessarily require the
`2 A motion for reconsideration under these circum-
`stances might have provided an adequate alternative
`means to obtain the requested relief, but it appears futile
`here in light of the district court’s holding in its order deny-
`ing Apple’s motion for a stay pending this petition. ECF
`No. 18 at 6.
`In light of the parties’ concessions, further venue
`discovery is unnecessary here.


`Case: 22-162 Document: 19 Page: 5 Filed: 11/08/2022
` 5
`expenditure of judicial resources in both the transferor and
`transferee courts.4 As the Third Circuit in Polin explained,
`“[j]udicial economy requires that another district court
`should not burden itself with the merits of the action until
`it is decided that a transfer should be effected and such
`consideration additionally requires that the court which ul-
`timately decides the merits of the action should also decide
`the various questions which arise during the pendency of
`the suit instead of considering it in two courts.” 429 F.2d
`at 30.
`For these reasons, we conclude that the district court
`clearly abused its discretion in issuing its scheduling order.
`We do not decide in this case (which does not present the
`issue) whether and the extent to which merits discovery
`may proceed pending discovery for a decision on a transfer
`motion. We determine only that decision of a transfer
`4 See, e.g., Zamora-Garcia v. Moore, No. M-05-331,
`2006 WL 3341034, at *4 (S.D. Tex. Nov. 16, 2006) (noting
`the potential “waste of judicial resources”); Moto Photo, Inc.
`v. K.J. Broadhurst Enters., Inc., No. 3:01-cv-2282-L, 2003
`WL 298799, at *5 (N.D. Tex. Feb. 10, 2003) (filing of motion
`to transfer after parties had exchanged initial disclosures,
`amended their pleadings, and conducted preliminary dis-
`covery created possibility of undue delay if case were to be
`transferred and could be denied on that basis alone); FTC
`v. Multinet Mktg., LLC, 959 F. Supp. 394, 395–96 (N.D.
`Tex. 1997) (denying motion to transfer filed seven months
`after plaintiffs’ filing of action where “change of venue now
`is likely to upset the discovery and trial schedule and waste
`judicial resources”); Am. Airlines, Inc. v. Rogerson ATS,
`952 F. Supp. 377, 384 (N.D. Tex. 1996) (denying motion
`where transfer would disrupt scheduling order and create
`“substantial possibility of delay . . . since this Court has had
`the case for some time and is already familiar with many
`of its details”).


`Case: 22-162 Document: 19 Page: 6 Filed: 11/08/2022
`motion must proceed expeditiously as the first order of
`business and that venue discovery must proceed immedi-
`ately to enable such a prompt decision of the transfer mo-
`The petition and motion are granted to the extent that
`the district court’s amended scheduling order is vacated,
`and the district court is directed to postpone fact discovery
`and other substantive proceedings until after consideration
`of Apple’s motion for transfer.
` November 8, 2022
` Date
` /s/ Peter R. Marksteiner
` Peter R. Marksteiner
` Clerk of Court

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