On February 27, 2013, in a 2-1 decision, the Federal Circuit denied Apple’s petition for a writ of mandamus ordering the Eastern District of Texas to transfer Core Wireless Licensing, S.A.R.L. v. Apple Inc.  to  the  Northern  District  of  California. The majority found no abuse of discretion in the district court’s denial of Apple’s motion because the district court was “stymied in its analysis by Apple’s lack of evidence.”16 Core Wireless is a Luxembourg company with one employee.17 It  has  a  Texas  subsidiary  with  six employees.18 In February 2012, Core Wireless sued Apple for patent infringement in the Eastern District of Texas.19 Apple’s principle place of business is Cupertino, California.20 Qualcomm (based in San Diego, California) and Intel (based in Santa Clara, California) supply Apple with the baseband processing chips that are at the heart of the infringement dispute.21 Apple moved to transfer the case to the Northern District of California, a motion denied by the district court on the ground that Apple had not met the burden of establishing that N.D. Cal. was more convenient than E.D. Tex.22 The district court emphasized Apple's lack of specificity in Apple's assertions as to why the transfer factors favored N.D. Cal.23

The E.D. Tex. Memorandum Order and Opinion denying Apple’s Motion to Transfer focused on the information Apple supplied in support of the private interest transfer factors. 24 Although Apple stated that “virtually all Apple business documents and records relating to the research, design, development, marketing strategy, and product revenue related to the Accused Products are located in or near Cupertino,” the district court found that Apple only provided “vague assertions” about the relevance and location of potential sources of proof.25 Because Apple did not identify by name witnesses from third parties, or establish any domiciles for those witnesses, the district court found it could not determine which district had subpoena power over third party witnesses.26 The district     court     further     found     that     without identification of the names, interest, or residence of Apple’s witnesses, it could only speculate as to the difficulty and cost of travel for witnesses, even though Apple identified that “Apple’s likely witnesses are located in the Northern District of California” and that more than 12,000 Apple employees work and live near headquarters in Cupertino.27

Apple moved to supplement the record after the Memorandum Order and Opinion issued, but the district court denied that motion, noting there was no indication that the supplemental information was not available at the time of Apple’s original motion.28 The Federal Circuit found that the district court did not abuse its discretion in denying the motion to supplement.29

In dissent, Circuit Judge Newman found that “the district court has greatly mischaracterized Apple’s proffered evidence.”30 According to  Judge Newman, the evidence was clear that all relevant witnesses and documents are in the  Northern District of California.31 Judge Newman also found a heavy imbalance in the local interest factor, with Apple employing more than 12,000 people in California, while Core Wireless is a “non-United States” corporation with a subsidiary employing six people in Texas.32

The lesson from In re Apple is to avoid asking the court (at least in Texas) to make assumptions. The court will not make the leap from “12,000 employees work and live in our desired venue” to “likely witness John Smith is the lead designer of the accused device, and is located in our hometown. He is allergic to barbeque and becomes ill if he does not surf in the Pacific Ocean every day. He is therefore unable to travel to the current venue.”33

Make that leap for the court and spell it out  in detail. In re Apple suggests a roadmap of the evidence required:

  • Identify relevant party witnesses by name and address in or near the transfer venue.
  • Identify relevant non-party witnesses by name and address in or near the transfer venue.
  • Identify specific relevant documents located in the transfer venue.
  • Provide all the detailed information up front.

If new relevant information becomes available after the initial motion, the court may allow supplementation, but any evidence that is available when the motion is submitted should be submitted at that time. Do not gamble on the court allowing a second round – Apple took that chance and now will be litigating with Core Wireless in Texas.