CAFC Denies Apple Transfer Out of Albright’s Court

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple’s petition for a writ of mandamus asking the court to compel Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer its case to the Northern District of California.

Carbyne Biometrics sued Apple for infringement of six patents via Apple’s “Secure Enclave” and Apple Cash platform features. Apple moved for transfer in July 2023, the motion was briefed in November 2023 and the district court denied the motion in December 2023 and said it would soon issue a decision. Apple filed the petition for writ of mandamus when no decision had issued by January 31, 2024 asking the CAFC to either stay the proceedings until a decision had issued or to compel transfer.

The district court issued its decision on transfer on February 12, 2024, finding that the infringement allegations implicate mainly hardware and server-side aspects of the Apple products. It then found that the “willing witness” factor of the traditional transfer factors weighed against transfer because five Apple employees with knowledge of those aspects of the products are based in Austin, Texas. The court weighed the “compulsory process factor” slightly against transfer and the remaining factors as neutral. Thus, overall, it found that Apple had failed to prove the Northern District of California “clearly more convenient” and denied the motion.

In an order written by Chief Judge Moore, the CAFC reviewed the district court’s factual determinations and held that Apple failed to prove that the district court had clearly abused its discretion. The district court’s factual determinations included that:

“Apple maintains significant relevant operations in Austin, where some of the accused products are manufactured and were developed; the cost of attending trial in Austin would be less for the inventor residing in New York; sources of proof were created and maintained in both forums; third-party employees named in the complaint and identified as potential witnesses also reside in Austin; and Apple failed to identify any specific third-party individuals in Northern California who were unwilling to testify.”

These factual findings plausibly support the denial of transfer, said the CAFC. Apple’s attempt to argue that its employees in Austin don’t possess the necessary knowledge because the case is limited to software features of the products was rejected by the district court after it considered the scope of the claims and the information in possession of the Apple employees and reached a contrary conclusion. The CAFC noted the deferential standard of review on mandamus and concluded that it was not prepared to say the district court’s assessment on the willing witness factor was “so clearly wrong that it produced a patently erroneous result.”

In a footnote, the CAFC acknowledged that Apple also argued it identified additional team members in the Northern District who weren’t counted, but similarly concluded “we are not prepared to say that the district court clearly erred in refusing to credit these unnamed team members when presented with little information as to what, if any, relevant and material information they may possess.”

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