Bloomberg Law
Sept. 22, 2020, 3:27 PMUpdated: Sept. 22, 2020, 8:41 PM

Apple, Uniloc Face Tough Patent Venue Queries From Fed. Cir. (1)

Perry Cooper
Perry Cooper
Legal Reporter

Two Federal Circuit judges hammered Apple Inc. and Uniloc with questions at oral argument on Tuesday over whether a patent infringement suit against the tech giant should have been moved out of the Western District of Texas.

Apple filed a petition for mandamus asking the U.S. Court of Appeals for the Federal Circuit to overturn U.S. District Court for the Western District of Texas Judge Alan Albright’s decision refusing to send Uniloc 2017 LLC’s patent infringement suit against it to the Northern District of California, which Apple considers a more convenient location.

The Federal Circuit rarely holds arguments on mandamus petitions, but the panel may have found it important here because the issue has come up several times before the court recently. Apple and other tech companies are pushing back on Albright’s efforts to make the Waco Division a magnet jurisdiction for patent litigation.

Judge Kimberly A. Moore focused her questioning at argument on Apple’s counsel, Mel Bostwick of Orrick, Herrington & Sutcliffe LLP in Washington. Apple is one of the largest employers in the Western District of Texas, Moore said. “Doesn’t that suggest a pretty strong local interest in having the litigation decided locally, if those people could lose their jobs?”

“That is not the kind of local interest that this court has previously credited,” Bostwick answered. The focus is on the engineers who created the accused technology, who are in California, she said.

Moore also pushed Apple on whether the case warranted the extraordinary review of mandamus. “The question isn’t, if everything is neutral and one favor weighs slightly, should the case be transferred. The question is, should an appellate court step in and mandamus a case in those circumstances,” she said.

Bostwick pointed to several findings in the district court’s order that she called critical errors that amount to a clear abuse of discretion.

Chief Judge Sharon Prost directed all of her questions to Uniloc’s counsel, Christian Hurt of the Davis Firm PC in Longview, Texas. She suggested that witnesses not located in either district would only be slightly more inconvenienced by having to go to California over Texas.

“What in our precedent says the district court was correct in saying that the difference between having witnesses in New York travel to California or Texas was a significant factor that weighed against transfer?” she asked.

The convenience to the witnesses is proportional to the distance they have to travel, Hurt said.

But the district court’s decision doesn’t hinge on that because there’s significant proof that one of the accused products is made in Austin, creating a real connection to the Western District, he said.

Apple wants the Federal Circuit to order that the case be sent to California, but Hurt said the most generous remedy available is to send the case back to the district court to consider another motion for transfer.

Uniloc is alleging the software download functionality in a range of Apple products infringes U.S. Patent No. 6,467,088 on a system to control software updates.

Judge Todd M. Hughes, who also served on the panel, didn’t ask any questions.

The case is In re Apple Inc., Fed. Cir., No. 20-135, argued 9/22/20.

(Updated with additional reporting throughout.)

To contact the reporter on this story: Perry Cooper in Washington at

To contact the editors responsible for this story: Renee Schoof at; Keith Perine at