Federal Circuit Vacates Scheduling Order Pending Motion To Transfer
IP Litigation
This links to the home page
  • Federal Circuit Vacates Scheduling Order Pending Motion To Transfer

    On November 8, 2022, in a precedential order, the Court of Appeals for the Federal Circuit (CAFC) granted Apple Inc.’s petition for a writ of mandamus vacating the scheduling order of the District Court for the Western District of Texas and directing that court to stay all proceedings on the merits and resolve Apple’s pending motion to transfer.  While the CAFC did not decide the extent to which merits discovery may proceed while issues of venue and venue discovery are still pending, it nevertheless ruled that transfer decisions must “proceed expeditiously” as “the first order of business.”  In re Apple Inc., No. 2022-162 (Fed. Cir. Nov. 8, 2022).

    The petition arose from a dispute before Judge Alan D. Albright in the Western District of Texas, wherein Aire Technology Ltd. sued Apple for patent infringement in October 2021.  In April 2022, Apple moved for transfer to the Northern District of California pursuant to 28 U.S. Code § 1404(a) (change of venue for the convenience of parties and witnesses).  However, rather than rule on Apple’s motion, the district court issued an order delaying decision until after full fact discovery according to the district court’s scheduling order, arguing that this would reduce speculation and allow the parties to provide the Court with the best evidence for ruling on a motion to transfer.

    Apple then filed a mandamus petition seeking appellate review of the district court’s order.  While typically “a district court has discretion in managing its own docket[,] an appellate court may grant mandamus to correct a clearly arbitrary refusal to act on a longstanding pending transfer motion.”  In re Apple Inc., No. 2022-162, Slip Op. at 2.

    Here, the CAFC decided to grant mandamus.  Rejecting the district court’s reasoning, the CAFC cited McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30-31 (3d Cir. 1970) for the proposition that “it is not proper to postpone consideration of the application for transfer under § 1404(a) until discovery on the merits is completed.”  The CAFC further noted that, if it did not act, by the time Apple’s transfer motion would be decided, the district court would have resolved all discovery disputes and narrowed the scope of asserted claims and prior art references under the rules and procedures of the Western District of Texas.

    Accordingly, the CAFC held that the district court’s order was “a clear abuse of discretion,” because it would require the parties and the court to expend resources “litigating the substantive matters of the case while Apple’s motion to transfer unnecessarily lingers on the docket.”  The CAFC therefore vacated the district court’s scheduling order and directed the district court to “postpone fact discovery and other substantive proceedings” until after considering Apple’s motion to transfer.
    CATEGORIES: TransferVenue