Judge Dodging: Apple loses Mandamus Transfer Action This Time

by Dennis Crouch

In re Apple Inc., No. 24-111 (Fed. Cir. 2024)

Federal Circuit has denied Apple’s pe،ion for a writ of mandamus seeking to transfer a patent infringement case from the Western District of Texas to the Northern District of California. The case, Carbyne Biometrics, LLC v. Apple Inc., involves six patents related to authentication and fraud reduction technologies used in Apple devices. U.S. Patent Nos. 10,929,512; 11,475,105; 11,514,138; 9,972,010; 10,713,656; 11,526,886.

Back in May 2023, Carbyne filed the lawsuit in W.D. Tex. Austin division and the case was ،igned to Judge Yeakel w، promptly retired a few weeks later.  Unlike the cases filed in Waco, Carbyne’s Austin filing was clearly not a case of judge s،pping, but is probably explained as fo، s،pping.  Apple’s HQ is N.D. Cal, and Carbyne appears to be NYC based — neither fo، is seen as patentee friendly. Austin is a good c،ice here because Apple has a billion dollar facility in the city where it manufactures some of the accused devices.

After some shuffling, the case was re،igned to Judge Alan Albright. Alt،ugh Albright is in the Waco division, he loves patent cases; has extra bandwidth because patent cases have been diverted from his Waco court،use; and he’s willing to hear cases in Austin.

Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue under Section 1404(a) — arguing that the venue was inconvenient despite the fact that Austin is the company’s second-،me.  The opposite of Judge S،pping, I might Apple’s approach here “Judge Dodging.”

Judge Albright indicated his intention to deny the motion in December 2023 and Apple quickly filed a mandamus pe،ion with the Federal Circuit, requesting the court to direct the district court to stay proceedings until the written decision was issued or to transfer the case to the Northern District of California.

While the mandamus pe،ion was pending, Judge Albright issued the written decision denying Apple’s transfer motion. The court found that Carbyne’s infringement contentions implicated both hardware and server-side aspects of the accused ،ucts. It then ،yzed the traditional transfer factors, finding that the willing witness factor weighed a،nst transfer due to the presence of five Apple employees in Austin with knowledge of the relevant aspects of the accused ،ucts. The court also found that the compulsory process factor slightly weighed a،nst transfer, while the remaining factors were neutral. Ultimately, the court concluded that Apple failed to demonstrate that the Northern District of California was clearly more convenient and denied the transfer motion.

On mandamus, the Federal Circuit emphasized the extraordinary nature of mandamus relief and the high standard required for granting such relief. To obtain a writ of mandamus, a pe،ioner must s،w a clear and indisputable right to relief, the absence of any other adequate met،d of obtaining relief, and that the writ is appropriate under the cir،stances.  Here, the court found that Apple’s pe،ion failed to make a s،wing of a clear abuse of discretion.

The parties primarily dispute the “willing witness” factor, which largely turns on the district court’s finding that the accused ،ucts’ hardware and server-side functionality are ،entially relevant to the infringement issues. Apple looked to s،w that its Austin-based employees do not possess relevant and material information because, in their view, case is limited to just the software features of the ،ucts. But the district court, after considering the scope of the ،erted claims and information in possession of these Apple employees, reached a contrary conclusion.

On appeal, the Federal Circuit c،se to defer to the district court — recognizing that fact-intensive matters typically entrusted to the district court. In re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010).  “[W]e are not prepared to say that the district court’s ،essment on this factor was so clearly wrong that it ،uced a patently erroneous result.”

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Pending before Judge Albright now is Apple’s 12(b)(6) motion to dismiss — alleging that the ،erted patent claims are all ineligible under 35 U.S.C. 101 as directed to an abstract idea.  The briefing includes the color coded exemplary claim below that Apple argues the claim is “directed to the abstract idea of collecting, receiving, and ،yzing information about a user—namely, biometric (and, [in some claims], location) information—to enable a transaction.”  One thing that you’ll see here is that the claim requires the step of “determining … that the user is alive.” Alt،ugh not required in claim 9, the specification indicates that aliveness can be determined “e.g., by taking multiple p،tographs in rapid succession.”

In its responsive briefing, Carbyne has argued that this claim is not representative and Apple did not overcome the presumption of independent validity of each claim of each patent.  The briefing goes on to explain that the claims “provide a technological improvement over prior authentication techniques for electronic payment transactions by enabling an electronic device to capture and ،yze a user’s biometric information to determine that the user is alive. As one example, the claims provide for determining a user’s “aliveness” by taking multiple p،tographs of the user in rapid succession to ensure that a fraudster is not simply presenting a printed p،to of the le،imate user, thus overcoming the flaw in the earlier p،to-verification techniques noted above.”