This morning, the Federal Circuit issued a precedential opinion in a patent case and a precedential opinion in a case appealed from the Merit Systems Protection Board. The court also issued a precedential order issuing a writ of mandamus that directs the Western District of Texas to transfer a patent infringement suit to the Northern District of California. Additionally, the Federal Circuit issued two Rule 36 judgments. Here are the introductions to the opinions, text from the order, and links to the Rule 36 judgments.

Donner Technology, LLC v. Pro Stage Gear, LLC (Precedential)

Donner Technology, LLC (“Donner”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 6,459,023 (“the ’023 patent”), challenging various claims as obvious under 35 U.S.C. § 103. Donner’s petition set forth three grounds of unpatentability, all relying at least in part on the teachings of U.S. Patent No. 3,504,311 (“Mullen”). The Patent Trial and Appeal Board (“Board”) rejected these challenges on the ground that Donner did not prove that Mullen is analogous art. Donner Tech., LLC v. Pro Stage Gear, LLC, No. IPR2018-00708, 2019 WL 4020204, at *10–11 (P.T.A.B. Aug. 26, 2019) (“Decision”). Donner appealed. We vacate and remand.

Hessami v. Merit Systems Protection Board (Precedential)

The petitioner, Dr. Negar Hessami, a former Chief of Pharmacy for a Department of Veterans Affairs medical center, challenges the Merit Systems Protection Board’s dismissal of her whistleblower appeal for lack of jurisdiction. We hold that for purposes of the Board’s jurisdiction under the Whistleblower Protection Act (“WPA”), when determining whether an appellant has non-frivolously alleged that she disclosed information that she reasonably believed evidenced misconduct under the statute, the Board’s inquiry should be limited to evaluating whether the appellant has alleged sufficient factual matter, accepted as true, to state a claim that is plausible on its face. Because the Board erroneously relied on the testimony of agency witnesses in dismissing Dr. Hessami’s appeal for lack of jurisdiction, we vacate and remand for further proceedings.

In Re Apple Inc. (Precedential Order)

Apple Inc. petitions this court for a writ of mandamus directing the United States District Court for the Western District of Texas (“WDTX”) to transfer the underlying patent infringement suit to the United States District Court for the Northern District of California (“NDCA”) pursuant to 28 U.S.C. § 1404(a). Uniloc 2017 LLC opposes. Uniloc also moves to file a sur-reply brief and to supplement the record.

We grant Uniloc’s motions to file a sur-reply and to supplement the record. For the reasons below, we grant Apple’s petition.

* * *

We have considered Uniloc’s remaining arguments but find them unpersuasive. For the foregoing reasons, we hold that “the district court’s errors resulted in a patently erroneous result” and grant Apple’s mandamus petition. See Volkswagen II, 545 F.3d at 318.



(1) The petition is granted.

(2) The motion to file a sur-reply brief is granted.

(3) The motion to supplement the record is granted.

(4) The motion by ACT │ The App Association, The Computer & Communications Industry Association, Unified Patents, LLC, and Roku, Inc. for leave to file a brief amici curiae in support of Apple Inc. is granted.

MOORE, Circuit Judge, dissenting

Our review on a petition for a writ of mandamus is supposed to be limited—we are to grant mandamus to overturn a transfer decision only when the district court has clearly abused its discretion, “produc[ing] a patently erroneous result.” In re Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (Volkswagen II). “Our reluctance to interfere is not merely a formality, but rather a longstanding recognition that a trial judge has a superior opportunity to familiarize himself or herself with the nature of the case and the probable testimony at trial, and ultimately is better able to dispose of these motions.” In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). Our mandamus jurisdiction is not an invitation to exercise de novo dominion, as the majority does here, over the district court’s individual fact findings and the balancing determination that Congress has committed “to the sound discretion of the trial court.” Id. at 1346; 28 U.S.C. § 1404(a). Nor is it an invitation for us to criticize the way our district court colleagues generally manage their dockets, or as the majority puts it, “barrel” ahead on the merits in any given case. Maj. at 5.


I do not believe the district court’s denial of Apple’s transfer motion reflects a clear abuse of discretion. The majority identifies a “misapplication of law to fact” in nearly every factor the district court analyzed. But looking beyond this label, which the Fifth Circuit notably has never relied on as a basis for granting a petition for mandamus, the majority’s criticism amounts merely to a disagreement with the district court’s weighing of its thorough fact findings. See, e.g., Maj. at 12 (“The district court misapplied the law to the facts of this case” and “gave too much significance to the fact that the inventors and patent prosecutor live closer to WDTX than NDCA.”); id. at 16 (“The district court misapplied the law to the facts of this case by relying too heavily on the scheduled trial date.”); id. at 17 (“The district court thus misapplied the law to the facts by so heavily weighing Apple’s general contacts with the forum.”); id. at 18 (“The district court also misapplied the law to the facts by failing to give weight” to the connections between NDCA and the suit.); id. at 19–20 (“Moreover, the district court did not otherwise provide any reason to give these employees and this activity weight above and beyond other relevant employees and activity.”). Though the district court erred in considering events that occurred after the transfer motion was filed, the court cannot fairly be charged with having failed to “meaningfully consider the merits of the transfer motion.” See Barnes & Noble, 743 F.3d at 1383. Nor can we say that the district court’s well-reasoned decision amounts to a “a clear abuse of discretion or usurpation of judicial power.” In re Nintendo Co., 589 F.3d 1194, 1197 (Fed. Cir. 2009). The majority has simply substituted its judgment that transfer should be ordered for that of the district court. At most, the alleged errors identified by the majority would support a motion for reconsideration; they do not warrant the extraordinary remedy of mandamus. It is particularly troubling to grant mandamus here where the petition itself does not raise many of the arguments the majority relies upon in its decision. Under the proper standard of review, I believe the only patently erroneous result here is the one reached by the majority. I dissent from that result. Though the standard of review is not de novo, because the majority has approached the case as though it is, let me add—I agree with the district court and I would have denied transfer de novo.

Rule 36 Judgments