Case: 20-115    Document: 39-2     Page: 1    Filed: 04/22/2020




            NOTE: This order is nonprecedential.


    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                    In re: APPLE INC.,
                          Petitioner
                   ______________________

                          2020-115
                   ______________________

     On Petition for Writ of Mandamus to the United States
 District Court for the Eastern District of Texas in No. 5:19-
 cv-00036-RWS, Judge Robert Schroeder, III.
                   ______________________

                       ON PETITION
                   ______________________

            SEALED ORDER FILED: April 22, 2020
             PUBLIC ORDER FILED: May 5, 2020 *
                  ______________________

 Before PROST, Chief Judge, NEWMAN and HUGHES, Circuit
                         Judges.
          Dissent filed by Circuit Judge NEWMAN.
 PER CURIAM.
                         ORDER


     *  This order originally was filed under seal and has
 been unsealed in full.
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 2                                            IN RE: APPLE INC.




     Apple Inc. petitions for a writ of mandamus asking this
 court to direct the United States District Court for the
 Eastern District of Texas to transfer this case to the North-
 ern District of California. Maxell, Ltd. opposes.
     Applying law of the United States Court of Appeals for
 the Fifth Circuit in cases arising from district courts in that
 circuit, this court has held that mandamus may be used to
 correct a patently erroneous denial of transfer. That stand-
 ard is an exacting one, requiring the petitioner to establish
 that the district court’s decision amounted to a failure to
 meaningfully consider the merits of the transfer motion.
 See, e.g., In re Nintendo Co., 

(Fed. Cir. 2009);
 In re Hoffmann-La Roche Inc., 

(Fed. Cir.
 2009); In re Genentech, Inc., 

(Fed. Cir. 2009);
 In re TS Tech USA Corp., 

(Fed. Cir. 2008);
 In re Volkswagen of Am., Inc., 

(5th Cir. 2008)
 (en banc). We are unable to say here that Apple has met
 that standard.
     We cannot say that the district court clearly abused its
 discretion in concluding that the forum selection clause did
 not compel transfer here. No party contends that the prior
 agreement controls the outcome of this case or has asserted
 a breach of contract claim originating from that agreement.
 Notably, the express purpose of the agreement in question
 was the protection of confidential information related to a
 proposed sale of some of the asserted patents between the
 former patent owner and Apple, which the district court
 reasonably concluded was not the same as the licensing
 discussions at the center of this suit.
     We also see no error that is mandamus-worthy in the
 district court’s conclusion that the traditional transfer fac-
 tors did not clearly weigh in favor of transfer. The district
 court reasonably considered that it had gained “some fa-
 miliarity with the Asserted Patents and the accused tech-
 nologies” based on the district court judge’s experience in
 “prior cases involving Maxell and the Asserted Patents,”
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 IN RE: APPLE INC.                                                 3



 which could not be said for the transferee forum. The court
 also found meaningful connections between this case and
 the Eastern District of Texas, including (a) Maxell’s affili-
 ate having sources of proof in that district; (b) the fact that
 Maxell’s agent and representative for licensing negotia-
 tions with Apple concerning some of the patents resides in
 the Eastern District of Texas, making trial more conven-
 ient in that district with regard to his testimony; and
 (c) several third-party entities located in the district that
 may have relevant documents and witnesses that were
 within the subpoena power of the district court.
       Accordingly,
       IT IS ORDERED THAT:
       The petition is denied.
                                   FOR THE COURT

    April 22, 2020                 /s/ Peter R. Marksteiner
        Date                       Peter R. Marksteiner
                                   Clerk of Court
 s35
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 4                                           IN RE: APPLE INC.




            NOTE: This order is nonprecedential.


     United States Court of Appeals
         for the Federal Circuit
                   ______________________

                    In re: APPLE INC.,
                          Petitioner
                   ______________________

                          2020-115
                   ______________________

     On Petition for Writ of Mandamus to the United States
 District Court for the Eastern District of Texas in No. 5:19-
 cv-00036-RWS, Judge Robert Schroeder, III.
                   ______________________

 NEWMAN, Circuit Judge, dissenting.
      This patent infringement suit against Apple, Inc. was
 filed by Maxell, Ltd., a subsidiary of Hitachi, Ltd., in the
 United States District Court for the Eastern District of
 Texas. Various issues are described as requiring determi-
 nation of rights and obligations governed by an agreement
 made in 2011 between Apple and Hitachi. That Agreement
 contains the following clause:
     (d) This Agreement shall be construed and con-
     trolled by the laws of the State of California, irre-
     spective of choice of law revisions and the parties
     further consent to exclusive jurisdiction and venue
     in the federal courts sitting in Santa Clara County,
     California, unless no federal subject matter juris-
     diction exists, in which case the parties consent to
     the exclusive jurisdiction and venue in the Supe-
     rior Court of Santa Clara County, California. The
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 IN RE: APPLE INC.                                               5



     parties waive all defenses of lack of personal juris-
     diction and forum non conveniens with respect to
     these jurisdictions.
 2011 Agreement at 4. The Texas district court describes
 the question of the relation between the 2011 Agreement
 and a June 25, 2013 letter sent to Apple:
     Maxell asserts that Apple willfully infringed the
     Asserted Patents based on [a] June 25, 2013 letter
     Hitachi sent to Apple. Apple contends that the
     2013 letter was protected by the Confidentiality
     Agreement. To Apple, by relying on the 2013 letter
     as notice of infringement, “there is a dispute be-
     tween Apple and Maxell relating to the applicabil-
     ity of the 2011 agreement to the 2013 letter[, and
     t]his dispute should be resolved in NDCA under the
     2011 agreement’s forum-selection and choice-of-
     law clauses.”
 Dist. Ct. Order at 6 (alteration in original). The Texas dis-
 trict court analyzed the 2011 Agreement and applying it to
 this case. The district court states:
     [T]he Confidentiality Agreement establishes that a
     party may disclose its own information as it
     chooses, including Assertion Material, but a Re-
     ceiving Party generally may not disclose the other
     party’s information, except for Assertion Material
     asserted by the other party against it.
     Confidential Information is limited to “any non-
     public information consistent with the Purpose
     above that a party to this Agreement (‘Disclosing
     Party’) designates as being confidential to the party
     that receives such information (‘Receiving
     Party’) . . . .”

goes on to estab-
     lish that the Disclosing Party controls the disclo-
     sure and designation of information as
     Confidential Information. See, e.g.,

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 6                                               IN RE: APPLE INC.




     (placing all “Obligations Regarding Confidential
     Information” on the Receiving Party). Finally, the
     Confidentiality Agreement establishes that “[a]ll
     Confidential Information is and shall remain the
     property of the original owners. . . . Disclosing
     Party reserves without prejudice the ability to pro-
     tect its rights under any such patents, copyrights,
     trademarks, or trade secrets unless as expressly
     provided herein.”

Thus, whether or not
     the 2013 letter is Assertion Material, the Disclosing
     Party and its successor (Hitachi and Maxell, respec-
     tively) is free to disclose the letter as it sees fit, in-
     cluding to support willful infringement claims.
 Dist. Ct. Order at 8–9 (second alteration in original).
     The Texas district court, in analyzing and interpreting
 the 2011 Agreement, does not purport to apply California
 law, although the 2011 Agreement states that “the Agree-
 ment shall be construed and controlled by the laws of the
 State of California.” 

. And the 2011 Agreement
 explicitly requires that exclusive jurisdiction is in the “fed-
 eral courts sitting in Santa Clara County, California” or if
 there is no federal cause of action, then in “the Superior
 Court of Santa Clara County, California.”

rule concerning forum selection clauses is
 that when the parties choose the forum for resolution of
 any future dispute involving the Agreement, that choice
 must be respected. Although we see transfer motions on
 the ground of forum non conveniens, I recall none where a
 choice of forum was challenged. The Supreme Court has
 well recognized the distinction between the agreed choice
 of forum, and the vagaries of forum non conveniens. The
 Court has summarized:
     In the typical case not involving a forum-selection
     clause, a district court considering a § 1404(a) mo-
     tion (or a forum non conveniens motion) must
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 IN RE: APPLE INC.                                               7



     evaluate both the convenience of the parties and
     various public-interest considerations.
                             ***
     The calculus changes, however, when the parties’
     contract contains a valid forum-selection clause,
     which “represents the parties’ agreement as to the
     most proper forum.” 

, 

. The “enforcement of valid forum-selec-
     tion clauses, bargained for by the parties, protects
     their legitimate expectations and furthers vital in-
     terests of the justice system.”

108 S. Ct.
     2239 
(Kennedy, J., concurring). For that reason,
     and because the overarching consideration under
     § 1404(a) is whether a transfer would promote “the
     interest of justice,” “a valid forum-selection clause
     is given controlling weight in all but the most ex-
     ceptional cases.”
 

108 S. Ct. 2239
.
 Atlantic Marine Const. Co. v. U.S. Dist. Court for W. Dist.
 of Texas, 
571 U.S. 49
, 62–63 (2013).
      Despite the importance of the parties’ choice of forum,
 and the Court’s recognition that this choice is given con-
 trolling weight, my colleagues decline to respect the forum
 selected by the parties for these issues. Instead, the dis-
 trict court and now my colleagues analyze the facts and
 confidentiality situation consigned to California, decide
 their merits, apparently under Texas law, and upon this
 decision, they reject the form selection clause in the agree-
 ment they are interpreting. That is as improper as it is
 illogical.
     In purporting to decide whether to respect the parties’
 contractual selection of forum for issues involved in the
 contract, my colleagues decide the merits of those issues,
 and then announce that the merits will not be decided un-
 der the terms to which the parties agreed at the time of
 contracting, that is, under California law in a federal or
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 8                                            IN RE: APPLE INC.




 state court located in California. Issues of disclosure and
 confidentiality are matters of state law. The merits of
 these contested and complex factual issues require trial,
 not adverse decision on brief motion papers. Nonetheless,
 by agreement of the parties, these merits are consigned to
 California law in a federal or state court located in Califor-
 nia.
      For state law issues such as the laws of confidentiality
 and commerce, the choice of law may be critical. There is
 a long and uncontroversial history of the rights of commer-
 cial parties to agree on the forum and law to apply should
 dispute arise. Surely a party to such agreement can expect
 that this choice will be respected.
     My colleagues err in ruling that this selection of Cali-
 fornia law, and a federal or state court located in California
 does not apply because there are additional issues in the
 case. Although Maxell apparently successfully shifted the
 issue to one of forum non conveniens, the laws of contracts
 and the rules of commerce require respect for the Agree-
 ment that these parties made in 2011. See Omron
 Healthcare, Inc. v. Maclaren Exports Ltd., 
28 F.3d 600
, 603
 (7th Cir. 1994) (“The dominant policy in contract cases is
 enforcing the parties’ agreement, the better to promote
 commerce.” (citing M/S Bremen v. Zapata Off-Shore Co.,
 
407 U.S. 1
, 9 1972)).
     The proper approach, when it appears that issues re-
 lated to the 2011 Agreement are relevant to this dispute, is
 to respect the choice-of-law and forum-selection clauses. It
 is not disputed that California law applies to the infor-
 mation and confidentiality issues that we are told are likely
 to require resolution. The parties’ agreement to a federal
 or state court located in California must be respected as a
 matter of contract law, and as a foundation of commercial
 activity supported by reliable judicial process.
    The integrity of contracts is the foundation of com-
 merce. Here the contract is between two competent
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 IN RE: APPLE INC.                                               9



 commercial entities, Apple and Maxell’s parent Hitachi.
 There is no representation of any impropriety in the 2011
 Agreement. * The judicial obligation is to enforce such con-
 tracts. From my colleagues’ denial of the petition for trans-
 fer, I respectfully dissent.
 .




     *    It is not disputed that four of Maxell’s claims of
 willful infringement are based on “notice allegedly pro-
 vided to Apple during discussions in 2013” and subject to
 the 2011 Agreement. Apple Reply at 3. My colleagues
 agree with Apple that “Apple invites this court to interpret
 the agreement’s preamble, construe defined terms, delve
 into the meaning of the parties’ communications; evaluate
 the scope of the disclosure prohibition; and ultimately sum-
 marily dispose of Apple’s contractual defense against Max-
 ell’s willfulness claims.”
 Id. at 4. 
However, although these
 matters of interpretation and application of the agreement
 are consigned to the California forum, my colleagues decide
 them here, on motion papers, and decide not to permit de-
 cision under California law in a federal or state court lo-
 cated in California. This cannot have been the parties’
 intention when they entered into this contract.