Case: 21-172 Document: 13 Page: 1 Filed: 10/13/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: PANDORA MEDIA, LLC,
Petitioner
______________________
2021-172
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00731-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before LOURIE, BRYSON, and TARANTO, Circuit Judges.
PER CURIAM.
ORDER
Pandora Media, LLC, petitions for a writ of mandamus
directing the United States District Court for the Western
District of Texas to transfer this action to the United States
District Court for the Northern District of California. Blue-
bonnet Internet Media Services, LLC opposes. Pandora re-
plies. We conclude that the court’s denial of Pandora’s
motion to transfer amounts to a clear abuse of discretion.
We therefore grant mandamus directing transfer.
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2 IN RE: PANDORA MEDIA, LLC
I
Bluebonnet, a patent assertion entity based in the
Northern District of Texas, brought this action in the Waco
Division of the Western District of Texas. Bluebonnet’s
complaint charged Pandora, a Delaware company head-
quartered in Oakland, California, with infringement of
four patents related to streaming media services.
Pandora moved to transfer the case to the Northern
District of California pursuant to 28 U.S.C. § 1404(a). Pan-
dora asserted that the Northern District of California was
a clearly more convenient forum than the Western District
of Texas. In support of its motion, Pandora noted that the
technology underlying the asserted patents was developed
by Bluebonnet’s predecessor-in-interest, Friskit, Inc., in
San Francisco, California. The asserted patents, according
to Pandora, are members of the same family of patents as
those that were at issue in cases previously transferred to,
and litigated in, the Northern District of California. Sev-
eral of those patents were held invalid in that litigation.
App. 98–101.
Pandora noted that most of its employees who have
knowledge relevant to the accused functionality work in its
offices within the Northern District of California. Id. at
104. Pandora also identified 14 non-party witnesses who
are located in the Northern District of California, includ-
ing: (1) Friskit’s former Chief Software Engineer; (2)
Friskit’s former Chief of Operations; (3) seven former Pan-
dora employees who were the inventors of Pandora patents
referred to in Bluebonnet’s complaint; (4) a witness who
was expected to testify about prior art, including the prior
art introduced in the prior litigation in the Northern Dis-
trict of California; and (5) four former Pandora engineers
who were involved in the development of the accused func-
tionality. Id. at 98–99, 101, 106, 119–20, 268.
In response, Bluebonnet argued that various Pandora
employees had information relevant to Bluebonnet’s
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IN RE: PANDORA MEDIA, LLC 3
damages theories. According to Bluebonnet, four of those
Pandora employees were located in Austin, Texas; two
were located outside of the Western District of Texas, but
within the subpoena power of the district court; and one
was located in Boulder, Colorado. Id. at 237, 239–41. Blue-
bonnet also pointed out that Waco is closer than the North-
ern District of California to the residences of the inventors
of the patents in suit, who are located in Israel and Mary-
land, and that Waco is closer than the Northern District of
California for two potential non-party witnesses located in
New York and Philadelphia. Bluebonnet also argued that
Pandora had failed to “outline the substance of” the testi-
mony that would be given by the seven former Pandora em-
ployees who were inventors of the Pandora patents, and
that Pandora was merely speculating that the former
Friskit employees in California had information relevant
to this case. Id. at 242.
The district court denied Pandora’s transfer motion. At
the outset, the court found that this action could have been
brought in the Northern District of California. It thus sat-
isfied the necessary predicate for the court to consider
transferring the case. The court then analyzed Pandora’s
transfer motion by applying the private-interest and pub-
lic-interest factors that the Fifth Circuit has directed
courts to use in making transfer decisions under section
1404(a). See In re Volkswagen of America, Inc., 545 F.3d
304 (5th Cir. 2008) (en banc) (“Volkswagen II”). The dis-
trict court focused in particular on (1) the location of
sources of proof; (2) the potential need for the court to com-
pel witnesses to appear, (3) the relative convenience of the
two forums for witnesses, and (4) the district with the
greater local interest in the subject matter of the dispute.
The district court noted that the bulk of the documents
in the case, including source code that would need to be in-
spected, are located in the Northern District of California.
Noting Fifth Circuit precedent that considers the actual
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4 IN RE: PANDORA MEDIA, LLC
physical location of documents, and not whether they can
be transmitted electronically, the court found that the rel-
ative ease of access to sources of proof favored transfer.
The court next turned to the availability of compulsory
process to secure the attendance of witnesses. The court
acknowledged that Pandora had identified a number of for-
mer employees and other third-party witnesses located in
the Northern District of California and that Bluebonnet
had identified no third-party witnesses in the Western Dis-
trict of Texas. Nonetheless, the court concluded that nei-
ther party “affirmatively asserts that any of its identified
witnesses are, in fact, unwilling witnesses.” App. 347. Cit-
ing one of its own prior decisions, the court held that when
a party has not shown that a witness is unwilling to testify
voluntarily, the court will “not attach much weight to the
compulsory process factor.” Id. Instead, the court ruled,
those witnesses should be considered under the factor that
addresses the convenience of willing witnesses. Id. at 346.
For that reason, the court determined that the availability
of compulsory process did not favor either forum.
Turning to the convenience of the willing witnesses,
the court recognized that the Northern District of Califor-
nia “is more convenient for the totality of party witnesses.”
Id. at 350. However, the court stated that it assigned little
weight to the convenience of party witnesses. Id. at 351.
As for non-party witnesses, the court noted that Pandora
had identified 14 such witnesses, but it found that Pandora
had failed to identify those witnesses’ residences or the rel-
evance of their testimony to the case. Id. The court found
that the Western District of Texas would be more conven-
ient for the witnesses located in Israel, New York, and Phil-
adelphia. The court therefore found that the convenience
of the witnesses weighed against transfer. Id.
With respect to the public interest factors, the court
agreed with Pandora that the local interest factor weighed
slightly in favor of transfer. The remaining factors, the
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IN RE: PANDORA MEDIA, LLC 5
court found, were neutral. The court then held that the
factors, taken together, did not show that the Northern
District of California was clearly the more convenient fo-
rum. The court therefore denied the transfer motion.
II
Our review of transfer rulings is governed by the law
of the regional circuit, which in this case is the Fifth Cir-
cuit. See In re TS Tech USA Corp., 551 F.3d 1315, 1319
(Fed. Cir. 2008). In applying that law, we have recognized
that a district court enjoys broad discretion in making a
transfer determination. See In re Vistaprint Ltd., 628 F.3d
1342, 1344 (Fed. Cir. 2010). However, when a court’s de-
nial of a motion to transfer under section 1404(a) contra-
venes governing legal standards, we have issued
mandamus to overturn the denial of transfer. See, e.g., In
re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020).
Under Fifth Circuit law, a motion to transfer should be
granted if “the movant demonstrates that the transferee
venue is clearly more convenient.” In re Radmax, Ltd., 720
F.3d 285, 288 (5th Cir. 2013) (quoting Volkswagen II, 545
F.3d at 315) (internal quotation marks omitted). Pandora
satisfied that standard here. The district court found that
the sources-of-proof factor and the local interest factor fa-
vored transferring the case to the Northern District of Cal-
ifornia. And the court found that the compulsory process
factor was neutral. The court found that only the conven-
ience of the witnesses weighed against transfer. The
court’s analysis of both the compulsory process factor and
the convenience of the witnesses was incorrect. Applying
the proper legal standards, as discussed below, it is clear
that those factors both favor transfer.
A
As noted, Pandora identified 14 potential third-party
witnesses who reside in the Northern District of California
and who are subject to the subpoena power of that court.
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6 IN RE: PANDORA MEDIA, LLC
Bluebonnet identified no third-party witness who were
subject to the subpoena power of the Western District of
Texas. We agree with Pandora that the district court erred
in not weighing the compulsory process factor in favor of
transferring the case.
At the outset of its analysis of the compulsory process
factor, the district court acknowledged that “[t]his factor
weighs heavily in favor of transfer when more third-party
witnesses reside within the transferee venue than reside in
the transferor venue.” App. 344. Nonetheless, the district
court found the compulsory process factor to be neutral.
The district court’s finding on the compulsory process
factor was based on a legal error. The district court found
that neither party “affirmatively asserts that any of its
identified witness are, in fact, unwilling witnesses. Id. at
346. The court then stated that “[w]hen no party has al-
leged or shown any witness’s unwillingness, a court should
not attach much weight to the compulsory process factor.”
Id. at 346–47. To the contrary, we have held that “when
there is no indication that a non-party witness is willing,
the witness is presumed to be unwilling.” In re Apple, Inc.,
581 F. App’x 886, 889 (Fed. Cir. 2014); see also In re Hulu
LLC, No. 2021-142, 2021 WL 3278194, at *4 (Fed. Cir. Aug.
2, 2021) (compulsory process factor favors transfer “with-
out a showing of unwillingness for each witness”); In re HP
Inc., No. 2018-149, 2018 WL 4692486, at *3 n.1 (Fed. Cir.
Sept. 25, 2018).
Setting aside that legal error, the compulsory process
factor strongly favors transfer, as Pandora identified 14
third-party witnesses in the Northern District of California
and Bluebonnet identified none in the Western District of
Texas.
B
The district court next found that the convenience of
the witnesses disfavors transfer in this case. We disagree
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IN RE: PANDORA MEDIA, LLC 7
and conclude that Pandora has demonstrated that the
Northern District of California would be a clearly more con-
venient forum for the witnesses.
The district court agreed in principle that the court
should consider the convenience of all relevant witnesses,
but it qualified that statement by holding that “the conven-
ience of party witnesses is given little weight.” App. 347.
Contrary to the district court, however, the convenience of
the witnesses is an important consideration for both party
witnesses and non-party witnesses.
We have held that the fact that a witness is affiliated
with a party “does not negate the inconvenience and cost to
those individuals to travel a significant distance to testify.”
In re Google LLC, No. 2021-170, 2021 WL 4427899, at *4
(Fed. Cir. Sept. 27, 2021); see also In re Juniper Networks,
Inc., No. 2021-160, __ F.4th __, 2021 WL 4343309, at *4
(Fed. Cir. Sept. 24, 2021) (“reject[ing] the district court’s
reliance on the proposition that the convenience to wit-
nesses is attenuated when the witnesses are employees of
the party calling them” (citation omitted)); In re Samsung
Elecs. Co., Ltd., 2 F.4th 1371, 1379 (Fed. Cir. 2021) (holding
that a district court’s section 1404(a) analysis “must con-
sider” the convenience of “possible party witnesses”); In re
Apple Inc., 818F. App’x 1001, 1003 (Fed. Cir. 2020) (reject-
ing the view that the convenience of party witnesses is
given “little weight”); Hulu, 2021 WL 3278194, at *5 (“Alt-
hough an employer’s cooperation in allowing an employee
to testify may diminish certain aspects of inconvenience to
the employee witness . . . it hardly eliminates the inconven-
ience.”).
With respect to the party witnesses, the district court
found that the Northern District of California is “slightly
more convenient for the totality of party witnesses.” App.
350. Although Pandora argued that conducting the trial in
the Western District of Texas would result in a great bur-
den on its employees who would have to travel from
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8 IN RE: PANDORA MEDIA, LLC
California, the district court “assume[d] that no more than
a few party witnesses . . . will testify,” and therefore con-
cluded that the large number of party witnesses identified
by Pandora did not contribute to the analysis of this factor.
Nonetheless, the court recognized that the Northern Dis-
trict of California is “clearly more convenient for Pandora.”
Id.
Notwithstanding the court’s assumption that few party
witnesses would testify at trial, Pandora identified a large
number of its employee witnesses who live and work in the
Northern District of California and who have relevant in-
formation regarding the issues at trial, while Bluebonnet
identified as potential witnesses in the Western District of
Texas only four Pandora employees who worked in sales
and advertising. The district court attached no weight to
the testimony of those four witnesses, and in its brief in
this court Bluebonnet has not invoked the proposed testi-
mony that it intends to elicit from those Pandora employ-
ees to support its argument regarding the convenience of
the witnesses.
In previous cases, we have rejected the district court’s
categorical assumption that defendants are unlikely to call
more than a few, if any, of the proposed party witnesses
who are identified in support of a motion to transfer. See
In re Juniper Networks, Inc., No. 2021-160, 2021 WL
4343309, at *4 (Fed. Cir. Sept. 24, 2021); Samsung, 2 F.4th
at 1379; In re DISH Network, L.L.C., 856 F. App’x 310, 311
(Fed. Cir. 2021). Thus, we have disapproved of the district
court’s rejection of a party’s identified witnesses on
grounds “entirely untethered to the facts of this case,” with
no specific reason to believe that those witnesses would not
play a role in an upcoming trial. Hulu, 2021 WL 3278194,
at *3.
Although acknowledging that the Northern District of
California “is more convenient for the totality of party wit-
nesses,” the court concluded that it “must properly give
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IN RE: PANDORA MEDIA, LLC 9
more weight to the convenience of non-party witnesses.”
App. 350–51. And in light of the convenience of those wit-
nesses, the court concluded that the convenience-of-the-
witnesses factor weighed against transfer. Id. at 351.
The district court based that conclusion on the follow-
ing line of reasoning: First, “the convenience of a party is
generally given little weight,” and “greater weight is given
to a willing non-party witness than to the employees of a
party,” so “the fact that Pandora listed seven employee wit-
nesses [in the Northern District of California] is not per-
suasive to transfer to NDCA.” Second, although Pandora
has identified 14 potential non-party witnesses, it “has
failed to identify the parties, residence, or relevance to this
case” of those witnesses’ testimony. And third, if transfer
is ordered, “alleviating this inconvenience for Pandora in-
stills a higher inconvenience for Bluebonnet and their pro-
posed witnesses, especially the identified non-party
witnesses.” In that regard, the court found that the incon-
venience for the party witnesses “would be generally the
same” whether the case was transferred or not, but “the
inconvenience to the plaintiff’s non-party witness may be
greater if the case is to be transferred.” Id. at 351.
Each step in that analysis is flawed. First, as noted
above, we have held that the convenience of the witnesses
is a relevant factor for both party witnesses and non-party
witnesses. The district court erred by holding that it “must
properly give more weight to the convenience of non-party
witnesses.” Id. at 350–51.
Second, Pandora identified the 14 non-party witnesses
that it proposes to call by reference to their residences at
particular locations within the Northern District of Califor-
nia, their employment or former employment (in 13 of the
14 cases), and a brief allusion to their connection with the
relevant facts of this case. To the extent that Bluebonnet
challenges the relevance of testimony by former Pandora
employees who were inventors of certain Pandora patents,
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10 IN RE: PANDORA MEDIA, LLC
Pandora notes that Bluebonnet itself identified those pa-
tents in its complaint as relevant to the patented technol-
ogy. As this court explained in Hulu, it is not necessary to
do more at this point in the litigation than to show that the
potential witnesses have relevant and material infor-
mation. Hulu, 2021 WL 3278194, at *3. Pandora’s show-
ing as to the relevance of the witnesses’ testimony was
sufficient for purposes of the motion to transfer. 1
Third, while it is true that transferring the trial would
impose burdens on Bluebonnet witnesses who would have
to travel from their homes in the Western District of Texas
to the Northern District of California, Bluebonnet has iden-
tified only four such witnesses, all of whom are Pandora
employees. While there would be some burden associated
with requiring those four Pandora employees to travel from
Texas to California for trial, that burden would be greatly
exceeded by the burden of requiring Pandora’s many wit-
nesses travel from California to Texas. The convenience of
the party witnesses thus clearly favors transfer.
Finally, the court regarded transfer as increasing the
burden on certain non-party witnesses who would have to
1In analyzing Pandora’s list of potential non-party wit-
nesses, the district court focused on the two former Friskit
employees that Pandora included on its list. Although ac-
knowledging that the Friskit employees “may have rele-
vant testimony regarding the patents at issue,” the court
concluded that “arguments regarding the Friskit litigation
are irrelevant to analysis of this factor.” App. 350. Given
that the Friskit patents are parents to the patents-in-suit
and that the witnesses were represented as having
knowledge regarding the development and reduction to
practice of the technology described in the asserted pa-
tents, Pandora made a sufficient showing of the potential
relevance of their testimony for purposes of the transfer
motion.
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IN RE: PANDORA MEDIA, LLC 11
travel a great distance to reach either forum. The facts,
however, do not support the court’s conclusion, particularly
when viewed in light of the governing legal standards.
In addressing the convenience of witnesses, the Fifth
Circuit has stated that “[w]hen the distance between an ex-
isting venue for trial of a matter and a proposed venue un-
der § 1404(a) is more than 100 miles, the factor of
inconvenience to witnesses increases in direct relationship
to the additional distance to be traveled.” Volkswagen II,
545 F.3d at 317 (quoting In re Volkswagen AG, 371 F.3d
201, 204–05 (5th Cir. 2004) (“Volkswagen I”)). The court
explained the reason underlying the rule in Volkswagen I,
371 F.3d at 205: “the task of scheduling fact witnesses so
as to minimize the time when they are removed from their
regular work or home responsibilities gets increasingly dif-
ficult and complicated when the travel time from their
home or work site to the court facility is five or six hours
one-way as opposed to 30 minutes or an hour.”
We have rejected the rigid application of the 100-mile
rule in cases in which the witnesses will be required to
travel a significant distance no matter where they testify.
In In re Apple, for example, we held that the Western Dis-
trict of Texas erred in not weighing that factor in favor of
transfer to the Northern District of California where the
parties’ witnesses were located. 979 F.3d at 1342. We re-
jected the district court’s decision giving more weight to the
fact that the inventors and patent prosecutor residing in
New York would “need to travel a greater distance to
reach” the Northern District of California than the West-
ern District of Texas. Id. We explained that those non-
party witnesses “will likely have to leave home for an ex-
tended period” whether or not the case was transferred,
and thus those witnesses would be only slightly more in-
convenienced by having to travel to California than to
Texas. Id.
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12 IN RE: PANDORA MEDIA, LLC
Our recent decisions in In re TracFone Wireless, Inc.,
852 F. App’x 537 (Fed. Cir. 2021), and In re Google are to
the same effect. In those cases, we followed the reasoning
of Apple and rejected the view that the convenience to the
witnesses should be weighed purely on the basis of the dis-
tance the witnesses would be required to travel, even
though they would have to be away from home for an ex-
tended period whether or not the case was transferred. In
TracFone, we stated that the convenience factor did not cut
against transfer if the witnesses would “only be slightly
more inconvenienced by having to travel to California than
to Texas.” 852 F. App’x at 539; see also Google, 2021 WL
4427899, at *5 (same). Accordingly, we held in TracFone
and Google that the litigation should be conducted where
more witnesses could testify without leaving their homes
or their regular places of business. See TracFone, 852 F.
App’x at 539–40; Google, 2021 WL 4427899, at *5.
The district court’s conclusions regarding the non-
party witnesses cannot be squared with those decisions. In
its opposition to Pandora’s transfer motion, Bluebonnet re-
ferred to a party witness located in Maryland and three
non-party witnesses located in New York, Philadelphia,
and Israel, respectively. The district court held that alt-
hough the Northern District of California “is more conven-
ient for the totality of party witnesses,” App. 350, the
Western District of Texas was more convenient for the
identified non-party witnesses, id. at 351.
Although New York, Philadelphia, and Israel are closer
in distance to Waco than to the Northern District of Cali-
fornia, the district court acknowledged that travel to either
venue would be inconvenient, as those witnesses will have
to travel a significant distance no matter where they tes-
tify. Moreover, we have observed, “the difference in dis-
tance is not as important as the difference in travel time
and the fact that the witnesses would be required to be
away from home for several days in any event. See Google,
2021 WL 4427899, at *4 (explaining that “time is [often] a
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IN RE: PANDORA MEDIA, LLC 13
more important metric than distance”). There is no major
airport in the Waco Division of the Western District of
Texas; consequently, although the distances are somewhat
shorter, the total travel time to Waco from Israel, New
York, and Philadelphia, is approximately the same as the
travel time to the Northern District of California. 2 The
convenience of the three identified non-party witnesses is
therefore equivalent for either forum. And in light of the
fact that the Northern District of California is clearly more
convenient for the other party and non-party witnesses
identified by Bluebonnet and Pandora, the convenience of
the witnesses clearly favors the transferee forum.
C
The rest of the district court’s analysis, which is ad-
dressed to three other issues, does not support the court’s
decision denying transfer. First, with regard to other prac-
tical problems that make trial of the case easy, expeditious,
and inexpensive, the district court addressed Pandora’s ar-
guments regarding the previous Friskit patent litigation
and found the Friskit litigation evidence irrelevant. For
that reason, the court attached no weight to the fact that
the Northern District of California was the site of the
2 One potential witness identified by Bluebonnet is a
Pandora employee who lives in Boulder, Colorado, near
Denver. Bluebonnet argued that Denver is closer to Waco
by distance. However, flying (or a combination of flying
and driving) from Denver to Waco takes longer than flying
from Denver to San Francisco. Bluebonnet’s corporate rep-
resentative, who lives in Maryland, is also closer by dis-
tance to Waco than to the Northern District of California.
As in the case of travel from New York, Philadelphia, and
Israel, however, flying from Maryland to San Francisco
takes approximately the same amount of time as flying (or
flying and driving) from Maryland to Waco.
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14 IN RE: PANDORA MEDIA, LLC
Friskit litigation. As a result, the court found that factor
“neutral at most.” App. 352.
Second, turning to the issue of court congestion, the
court noted that Pandora had argued that the median time
to trial in the Northern District of California was shorter
than the median time to trial in the Western District of
Texas. Based on recent experience, however, the court ex-
plained that the time to trial for patent cases in the Waco
Division of the Western District of Texas was shorter than
in the Northern District of California. After reviewing the
statistics, the court found the court congestion factor neu-
tral. Id. at 354.
Finally, with respect to the interest in having local is-
sues decided at home, the district court rejected Bluebon-
net’s argument that “the presence of some office space” on
the part of Pandora in Austin, Texas, constituted a signifi-
cant physical presence in the Western District of Texas,
and it found that Pandora’s “prevalent presence in Califor-
nia is evidence[d] by their headquarters and significant
presence throughout the state.” The court therefore found
that factor weighed slightly in favor of granting transfer.
App. 355.
Nothing in Bluebonnet’s brief in this court calls into
question the district court’s findings on any of those three
factors. It is undisputed, therefore, that the local interest
factor supports transfer and that the other two factors do
not affect the overall analysis of the transfer decision.
In sum, as in other recent cases in which we have
granted mandamus on the issue of transfer, several of the
most important factors bearing on the transfer decision
strongly favor transfer, and no factor favors retaining the
case in the transferor court. See In re Nintendo Co., 589
F.3d 1194, 1198 (Fed. Cir. 2009) (“This court has held and
holds again in this instance that in a case featuring most
witnesses and evidence closer to the transferee venue with
few or no convenience factors favoring the venue chosen by
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IN RE: PANDORA MEDIA, LLC 15
the plaintiff, the trial court should grant a motion to trans-
fer.” (citation omitted)). We therefore grant Pandora’s pe-
tition seeking transfer.
Accordingly,
IT IS ORDERED THAT:
The petition is granted. The district court’s order deny-
ing Pandora’s motion to transfer is vacated, and the district
court is directed to grant the transfer motion.
FOR THE COURT
October 13, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s29
cc: United States District Court for the Western District of
Texas