NOTE: This order is nonprecedential.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. 

O R D E R

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. Bluebonnet Internet Media Services, LLC opposes. Pandora replies. 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 headquartered 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). Pandora 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. Several 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, including: (1) Friskit’s former Chief Software Engineer; (2)

Friskit’s former Chief of Operations; (3) seven former Pandora 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 District of California; and (5) four former Pandora engineers 

who were involved in the development of the accused functionality. 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. Bluebonnet also pointed out that Waco is closer than the Northern District of California to the residences of the inventors

of the patents in suit, who are located in Israel and Maryland, 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 testimony that would be given by the seven former Pandora employees 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 satisfied 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 public-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 district court focused in particular on (1) the location of 

sources of proof; (2) the potential need for the court to compel 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 inspected, 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 relative 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 former 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 District of Texas. Nonetheless, the court concluded that neither party “affirmatively asserts that any of its identified 

witnesses are, in fact, unwilling witnesses.” App. 347. Citing 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 California “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 relevance of their testimony to the case. Id. The court found 

that the Western District of Texas would be more convenient for the witnesses located in Israel, New York, and Philadelphia. 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 forum. 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 Circuit. 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 denial of a motion to transfer under section 1404(a) contravenes 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 favored transferring the case to the Northern District of California. And the court found that the compulsory process 

factor was neutral. The court found that only the convenience 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 alleged 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 “without 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 convenient 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 convenience 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 witnesses 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 consider” the convenience of “possible party witnesses”); In re 

Apple Inc., 818F. App’x 1001, 1003 (Fed. Cir. 2020) (rejecting the view that the convenience of party witnesses is 

given “little weight”); Hulu, 2021 WL 3278194, at *5 (“Although an employer’s cooperation in allowing an employee 

to testify may diminish certain aspects of inconvenience to 

the employee witness . . . it hardly eliminates the inconvenience.”).

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 burden 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 concluded 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 District 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 information 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 testimony that it intends to elicit from those Pandora employees 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 witnesses,” 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 witnesses, the court concluded that the convenience-of-thewitnesses factor weighed against transfer. Id. at 351.

The district court based that conclusion on the following 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 witnesses [in the Northern District of California] is not persuasive 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 instills a higher inconvenience for Bluebonnet and their proposed witnesses, especially the identified non-party 

witnesses.” In that regard, the court found that the inconvenience 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 California, 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 patents in its complaint as relevant to the patented technology. 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 information. Hulu, 2021 WL 3278194, at *3. Pandora’s showing 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 identified 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 witnesses 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 

 

1 In analyzing Pandora’s list of potential non-party witnesses, the district court focused on the two former Friskit 

employees that Pandora included on its list. Although acknowledging that the Friskit employees “may have relevant 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 patents, 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 existing venue for trial of a matter and a proposed venue under § 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 difficult 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 District 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 rejected 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 Western District of Texas. Id. We explained that those nonparty witnesses “will likely have to leave home for an extended period” whether or not the case was transferred, 

and thus those witnesses would be only slightly more inconvenienced 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 distance the witnesses would be required to travel, even 

though they would have to be away from home for an extended 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 nonparty witnesses cannot be squared with those decisions. In 

its opposition to Pandora’s transfer motion, Bluebonnet referred 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 although the Northern District of California “is more convenient 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 California, 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 testify. Moreover, we have observed, “the difference in distance 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 addressed to three other issues, does not support the court’s 

decision denying transfer. First, with regard to other practical problems that make trial of the case easy, expeditious, 

and inexpensive, the district court addressed Pandora’s arguments 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 representative, who lives in Maryland, is also closer by distance 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 explained 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 neutral. Id. at 354. 

Finally, with respect to the interest in having local issues decided at home, the district court rejected Bluebonnet’s argument that “the presence of some office space” on 

the part of Pandora in Austin, Texas, constituted a significant physical presence in the Western District of Texas, 

and it found that Pandora’s “prevalent presence in California 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 transfer.” (citation omitted)). We therefore grant Pandora’s petition seeking transfer.

Accordingly,

IT IS ORDERED THAT:

The petition is granted. The district court’s order denying Pandora’s motion to transfer is vacated, and the district 

court is directed to grant the transfer motion.

October 13, 2021 

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

s29

cc: United States District Court for the Western District of 

Texas

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