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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`Civil Action No. 1:15-cv-00319-AT
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`
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`Civil Action No. 1:16-cv-020690-AT
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`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
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`Plaintiffs,
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`
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`v.
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`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
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`
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`
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`Defendants.
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`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
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`Plaintiffs,
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`
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`
`
`
`
`v.
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`EMERSON ELECTRIC CO., EMERSON
`PROCESS MANAGEMENT LLLP,
`FISHER-ROSEMOUNT SYSTEMS,
`INC., ROSEMOUNT INC., BP, p.l.c., BP
`AMERICA, INC., and BP AMERICA
`PRODUCTION COMPANY,
`
`
`Defendants.
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`
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`
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`EMERSON/BP JOINT OPPOSITION TO MOTION TO TRANSFER
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`The Emerson and BP parties jointly oppose the motion filed by SIPCO/IPCO
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`seeking to re-transfer the second-filed action back to the Eastern District of Texas,
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 2 of 15
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`pulling the first-filed action Emerson initiated here along with it. Contrary to
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`SIPCO/IPCO’s representations to this Court, this action has strong ties to the state
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`of Georgia, and more particularly the Atlanta area. Moreover, neither the alleged
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`witness convenience nor the Texas court’s alleged prior knowledge of the patents
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`favor transfer, and SIPCO/IPCO’s motion simply comes too late. Accordingly, the
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`requested transfer should be denied.
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`A.
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`SIPCO/IPCO Have Strong Ties To The Northern District of Georgia
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`Both SIPCO and IPCO are Georgia corporations with offices in Atlanta. The
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`connections between these actions and this District do not stop there. Indeed,
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`neither company is known to have offices outside this District and no claim of such
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`office in Texas, or elsewhere, has even been made.
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`
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`Mr. David Petite, a named inventor on all of the patents asserted by SIPCO
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`and SIPCO/IPCO’s Chairman (formerly President and Chief Executive Officer),
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`Mrs. Candida Petite, SIPCO/IPCO’s Chief Operating Officer, and Mr. Joel
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`Goldman, SIPCO/IPCO’s former in-house counsel (and person with interest in the
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`outcome of this litigation), all live and work in the Atlanta area.1 The same is true
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`1 The IPCO/SIPCO 7.1 Disclosure identifies Mr. and Mrs. Petite, GE Intellectual
`Property Licensing, Inc./GE, Tagivan II LLC and Mr. Goldman as persons or
`corporations with interest in the outcome of these litigations. [319 action - Doc. 8].
`Although SIPCO/IPCO again depicts this case as one involving large international
`corporations against a small, local businessman, SIPCO/IPCO’s corporate
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`-2-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 3 of 15
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`of patent attorneys at the Atlanta office of the Troutman Sanders law firm who
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`prosecuted many of the patents asserted in these actions and who, along with Mr.
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`Goldman, are alleged to have acted inequitably in representing SIPCO/IPCO before
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`the United States Patent and Trademark Office (“USPTO”). [Doc. 106 in the 690
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`transferred action]. Each of these individuals is expected to be a witness at trial, and
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`yet, other than Mr. Petite, SIPCO/IPCO’s motion makes no mention of any of these
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`people. Further, SIPCO/IPCO fails to address the fact that Robert Colao, Ghaith
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`Matalkah, Adam Crall, Ryan Schneider and Christopher Kent, all identified in their
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`Rule 26(a)(1) Initial Disclosures as persons with relevant knowledge, also live and
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`work in the Atlanta area.
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`
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`The present motion presents the surreal situation in which two Atlanta-based
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`corporations assert that an action filed by them and an action filed against them have
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`“no connection” to Georgia and seek to transfer those actions out of their “home”
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`court. [Memorandum in Support of Motion to Transfer, p. 2]. This is not the first
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`time SIPCO and IPCO have asked this Court to transfer a case involving these same
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`patents. SIPCO and IPCO have both individually asked this Court to transfer earlier
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`actions involving these patents to the Eastern District of Texas. That request was
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`disclosure statements make clear that they are being supported by both an entity
`that finances patent assertions, and General Electric, one of the largest corporations
`in the world.
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 4 of 15
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`rejected in both cases. See Exhs. B and C, attached to Toohey Declaration, Exhibit
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`A. Indeed, in both, transfer was denied, in part, on the basis that SIPCO and IPCO
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`are both Georgia corporations with a main office and employees in Atlanta. See,
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`e.g. Exh. B, p. 6; see also Exh. C, SIPCO, LLC v. Control4 Corp., 2012 WL
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`526074 (N.D. Georgia, Feb. 16, 2012) at *2. Those facts have not changed.
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`
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`Given SIPCO/IPCO’s status as Atlanta-based, Georgia corporations,
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`controlling case authority required Emerson to file its Declaratory Judgment action
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`either in this District or in a district in which SIPCO/IPCO had enforced the patent
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`being challenged. Avocent Huntsville Corp. v. Aten Int’l Co., 553 F.3d 1324, 334
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`(Fed. Cir. 2008). Prior to filing its Declaratory Judgment action here, Emerson was
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`aware that SIPCO and IPCO had both asserted one or more of their patents in
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`district courts throughout the country, including this District, the Northern District
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`of California, the Eastern District of Pennsylvania and the Eastern District of Texas.
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`Emerson, however, was under no obligation to evaluate which of SIPCO/IPCO’s
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`many patents had been asserted in each of those districts, or to decide between those
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`districts, when it was clear that jurisdiction and venue against both SIPCO and
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`IPCO was proper here as to all of SIPCO/IPCO’s patents. Truth be told, Emerson
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`preferred to file its declaratory judgment action in one of its own home courts, either
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`-4-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 5 of 15
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`in St. Louis or Minneapolis, but filed in SIPCO/IPCO’s home court because venue
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`was plainly proper here.
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`B.
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`Plaintiff’s Choice of Forum Should Not Be Lightly Disturbed
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`Emerson filed its declaratory judgment action in this District on January 30,
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`2015. That action is undeniably the first-filed action and weight should be given to
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`that forum selection. Where, as here, a second, substantially overlapping action is
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`filed, the first-filed court typically will hear the matter and is empowered to enjoin
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`the second-filed action. Manual v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir.
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`2005); Collegiate Licensing C. v. American Cas. Co. of Reading, Pa., 713 F.3d 71,
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`78 (11th Cir. 2013). It is well established that “the plaintiff’s choice of forum should
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`not be disturbed unless it is clearly outweighed by other considerations.” Van
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`Howell v. Tanner, 650 F.2d 619, 616 (5th Cir. 1981). The party (or parties) seeking
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`transfer bear the burden of establishing that the Section 1404(a) factors weigh in
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`favor of transfer. Spanx, Inc. v. Time Three Clothiers, LLC, No. 13-cv-710-WSD,
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`2013 WL 5636684 at *1 (N. D. Ga. Oct. 15, 2013). Absent a showing of a unique
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`or unexpected burden, a company should not be successful in arguing that litigation
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`in its home court is inconvenient. Wesley-Jessen Corp. v. Pilkington Visioncare,
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`Inc., 157 F.R.D. 215, 218 (D. Del. 1993), but see, In re Link_A_Media Devices
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 6 of 15
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`Corp., 662 F.3d 1221, 1223-34 (Fed. Cir. 2011) (state of incorporation alone –
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`without corporate offices within that state – not dispositive of venue).
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`
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`SIPCO and IPCO are both Atlanta-based Georgia corporations. Their
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`employees, including Mr. and Mrs. Petite, Mr. Goldman, Mr. Colao and Mr.
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`Matalkah, live and work in the area. These facts are not in dispute. Messrs. Weeks
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`and Yancey, attorneys involved in the prosecution of the patents at issue, both
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`worked at the Atlanta offices of the Troutman firm and at least Mr. Weeks is still
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`resident at that office. Exh. D. The relevant files created and maintained by these
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`individuals, as well as others at the Troutman firm, are maintained in Atlanta.
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`Indeed, despite document requests to SIPCO and IPCO requesting their production
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`and a Rule 45 subpoena to the Troutman firm, Troutman’s patent prosecution files
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`have not been produced and it appears that motions to compel may be necessary.
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`This Court is in the best position to order the production of these Atlanta-based
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`records. Beyond being Emerson’s choice of venue, this District plainly has
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`significant connection with the dispute.
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`C. Witness Convenience Does Not Favor Transfer
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`Given the location of its operations, employees and documents, SIPCO/IPCO
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`argues that the Texas court would be more convenient for the Emerson parties and
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`BP. But that consideration appears insincere – it is not Emerson or BP who seek the
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 7 of 15
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`transfer on behalf of their witnesses, and Texas is not more convenient for the
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`relevant witnesses in this case. Most of the relevant Emerson information and
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`witnesses will come from Rosemount’s facilities in Minneapolis, Minnesota. The
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`accused products were developed by Rosemount and the individuals SIPCO/IPCO
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`have noticed for deposition work and live in the Minneapolis area. Specifically,
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`SIPCO/IPCO noticed Messrs. Robert Karschnia (Vice President – Wireless), Ted
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`Schnaare (Director of Engineering – Wireless) and Eric Rotvold (Senior Engineer –
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`Wireless) for deposition. All three live and work in the Minneapolis area. See
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`Notices of Deposition Exhs. E-G (setting depositions in Minnesota). SIPCO/IPCO
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`has also noticed Mr. John Groves for deposition. Mr. Groves is an Emerson
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`employee who lives and works in St. Louis. See Exh. H (noting St. Louis as
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`location of deposition). Not one of these individuals lives or works in Texas. The
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`Eastern District of Texas is not more convenient for any of these witnesses – indeed,
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`trips to both courts would require an air flight and hotel accommodations. This
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`Court is in the heart of Atlanta, SIPCO/IPCO request transfer back to the Tyler
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`Division of the Texas court. Travel to that court would require air travel and then a
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`drive of over 2 hours. [See Doc. 75-3 (Google Maps travel report)].
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`SIPCO/IPCO also noticed Mr. Thomas Fredricks, a Texas resident, for
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`deposition. Mr. Fredricks, however, does not work with the accused Emerson
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 8 of 15
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`Smart Wireless products and never has. Mr. Fredricks presently works for Emerson
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`Process Management Regulator Technologies, Inc., a wholly-owned subsidiary of
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`Emerson Electric Co., but formerly worked directly for Emerson Electric Co. Exh.
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`I, ¶¶ 2. It was in that capacity that Mr. Fredricks was called upon to execute a
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`license agreement between Emerson and SIPCO/IPCO in late 2011. Id. at ¶ 3. That
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`license agreement related to a relatively small home thermostat product offering,
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`and did not involve the accused Smart Wireless products at issue in this case in any
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`way. Mr. Fredricks is not believed to have any information relevant to this action,
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`but to the extent that his testimony might be required, he has agreed to travel to
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`Atlanta to do so. Id. at ¶ 4.
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`SIPCO/IPCO raise three other alleged convenience of witness arguments.
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`None of those additional arguments have any greater merit. First, SIPCO/IPCO
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`notes that Emerson’s supplier of wireless communication technology used in the
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`accused products, Linear Technologies Inc. (formerly Dust Networks), has an office
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`in Dallas, Texas. What SIPCO/IPCO fail to concede is that the Linear
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`Technologies’ Dallas office has no connection with this dispute and no relevant
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`witness from that office has been identified. Linear may have an office in Dallas,
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`but it is headquartered in San Jose, California, as demonstrated by even the
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`information SIPCO/IPCO submitted in support of its present motion. See Doc. 113
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 9 of 15
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`(1:15-cv-00319-AT), Exh. 3, attached to Reppucci Declaration. SIPCO/IPCO well
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`knows that the relevant information it seeks is at Linear’s headquarters in Northern
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`California, the very place to which SIPCO/IPCO addressed their Rule 45 Notice of
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`Deposition of Linear. Exh. J.2 Linear’s Dallas Design Center appears to be
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`involved in the development of analog IC chips, not wireless communication
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`products. See Exh. K.
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`Finally, SIPCO/IPCO note that one or more of the BP defendants have
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`offices in Texas. But what SIPCO/IPCO does not reveal is that those offices are in
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`Houston, a town within the Southern District of Texas – not the Eastern District
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`where SIPCO/IPCO want to transfer these cases back to despite their being no
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`legitimate grounds to do so. Moreover, BP is a mere purchaser and user of the
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`accused Emerson Smart Wireless products. In their Second Amended Complaint in
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`the action filed in Texas, SIPCO/IPCO still rely on the purchase and use of those
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`products to support their infringement allegations against BP. But the infringement
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`allegations made against BP could be made against any purchaser/user of those
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`products. SIPCO/IPCO nevertheless again argues that BP is allegedly an important
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`2 If information known to Linear is as critical to the outcome of this case as
`SIPCO/IPCO suggest, SIPCO/IPCO had the key to unlock the “problem” by
`naming Linear as a defendant in this action. After all, Linear is the supplier of the
`wireless communication technology at the heart of this dispute.
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 10 of 15
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`party because it somehow jointly developed the accused products. Memo. at p. 23.
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`Even if true, SIPCO/IPCO has yet to explain how BP is an important party in the
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`action filed in Texas, but not the action filed here. Not only is SIPCO/IPCO’s joint
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`development allegation untrue, it is not even pled. Moreover, “joint development”
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`by itself does not give rise to a cause of action for infringement.
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`The Patent Act is very specific about what acts constitute infringement.
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`Section 271 of the Patent Act provides that “whoever without authority makes, uses,
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`offers to sell, or sells any patented inventions, within the United States or imports
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`into the United States any patented invention during the term of the patent therefor,
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`infringes the patent.” 35 U.S.C. § 271. Nowhere in the Patent Act is proffering
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`design suggestions, establishing performance goals, watching a product
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`demonstration, or offering critiques of another party’s product defined as an act of
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`infringement. Even if a BP entity had given feedback to Emerson, that feedback is
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`not a cognizable act of infringement.
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`Nor is it true that BP jointly developed the accused Emerson products.
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`Emerson brought its own products, its own people and its own equipment to a test
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`site provided by a BP entity at a refining facility in Washington state (Cherry Point).
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 11 of 15
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`See Exhs. L and M.3 BP did not buy those products or pay for that testing and the
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`tested products remained Emerson’s property. Exh. L at ¶ 7. The employees of
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`both companies, Messrs. Karschnia and Lafferty, have expressly rejected the
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`assertion that Emerson and BP jointly developed the accused products. Exh. L at ¶¶
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`6-10, 13; Exh. M at ¶¶ 6-12. SIPCO/IPCO creates support for its contrary, unpled
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`assertion by misconstruing documents produced in this action. Those documents,
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`however, do not establish joint development and Emerson has objected to
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`SIPCO/IPCO’s mischaracterizations of those documents as improper. See Doc. 81
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`(690 transferred action). Nowhere in those documents is it said that BP and
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`Emerson jointly developed the accused technology. Indeed, even the excerpts
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`SIPCO/IPCO’s counsel cropped out of those documents supports the points made
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`by Messrs. Karschnia and Lafferty. See Doc. 76, Reppucci Decl., Exh. 3 [EMR-
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`SIP00242581] (noting that “BP will provide a platform for field trials of agreed
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`development products. Emerson will be responsible for the cost of test devices, for
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`engineering support and for product development.”). That, combined with
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`Emerson’s and BP’s long-standing denial of SIPCO/IPCO’s assertion, should have
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`ended the dispute.
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`3 The Cherry Point facility at which Emerson’s products were tested is owned by
`BP Products North America, not one of the named defendants. Exh. L at ¶ 11.
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`-11-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 12 of 15
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`In any event, should BP be required to participate further in this action, and
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`the BP parties have moved for severance and stay under the customer suit
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`exception, see Document 71 in the transferred 690 action, the BP parties are willing
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`to bring their witnesses to trial in Atlanta. Moreover, although he is no longer
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`working for BP, Mr. David Lafferty has also agreed to come to trial in Atlanta if his
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`testimony should prove relevant and necessary. Exh. L at ¶ 15.
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`Finally, SIPCO/IPCO argue that trial in Texas will be more convenient for
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`the experts identified by the parties. Memo. in Support at 14-15. But, like counsel’s
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`convenience, the convenience of the forum for expert witnesses is not usually
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`considered in a 1404(a) analysis. Experts will travel for trials; otherwise they will
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`not be heard. Accordingly, like counsel, they will travel to the forum where the
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`action is tried and they are not commonly treated as non-party witnesses.
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`E.
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`The Texas Court Does Not Have More Relevant Experience
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`SIPCO/IPCO identify a number of actions they individually filed in various
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`divisions of the Eastern District of Texas, and argue that the Texas court has greater
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`knowledge of the issues in this action. That assertion rings hollow in light of
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`several key facts. First, not one of those cases went to trial and few got to even the
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`Markman claim construction. Second, those cases were conducted some time ago
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`and the judges involved were likely busy with other matters in the meantime.
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`-12-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 13 of 15
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`Critically, the Texas action had been assigned to Judge Schroeder, and he had no
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`prior experience with the patents involved here. Judge Gilstap in the Eastern
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`District of Texas had prior experience with one or more of the patents at issue here,
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`but he recused himself from the case. Order of Recusal, Doc. 55 (690 transferred
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`action).
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`E.
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`SIPCO/IPCO’s Motion Comes Too Late
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`The question of venue has been at issue since December 2015 and has been
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`extensively briefed, from a multitude of perspectives, in two district courts. Had
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`SIPCO/IPCO wanted to challenge venue in this forum, it should have done so
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`directly more than a year ago. Instead, SIPCO/IPCO filed a competing,
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`substantially overlapping action in Texas nearly nine months after Emerson filed its
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`action. The Texas court put a stop to that strategy, but not before extensive effort
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`was invested in briefing two courts as to the impropriety of SIPCO/IPCO’s
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`approach. SIPCO/IPCO now seek to reverse that loss, and to move this case to a
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`forum more to its liking, by filing a simple 1404 challenge. That challenge,
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`however, should have been made a year ago. SIPCO/IPCO waived that challenge
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`by not bringing it in a timely manner.
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`-13-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 14 of 15
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`
`By: /s/ Ryan T. Pumpian
`
` By: /s/ William V. Custer
`
`Ryan T. Pumpian
`Georgia Bar No. 589822
`rpumpian@bloomsugarman.com
`BLOOM SUGARMAN, LLP
`977 Ponce de Leom Ave., N.E.
`Atlanta, Georgia 30306
`Tel: 404-577-7710
`Fax: 404-420-0828
`
`
`
`
`
`By: /s/ James D. Berquist
`Admitted Pro Hac Vice
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST
`JACKSON & GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`djackson@dbjg.com
`jberquist@dbjg.com
`sdavidson@dbjg.com
`
`Attorneys for BP Parties
`
`
` William V. Custer
`Georgia Bar No. 202910
`bill.custer@bryancave.com
`Damon J. Whitaker
`Georgia Bar No. 752722
`damon.whitaker@bryancave.com
`BRYAN CAVE, LLP
`One Atlantic Center, Fourteenth Floor
`1201 W. Peachtree St., N.W.
`Atlanta, Georgia 30309
`Tel: 404-572-6828
`Fax: 404-420-0828
`
`By: /s/ James D. Berquist
`Admitted Pro Hac Vice
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`djackson@dbjg.com
`jberquist@dbjg.com
`sdavidson@dbjg.com
`
`Attorneys for Emerson Parties
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`
`
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`-14-
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`Case 1:16-cv-02690-AT Document 126 Filed 08/09/16 Page 15 of 15
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`Local Rule 7.1(D) Certification
`
` I
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` hereby certify that the foregoing pleading has been prepared with Times
`New Roman font, 14 point, one of the font and point selections approved by the
`Court in L.R. 5.1B, N.D. Ga.
`
`
`
`
`/s/ William V. Custer
`Georgia Bar No. 202910
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` Paul J. Cronin
` James C. Hall
` NUTTER, MCCLENNEN & FISH
` LLP
` 155 Seaport Boulevard
` Boston, Massachusetts 02210
` peronin@nutter.com
` jhall@nutter.com
`
`
`
` hereby certify that on this date, I filed Emerson/BP Joint Opposition to
`Motion to Transfer with the Clerk of Court using the CM/ECF system, which will
`automatically notify Defendants' counsel of record as follows:
`
`J. Christopher Fox, II
`Michael Coleman
`THOMPSON HINE LLP
`Two Alliance Center, Ste 1600
`3560 Lenox Road
`Atlanta, Georgia 30326
`Chris.Fox@ThompsonHine.com
`Michael.Coleman@ThompsonHine.com
`
`
`
`
`
` Dated: August 9, 2016
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`
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`
`
`
`
`By: /s/ William V. Custer
`Georgia Bar No. 202910
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`
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`
`
`-15-
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