Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 1 of 11
`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 1 of 11
`
`
`EXHIBIT 1
`
`
`EXHIBIT 1
`
`
`
`
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 2 of 11
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`Civil Action
`File No. 1:16-cv-02690-AT
`
`
`
`
`
`
`
`
`
`
`
`
`)
`
`SIPCO, LLC, and IP CO, LLC
`)
`
`(d/b/a INTUS IQ),
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`Plaintiffs,
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`v.
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`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.
`
`
`
`)
`
`
`
`PLAINTIFFS’ SUR-REPLY IN SUPPORT OF THEIR OPPOSITION
`TO BP P.L.C.’S MOTION TO DISMISS FOR
`FAILURE TO STATE A CLAIM AND MISJOINDER
`
`Plaintiffs, SIPCO, LLC and IP CO, LLC (d/b/a/ INTUS IQ) (together
`
`
`
`
`“SIPCO” or “Plaintiffs”), respectfully submit this sur-reply in further support of
`
`their opposition to BP p.l.c.’s Motion to Dismiss for Failure to State a Claim and
`
`Misjoinder (“BP’s Motion”).
`
`
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 3 of 11
`
`A. The First Amended Complaint Adequately Pleads Infringement Against
`BP p.l.c.
`
`BP p.l.c. (“BP”)’s argument that the First Amended Complaint does not
`
`adequately plead infringement against it contains critical legal and factual errors.
`
`
`
`First, BP’s reply perpetuates its incorrect view of the applicable law. BP
`
`insists that Plaintiffs are required to plead that “‘BP p.l.c.’ per se used or imported
`
`the accused products apart from the acts of its subsidiaries.” (Dkt. 104 at 3).
`
`Therefore, BP argues, the First Amended Complaint is deficient because “There is
`
`no indication of which of the BP entities are engaged in the allegedly infringing”
`
`activity. (Id.) But that level of specificity is not required at this stage. Instead, “the
`
`specific roles of each [BP] Defendant may be determined in discovery” and need
`
`not be fleshed out in the complaint. WesternGeco v. Ion Geophysical Corp., 776 F.
`
`Supp. 2d 342, 363 (S.D. Tex. 2011) (citing McZeal at 1357). BP glosses over this
`
`case law, tepidly suggesting in a footnote that this Court should ignore
`
`WesternGeco. But BP has offered no contrary case law from a court sitting in the
`
`Fifth Circuit holding that use of the term “BP” to refer to all BP defendants is
`
`insufficient under the Twombly/Iqbal standard.
`
`2
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 4 of 11
`
`Second, BP incorrectly states that the First Amended Complaint does not
`
`allege any facts “‘showing that BP p.l.c. has used or imported the accused
`
`products.’” (Dkt. 87 at 5, 104 at 2). Substituting “BP p.l.c.” for “BP” in the
`
`Amended Complaint (as WesternGeco expressly allows this Court to do) and
`
`accepting those allegations as true (as Twombly requires this Court to do), the
`
`Amended Complaint contains sufficient factual material to state a claim against BP
`
`for infringement of the patents-in-suit.1
`
`Under each count of direct infringement,2 the First Amended Complaint
`
`alleges that BP infringes a patent owned by one of the Plaintiffs by “using within
`
`the United States, or importing into the United States” products that incorporate the
`
`patented technology. (Dkt. 19 at ¶¶ 101, 125, 149, 173, 191, 209, 227, 244, 262,
`
`280, 298). The First Amended Complaint goes on to flesh out the factual details of
`
`BP’s infringement. Specifically, the complaint alleges that BP infringes on specific
`
`
`1 When Plaintiffs amended the complaint, they served it on the U.S. BP entities shortly after it was filed. Cronin
`Decl., ¶ 4. When Emerson’s attorneys appeared on behalf of the U.S. BP entities, Plaintiffs inquired whether BP
`p.l.c. would accept service of the First Amended Complaint. Id. at ¶ 5. BP and Emerson’s counsel indicated that
`they did not represent BP p.l.c. and thus could not accept service on behalf of BP p.l.c. Id. at ¶ 5. But, BP and
`Emerson’s counsel indicated that BP p.l.c. wanted to explore the possibility of allowing BP p.l.c. to exit the case
`without the need for service of the First Amended Complaint. Id. at ¶ 5. Plaintiffs’ counsel inquired about the
`substance of BP p.l.c.’s proposal. Id. at ¶ 6. When BP and Emerson’s counsel finally provided a proposal, Plaintiffs
`determined that it was unacceptable. Id. at ¶ 6. Accordingly, Plaintiffs paid more than $2,000 to serve BP p.l.c.
`through the Hague Convention. Id. at ¶ 7.
`2 Counts II, V, VIII, XI, XIII, XV, XVII, XIX, XXI, XXIII, and XXV.
`
`3
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 5 of 11
`
`claims of Plaintiffs patents by using or importing an enumerated list of specific
`
`products. (Id.). These allegations are factual in nature—not merely legal
`
`conclusions. Accordingly, this Court must accept them as true and view them in
`
`the light most favorable to Plaintiffs. E.g. Bustos v. Martini Club, Inc., 599 F.3d
`
`458, 461 (5th Cir. 2010). These specific details recite a claim that BP has infringed
`
`upon Plaintiffs’ patents and the Amended Complaint should not be dismissed.3 See
`
`e.g. United State v. Bollinger Shipyards, Inc., 775 F.3d 255, 260 (5th Cir. 2014)
`
`(quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
`
`B. BP p.l.c. Is Properly Joined in This Action
`
`BP’s reply cites no case law pertaining to joinder. Instead, BP merely
`
`reiterates its claim (without citing any legal authority) that Plaintiffs’ use of the
`
`collective term “BP” is improper: “[Plaintiffs] improperly join BP p.l.c because
`
`they fail to plausibly allege the specific same infringements that BP p.l.c.
`
`independently caused by its ‘uses’ as opposed to the uses by the other BP
`
`
`3 By arguing that Plainitffs were required to allege more than they already have, BP is asking this Court to “look
`behind [the Amended Complaint’s] allegations and independently assess the likelihood that [Plainitffs] will be able
`to prove them at trial.” Script Security Solutions LLC v. Amazon.com, Inc., 2016 WL 1055827 No. 2:15-CV-1030-
`WCB at *6 (E.D. Tex. March 17, 2016) (quoting Harold H. Huggins Realty, Inc. v. FNC, Inc., 634 F.3d 787, 803 n.
`44 (5th Cir. 2011)). That is inappropriate at this stage. Id. At this stage, Plaintiffs are “not required to crystalize
`[their] theory of infringement without having the benefit of discovery to aid [them].” Tune Hunter Inc. v. Samsung
`Telecommunications America, LLC, 2010 WL 1409245 at *5 (E.D. Tex. Apr. 1, 2010).
`
`4
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 6 of 11
`
`Defendants.” (Dkt. 104 at 5). But, as discussed above and in Plaintiffs’ opening
`
`brief opposing this motion, this position is legally incorrect. WesternGeco v. Ion
`
`Geophysical Corp., 776 F. Supp. 2d 342, 363 (S.D. Tex. 2011) (citing McZeal at
`
`1357). Reading the First Amended Complaint’s allegations against “BP” as
`
`allegations against “BP p.l.c.” specifically, BP p.l.c is properly joined because BP
`
`meets all three joinder criteria enumerated in 35 U.S.C. § 299(a): (1) the BP and
`
`Emerson defendants are accused of infringing the same accused products; (2) BP
`
`and Emerson’s infringement arise from the same series of transactions or
`
`occurrences; and (3) this Court will confront common questions of fact in
`
`resolving the claims against BP and Emerson. (Dkt. 97 at 7-8).
`
`BP’s only other argument (which is wholly unrelated to the joinder analysis)
`
`is that Plaintiffs have not properly alleged joint infringement against BP. 4 In that
`
`respect, Plaintiffs claim that “joint infringement exits only ‘if one party exercises
`
`control or direction over the entire process such that every step is attributable to the
`
`controlling party, i.e., the mastermind.’” (Dkt. 104 at 5 (citing Muniauction, Inc. v.
`
`Thomas Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008)). But BP’s emphasis on the
`
`
`4 BP America, Inc. and BP America Production Company have each answered the Complaint. Indeed, BP p.l.c. itself
`emphasizes that BP America, Inc. and BP America Production Company “have substantively answered the
`Plaintiffs’ allegations [and] there is no hint of allegation that the U.K. parent BP p.l.c. is necessary to prevent an
`escape of liability.” (Dkt. 87 at 6). Accordingly, Plaintiffs joint infringement allegations are proper.
`
`5
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 7 of 11
`
`idea that Plaintiffs must prove that BP p.l.c. “controlled” the other BP entities in
`
`order to state a claim against it is misguided.
`
`In a more recent case clarifying the law on joint infringement, the Federal
`
`Circuit recognized that “an actor is liable for infringement under § 271(a) if it . . .
`
`contracts with another to perform one or more steps of a claims method.” Akamai
`
`Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1023 (Fed. Cir.
`
`2015). Here, the First Amended Complaint alleges that “Emerson is contractually
`
`obligated to provide Smart Wireless Solutions and related support to BP” and that
`
`these products “are preconfigured to perform at least one, but less than all, of” the
`
`steps of Plaintiffs’ claimed methods. (Dkt. 19 at ¶¶ 69, 106, 130, 154). This
`
`contractual obligation flowing from Emerson to BP is sufficient to attribute
`
`Emerson’s performance of certain method steps to BP. See Akamai, 797 F.3d at
`
`1023.
`
`C. The Court Should Grant Leave to Amend Instead of Dismissing the
`Complaint
`
`Although Federal Rule of Civil Procedure 15 is clear that “the court should
`
`freely” grant leave to amend, BP argues that this Court should dismiss the First
`
`Amended Complaint without leave to amend because Plaintiffs’ claims of
`
`6
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 8 of 11
`
`infringement against it are “futile.” (Dkt. 104 at 5). BP apparently believes that the
`
`complaint would pass muster only if it alleged facts that proved a case of
`
`infringement against BP. But all that is required is a “short and plain statement of
`
`the plaintiff’s claim, not an exposition of [its] legal argument.” Script Security
`
`Solutions LLC v. Amazon.com, Inc., 2016 WL 1055827 No. 2:15-CV-1030-WCB
`
`at *6 (E.D. Tex. March 17, 2016) (internal quotation omitted).
`
`The First Amended Complaint, as described above, already contains the
`
`short and plain statement contemplated by Rule 8 and the applicable case law.
`
`Thus, Plaintiffs should not be foreclosed from pursuing their case against BP p.l.c.
`
`at this early stage and, even if this Court finds that dismissal is appropriate, this
`
`Court should grant Plaintiffs leave to amend the complaint to add facts obtained
`
`through the discovery process. As set forth above and in the accompanying
`
`Declaration of Paul J. Cronin, Plaintiffs have acted diligently with respect to BP
`
`p.l.c.. (See Cronin Decl., ¶¶ 4-8; see also Ex. A). Accordingly, any perceived delay
`
`should not count against Plaintiffs.
`
`CONCLUSION
`
`
`
`For the foregoing reasons, and for the reasons set forth in Plaintiffs’
`
`Memorandum in Opposition to Defendant BP p.l.c.’s Motion to Dismiss for
`
`7
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 9 of 11
`
`Failure to State a Claim and Misjoinder, Plaintiffs respectfully request that this
`
`Court deny BP p.l.c.’s Motion to Dismiss for Failure to State a Claim and for
`
`Misjoinder.
`
`
`
`
`
`
`
`Dated: August 9, 2016
`
`
`
`
`
`
`
` Respectfully Submitted,
`
`/s/ J. Christopher Fox II
`J. Christopher Fox, II
`Georgia Bar No. 272527
`Michael Coleman
`Georgia Bar No.l 177635
`Thompson Hine LLP
`Two Alliance Center, Suite 1600
`3560 Lenox Road
`Atlanta, Georgia 30326
`Telephone: 404-541-2900
`Facsimile: 404-541-2905
`Chris.Fox@ThompsonHine.com
`Michael.Coleman@ThompsonHine.com
`
`Paul J. Cronin, Pro hac vice
`James C. Hall, Pro hac vice
`Timothy J. Reppucci, Pro hac vice
`Nutter, McClennen & Fish LLP
`155 Seaport Boulevard
`Boston, Massachusetts 02210-2604
`
`8
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 10 of 11
`
`Telephone: 617-439-2000
`Facsimile: 617-310-9000
`pcronin@nutter.com
`jhall@nutter.com
`treppucci@nutter.com
`
`Counsel for SIPCO, LLC and IP CO, LLC
`
`
`
`
`CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1
`
`The undersigned hereby certifies that this filing was prepared using one of
`
`
`
`
`the font and point selections approved by this Court in Local Rule 5.1C.
`
`Specifically, Times New Roman font was used in 14 point.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`J. Christopher Fox, II
`J. Christopher Fox, II
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`

`

`Case 1:16-cv-02690-AT Document 127-1 Filed 08/09/16 Page 11 of 11
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day served all counsel of record with a
`
`copy of the within and foregoing PLAINTIFFS’ SUR-REPLY IN SUPPORT OF
`
`THEIR OPPOSITION TO BP P.L.C.’S MOTION TO DISMISS FOR FAILURE TO
`
`STATE A CLAIM AND MISJOINDER using the Court’s ECF filing system, which
`
`will automatically send a copy to all counsel of record registered to receive
`
`service thereby, and also by U.S. Mail, postage prepaid, upon the following:
`
`
`
`
`
`
`
`
`
`3226185
`
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, Virginia 22102
`
`William V. Custer
`Damon J. Whitaker
`Bryan Cave, LLP
`One Atlantic Center, Fourteenth Floor
`1201 W. Peachtree St., N.W.
`Atlanta, Georgia 30309
`
`
`
`
`
`
`
`
`
`J. Christopher Fox, II
`J. Christopher Fox, II
`
`
`
`10
`
`