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Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 1 of 27
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` IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`EMERSON ELECTRIC CO., FISHER-
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`ROSEMOUNT SYSTEMS, INC., and
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`ROSEMOUNT INC.,
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`Plaintiffs,
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`SIPCO, LLC, and
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`IP CO, LLC (d/b/a INTUS IQ),
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`Defendants.
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`SIPCO, LLC, and IP CO, LLC
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`(d/b/a INTUS IQ),
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`Plaintiffs,
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`EMERSON ELECTRIC CO., EMERSON
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`PROCESS MANAGEMENT LLLP,
`FISHER-ROSEMOUNT SYSTEMS, INC., )
`ROSEMOUNT INC., BP p.l.c., BP
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`AMERICA, INC., and BP AMERICA
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`PRODUCTION COMPANY,
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`Defendants.
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`Civil Action
`File No. 1:15-cv-00319-AT
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`Civil Action
`File No. 1:16-cv-02690-AT
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`SIPCO, LLC AND IP CO, LLC’S MEMORANDUM IN SUPPORT OF
`THEIR MOTION TO TRANSFER VENUE TO THE
`EASTERN DISTRICT OF TEXAS
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 2 of 27
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`Pursuant to 28 U.S.C. § 1404(a), SIPCO, LLC and IP CO, LLC
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`(collectively, “SIPCO”) respectfully request this Court to transfer Civil Action
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`Nos. 1:15-cv-00319-AT and 1:16-cv-02690-AT to the Eastern District of Texas
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`because these actions have nothing to do with Georgia and everything to do with
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`Texas. The Texas forum is closer to the nonparty witnesses, important sources of
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`proof, headquarters for two Emerson entities, BP’s American operations, and the
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`locus of operative facts relating to infringement. The Texas forum also has
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`familiarity with the patents and technology at issue, a pre-established process for
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`streamlining large patent cases, a lighter civil caseload, and clear jurisdiction over
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`all parties. The only reason the parties are before this Court is because Emerson,
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`concerned about the prospect of litigating the parties’ dispute in the Eastern
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`District of Texas, where it belongs, filed an anticipatory suit here, in a clearly less
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`convenient forum.
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`I.
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`THE PARTIES
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`SIPCO and IP CO are small research and development companies that share
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`a common founder: T. David Petite. (GA Dkt. 10 ¶ 10; GA Dkt. 66-12 ¶ 2.) 1 Petite
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` 1
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` All references to the docket in Civil Action No. 1:15-cv-00319-AT will be
`referred to as “GA Dkt. __”. All references to the docket in Civil Action No. 1:16-
`cv-02690-AT will be referred to as “TX Dkt. __”.
`2
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 3 of 27
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`developed extensive wireless control and distribution technology applications
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`through exhaustive research and development in the 1990’s. (GA Dkt. 10 ¶ 11.)
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`Petite’s research resulted in various software, firmware, hardware, and a patent
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`portfolio, all of which are owned by SIPCO today. (Id. ¶ 12.) Investors put tens of
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`millions of dollars behind the development of Petite’s inventions, and this led to,
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`among other applications, smart-grid technology that was purchased by Landis +
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`Gyr. (Id. ¶ 11.) Today, Landis + Gyr implements the technology developed by
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`Petite in millions of devices worldwide. (Id. ¶ 11.) As a result, SIPCO’s patents
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`have been widely licensed, and their licensing remains a major focus of SIPCO’s
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`ongoing business activities. (Id. ¶ 14.)2
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`Emerson Electric and BP, a defendant in the now transferred Texas action,
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` 2
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` Petite has dedicated his time to furthering inventorship and the development of
`new technologies. (GA Dkt. 66-12 ¶¶ 5-12.) Petite, a registered member of the
`Fond Du Lac Chippewa tribe, is a founder of the Native American Intellectual
`Property Enterprise Council. (Id. ¶¶ 3, 5.) Petite has volunteered his time with the
`USPTO working on projects directed toward developing Native American
`intellectual property and as a speaker at patent-examiner training; he has also
`volunteered for organizations that develop and protect entrepreneurship and
`innovation. (Id. ¶¶ 6, 10, 11.) A native of Atlanta, Petite was recognized by the
`Georgia State Senate for his innovations in wireless technology, job creation, and
`an “incredible career” in engineering and invention. (Id. ¶¶ 4, 8.) He was invited to
`and attended President Barack Obama’s signing of the America Invents Act and
`has been recognized as an influential inventor by the USPTO—even having been
`added to the USPTO’s 2014 Inventor Collectible Card Series. (Id. ¶¶ 7, 12.)
`3
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 4 of 27
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`are both Fortune Global 500 companies. Emerson made $22.3 billion and BP made
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`$226 billion in revenues last fiscal year.3 Both are large companies with many
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`subsidiaries and with bases of operations outside of Georgia, as discussed in
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`greater detail below. In the Texas action, these companies, and their considerable
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`resources, are both aligned against SIPCO.
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`II.
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`PROCEDURAL BACKGROUND
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`In 2011, Emerson’s White Rodgers Division took a license to the patents-in-
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`suit.4 In February 2013, SIPCO and Emerson5 began negotiating a license
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`agreement related to Emerson’s Smart Wireless products, which are accused of
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`infringement in this case. (GA Dkt. 51 at 2.) Prior to their first scheduled in-person
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`meeting to discuss a license for Emerson’s Smart Wireless Products, Emerson filed
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`Civil Action No. 1:13-cv-02528-AT, a declaratory judgment action, in this district
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`in July 2013 (“First Georgia Action”) seeking a declaration of non-infringement
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`and invalidity of eight SIPCO patents. Upon filing, Emerson informed SIPCO that
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`it had filed to prevent suit in the Eastern District of Texas because Emerson knew
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` 3
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` See Fortune Global 500, http://fortune.com/global500/, (last visited August 1,
`2016).
`4 The White-Rodger’s license is restricted to the home automation field of use.
`5 Emerson Electric Co., Emerson Process Management LLLP, Fisher-Rosemount
`Systems, Inc., and Rosemount Inc. are collectively referred to as “Emerson.”
`4
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 5 of 27
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`SIPCO had “filed multiple lawsuits” there and believed that district “may unduly
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`favor patent owners.” (Declaration of Timothy J. Reppucci, hereinafter Exh. A, at ¶
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`3.) Emerson later dismissed the First Georgia Action and later brought the instant
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`declaratory judgment action, Civil Action No. 1:15-cv-00319-AT, (“Declaratory
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`Judgment Action”) on U.S. Patent Nos. 7,103,511 (“the ‘511 patent”) and
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`6,044,062 (“the ‘062 patent”) in January 2015.
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`SIPCO attempted to settle the Declaratory Judgment Action by licensing
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`Emerson and its unlicensed business units. When those efforts failed, in October
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`2015, SIPCO brought suit against Emerson on ten other patents6 in an infringement
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`action, formerly Civil Action No. 6:15-cv-00907-RWS-KNM, in the Eastern
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`District of Texas (“Infringement Action”) and later amended its complaint to add
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`infringement claims against joint infringer BP,7 an additional Emerson entity,
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` 6
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` U.S. Patent Nos. 7,697,492 (“the ‘492 patent”), 6,437,692 (“the ‘692 patent”),
`6,914,893 (“the ‘893 patent), 6,249,516 (“the ‘516 patent”), 7,468,661 (“the ‘661
`patent”), 8,000,314 (“the ‘314 patent”), 8,233,471 (“the ‘471 patent”), 8,625,496
`(“the ‘496 patent”), 8,754,780 (“the ‘780 patent”), and 8,908,842 (“the ‘842
`patent”).
`7 BP p.l.c., BP America, Inc., and BP America Production Company are
`collectively referred to as “BP.” Discovery in this case has revealed that BP
`collaborated closely with Emerson in the development of Smart Wireless products.
`(See TX Dkt. 76 at Exh. A.) BP had a publicly disclosed, self-described partnership
`with Emerson, the purpose of which was to further develop Emerson’s Smart
`Wireless product line. (See id. ¶¶ 4, 6, 10, 11-12, 14-15.) As part of this
`partnership, BP conducted field tests and studied a number of the accused products
`5
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 6 of 27
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`Emerson Process Management LLLP, and an additional patent.8 SIPCO has since
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`filed a Second Amended Complaint to add, among other allegations, willful
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`infringement allegations against BP. (See, e.g., TX Dkt. 105 ¶ 116.)
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`In the Infringement Action, Emerson filed a motion to dismiss or, in the
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`alternative, transfer the Infringement Action to this district on first-to-file grounds,
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`and the Texas court recently ruled in favor of Emerson’s first-to-file argument,
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`finding a “likelihood of substantial similarity” between the issues in the
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`Declaratory Judgment Action and Infringement Action. (TX Dkt. 98 at 7.) The
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`Texas court has since transferred the Infringement Action to this Court, and the
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`transfer (and potential consolidation) now raises a fundamental question for this
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`Court: where should the Infringement and Declaratory Judgment Actions proceed
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`to trial? See Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 606 (5th Cir.
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`
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`at its facilities throughout the world. (See id. ¶¶ 4-8, 10-12, 14-15, 18-20, 22.)
`Beyond field tests, however, BP helped plan Emerson’s Smart Wireless product
`development strategy. (See id., ¶¶ 11-13, 15, 17, 19.) This product planning
`collaboration included meetings at which Emerson and BP would strategize on
`future product developments, identify which projects to prioritize, and agree on
`what steps to take on these development projects. (See id. ¶¶ 12-13, 15, 19.)
`Emerson acknowledged BP’s “role in bringing this technology to maturity.” (See
`id. ¶ 15.) As a result, BP, which is firmly connected to Texas and the Eastern
`District of Texas forum, (see TX Dkt. 105 ¶¶ 7-9, 12, 80-81), is an integral and
`necessary party to the Infringement Action.
`8 U.S. Patent No. 8,013,732 (“the ‘732 patent”).
`6
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 7 of 27
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`1999). SIPCO respectfully requests this Court not only to transfer the Infringement
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`Action back to the Eastern District of Texas where it originated but also to transfer
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`the Declaratory Judgment Action with it in light of the Texas court’s recent
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`determination that the two actions substantially overlap.
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`III. LEGAL STANDARD
`Transfer of venue to another district is governed by 28 U.S.C. § 1404(a),
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`which states, “[f]or the convenience of parties and witnesses, in the interest of
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`justice, a district court may transfer any civil action to any other district or division
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`where it might have been brought.” District courts “have a wide latitude in
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`determining whether a case should be transferred under § 1404(a).” Rice v.
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`PetEdge, Inc., 975 F. Supp. 2d 1364, 1373 (N.D. Ga. 2013). This Court applies the
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`law of the Eleventh Circuit when analyzing a motion to transfer in a patent case.
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`Catch Curve, Inc. v. Integrated Glob. Concepts, Inc., No. 1:06-CV-2199-CC, 2007
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`WL 9612268, at *7 (N.D. Ga. Sept. 20, 2007).
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`When faced with a Section 1404(a) motion to transfer, the first step is “to
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`determine whether the present action could have been brought” in the proposed
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`transferee forum. Internap Corp. v. Noction Inc., 14 F. Supp. 3d 1336, 1339 (N.D.
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`Ga. 2015). Next, the district court “looks to nine factors to determine the propriety
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`of the transfer:
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`7
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 8 of 27
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`‘(1) the convenience of the witnesses; (2) the location of
`relevant documents and the relative ease of access to
`sources of proof; (3) the convenience of the parties; (4)
`the locus of operative facts; (5) the availability of process
`to compel the attendance of unwilling witnesses; (6) the
`relative means of the parties; (7) a forum’s familiarity
`with the governing law; (8) the weight accorded a
`plaintiff’s choice of forum; and (9) trial efficiency and
`the interests of justice, based on the totality of the
`circumstances.’”
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`Id. (quoting Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005)).
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`IV. ARGUMENT
`A. This Case Might Have Been Brought in the Eastern District of
`Texas.
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`A case “might have been brought” in the transferee forum if that forum has
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`subject-matter jurisdiction, may properly exercise personal jurisdiction over the
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`defendants, and provides a proper venue for the case. Catch Curve, 2007 WL
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`9612268, at *7. Subject-matter jurisdiction is proper in any federal district court
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`for both the Infringement Action and the Declaratory Judgment Action. See 28
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`U.S.C. § 1338(a). As set forth below, personal jurisdiction and venue are proper in
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`the Eastern District of Texas for the Declaratory Judgment and Infringement
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`Actions.
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`1.
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`Personal jurisdiction over Emerson and BP and proper venue
`existed in Eastern District of Texas for the Infringement Action.
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`The Emerson and BP entities cannot deny the Texas court had personal
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`8
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 9 of 27
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`jurisdiction over them. As set forth in the Second Amended Complaint in the
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`Infringement Action (see TX Dkt. 105 ¶¶ 4-5, 7-9, 12-13, 80-81), the Emerson and
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`BP entities both have systematic, regular, and continuous contacts with the State of
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`Texas. See LSI Indus. Inc. v. Hubbell Lighting, Inc., 232 F.3d 1369, 1375 (Fed. Cir.
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`2000) (“General jurisdiction arises when a defendant maintains ‘continuous and
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`systematic’ contacts with the forum state . . . .”). Unsurprisingly, Emerson and BP
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`did not challenge personal jurisdiction in Texas, and they have waived any such
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`challenge. See Fed. R. Civ. P. 12(b), (h) (motion asserting lack of personal
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`jurisdiction must be made under Rule 12 before responsive pleading or joined with
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`other Rule 12 motion, otherwise defense is waived).9
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` Further, Emerson and BP have also waived any defense that venue in the
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`Eastern District of Texas is improper. See Fed. R. Civ. P. 12(b), (b)(3), (h)(1)
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`(improper venue defense treated like lack of personal jurisdiction); Hoffman v.
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`Blaski, 363 U.S. 335, 343 (1960) (“[V]enue, like jurisdiction, may be waived.”).
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`Accordingly, subject-matter jurisdiction, personal jurisdiction, and venue were all
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`proper in the Eastern District of Texas, and the Infringement Action “might have
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`been brought” in the Eastern District of Texas for the purpose of this motion. See
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` 9
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` Emerson and BP have proceeded to litigate the merits of this case, most recently
`serving their Proposed Terms and Claim Elements for Construction (TX Dkt. 94).
`9
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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 10 of 27
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`28 U.S.C. § 1404(a); Catch Curve, 2007 WL 9612268, at *7.
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`2.
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`Personal jurisdiction over SIPCO and proper venue would have
`existed in the Eastern District of Texas for the Declaratory
`Judgment Action.
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`Personal jurisdiction would have been proper over SIPCO in the Eastern
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`District of Texas had Emerson brought its Declaratory Infringement Action in that
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`forum because SIPCO previously initiated suits seeking to enforce the same
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`patents against other parties (unrelated to this action) in that forum. See Viam
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`Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424, 430 (Fed Cir. 1996); Pro
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`Sports Inc. v. West, 639 F. Supp. 2d 475, 482 (D.N.J. 2009); see also Avocent
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`Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1334 (Fed. Cir. 2008) (noting
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`that “judicial or extra-judicial patent enforcement within the forum” will support
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`jurisdiction there). Indeed, in the Eastern District of Texas, SIPCO previously
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`brought five separate infringement actions on the ‘511 patent and IP CO previously
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`brought two separate infringement actions on the ‘062 patent. (Exh. A ¶ 4.) Setting
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`aside the fact that SIPCO consented to jurisdiction in the Eastern District of
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`Texas,10 the “might have been brought” threshold has clearly been satisfied
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`10 Emerson knew SIPCO would have preferred a suit in the Eastern District of
`Texas and specifically filed suit in Georgia to avoid that forum. (Exh. A ¶ 3.) Thus,
`establishing that SIPCO would have consented to jurisdiction in the Texas forum
`does not require hindsight or conjecture in this case. See Guzzetti v. Citrix Online
`10
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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 11 of 27
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`because subject-matter jurisdiction, personal jurisdiction, and venue all would have
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`been proper in the Eastern District of Texas had Emerson brought the Declaratory
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`Judgment Action there. See 28 U.S.C. § 1404(a); Pro Sports, 639 F. Supp. 2d at
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`481-83 (finding personal jurisdiction to be proper where defendant previously
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`brought suit in the same district to enforce the patent-in-suit against other parties);
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`Catch Curve, 2007 WL 9612268, at *7.
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`B.
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`The Nine Factors Pertinent to the Convenience of the Parties and
`Witnesses Demonstrate that the Eastern District of Texas is the
`Proper Forum for This Dispute.
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`1.
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`The Eastern District of Texas is a more convenient forum for
`the most important witnesses in this case, particularly the
`nonparty inventors, the expert witnesses, and the BP witnesses.
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`“Witness convenience is one of the most important factors in evaluating a
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`motion to transfer under § 1404(a), with a focus on ‘key witnesses.’” Ramsey v.
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`Fox News Network, LLC, 323 F.Supp.2d 1352, 1356 (N.D. Ga. 2004). Key
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`witnesses are those which have information regarding liability, and thus, liability
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`witnesses are accorded more weight than damages witnesses in the calculus.
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`
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`Holdings GmbH, No. 12-01152 GMS, 2013 WL 124127, at *3 n.2 (D. Del. Jan. 3,
`2013) (noting purpose of Hoffman rule); see also Encyclopaedia Britannica, Inc. v.
`Magellan Navigation, Inc., 512 F. Supp. 2d 1169, 1173-1174 (W.D. Wis. 2007)
`(“[A] common-sense approach to applying 28 U.S.C. § 1404(a) requires that the
`phrase ‘where it might have been brought’ not act as an absolute bar to transfer
`when the surrounding circumstances favor transfer.”).
`11
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`

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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 12 of 27
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`Ramsey, 323 F. Supp. 2d at 1357. Because “liability . . . will be determined by the
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`accused products that were marketed and sold and the infringing character of those
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`products,” key witnesses related to liability “are the parties themselves and
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`possibly expert witnesses and customers.” Fusionbrands, Inc. v. Suburban Bowery
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`of Suffern, Inc., No. 1:12-CV-0229-JEC, 2013 WL 5423106, at *9 (N.D. Ga. Sept.
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`26, 2013).
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`Further, “[i]n evaluating the convenience of witnesses, the Court focuses on
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`non-party witnesses' willingness and ability to testify in the forum.” Spanx, Inc. v.
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`Times Three Clothier, LLC, No. 1:13-CV-710-WSD, 2013 WL 5636684, at *2
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`(N.D. Ga. Oct. 15, 2013); see also Ramsey, 323 F. Supp. 2d at 1356 (“[T]he
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`convenience of the non-party witnesses weighs most heavily on the Court in
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`deciding a motion to transfer venue.”). “Witnesses closely aligned with the parties,
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`like employees, are presumed to be willing to testify in different forums because
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`their presence can be obtained by the parties themselves.” Spanx, 2013 WL
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`5636684, at *2.
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`Here, the convenience of the nonparty witnesses weighs heavily in favor of
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`transferring this case to the Texas forum. Thomas Fredricks—a former Emerson
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`employee who negotiated and signed the license agreement between SIPCO and
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`Emerson’s White-Rodgers Division, and who will have information relevant to
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`12
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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 13 of 27
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`SIPCO’s infringement and willfulness claims against Emerson—resides in
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`McKinney, Texas, located in the Eastern District of Texas. (See Exh. A ¶ 5.) In
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`addition, third party Linear Technology Corp., which has information relevant to
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`the infringement claims because of its relationship as a supplier of components of
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`Emerson’s accused products that contribute to Emerson’s infringement, has its
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`world headquarters in Milpitas, California, which is closer to Tyler, and a design
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`center within the Eastern District of Texas, in Plano, Texas. (See id. ¶ 6.) While the
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`Eastern District of Texas has important nonparty witnesses with information
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`relevant to infringement, the Northern District of Georgia has none.
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`Other important nonparty witnesses are either in Texas or closer to Tyler,
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`Texas than to Atlanta, Georgia. David Lafferty, formerly of BP’s Chief
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`Technology Office, has information relevant both to BP’s role in the development
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`of the accused products, purchase and use of the accused products, value of the
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`accused products, and the willfulness claims against BP. Mr. Lafferty resides either
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`in Katy or Houston, Texas. (See id. ¶ 7.) Two of the three nonparty inventors who
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`may have information relevant to Emerson and BP’s invalidity claims reside in
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`California. Edwin Brownrigg resides in Roseville, Thomas W. Wilson resides in
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`Antelope, and both California cities are closer to Tyler, Texas than they are to
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`Atlanta. (GA Dkt. 66-10 ¶¶ 3-4.) Richard Huff is the only nonparty inventor closer
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`13
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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 14 of 27
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`to Atlanta, and he is an inventor on only four of the patents-at-issue in these two
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`actions. (See id. ¶¶ 3-7.) With respect to David Petite, he is a party witness for
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`SIPCO and IP CO, making his presence at trial in Texas presumed, see Spanx, Inc.,
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`2013 WL 5636684, at *2, and he has already declared to this Court that he will
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`testify voluntarily in Texas. (GA Dkt. 66-12 ¶ 13.)
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`Moreover, a great number of important witnesses are located closer to Tyler
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`than Atlanta. All of the technical experts who are likely to testify regarding validity
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`and infringement disclosed by the parties so far in this case, Robert Akl, Stephen
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`Heppe, and Kevin Almeroth, reside closer to Tyler than Atlanta. (See Exh. A ¶¶ 8-
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`10.) In fact, Robert Akl resides in Lake Dallas, Texas within the Eastern District of
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`Texas. (See id.) Some of Emerson’s witnesses may be located in or around St.
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`Louis, Missouri or Chanhassen, Minnesota, two locations for which the distance
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`differential between Tyler and Atlanta is minimal. (See id. ¶¶ 11-12; GA Dkt. 1 ¶¶
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`2, 4.) Nevertheless, Emerson witnesses located in or around Round Rock, Texas,
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`which houses Fisher-Rosemount Systems’ headquarters and Emerson Process
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`Management’s $70 million facility for demonstrating its products to customers,
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`will have information relevant to both infringement, willfulness, and damages. (See
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`TX Dkt. 76 at Exh. A ¶¶ 24-25; GA Dkt. ¶ 3.) BP witnesses with information
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`relevant to infringement and willfulness, such as Curt Smith, a Technology
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`14
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`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 15 of 27
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`Director at BP’s Chief Technology Office in Houston, also will have information
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`related to infringement and willfulness. (See Exh. A ¶ 13; TX Dkt. 76 at Exh. A ¶
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`11.) This does not account for other witnesses to be discovered and disclosed11
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`located at BP’s oil and gas wellheads in eastern Texas or at BP’s Chief Technology
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`Office in Houston that will have evidence regarding the development, purchase,
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`and use of accused products in this case. (See TX Dkt. 76 at Exh. A ¶¶ 4, 11-15,
`
`17, 19, 22.) All of these witnesses are key witnesses with information relevant to
`
`infringement in this case. See Ramsey, 323 F. Supp. 2d at 1357; Fusionbrands,
`
`2013 WL 5423106, at *9. Comparatively, Emerson and BP have no identified
`
`party witnesses located in Georgia.
`
`In light of the location of nonparty witnesses and key technical expert
`
`witnesses, and BP party witnesses, the convenience of the witnesses in this case
`
`weighs heavily in favor of transfer to the Eastern District of Texas.
`
`2.
`
`The Eastern District of Texas is closer to the most relevant
`documents and sources of proof in this case.
`
`“In evaluating access to sources of proof, the Court looks to the location of
`
`documents and other tangible materials and the ease with which the parties can
`
`
`
`11 BP has not yet disclosed the names of any witnesses in its initial disclosures,
`despite evidence that BP witnesses or former BP employees may have information
`relevant to this case.
`
`
`
`15
`
`

`

`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 16 of 27
`
`
`
`
`transport the materials to trial.” Spanx, 2013 WL 5636684, at *2. “‘In patent
`
`infringement cases, the bulk of the relevant evidence usually comes from the
`
`accused infringer.’” Internap Corp., 114 F. Supp. 3d at 1340 (quoting In re
`
`Genentech, Inc., 566 F.3d 1338, 1345 (Fed Cir. 2009)). The accused infringer’s
`
`principal place of business is presumed to be the place of infringing activity, such
`
`as the accused product’s development, testing, research, production, and marketing
`
`and sales decisions. Raz Imports, Inc. v. Luminara Worldwide, LLC, No. 3:15-cv-
`
`02223-M, 2015 WL 6692107, at *5 (N.D. Tex. Nov. 3, 2015).
`
`For the reasons set forth in Section B(1) above, the Eastern District of Texas
`
`is much closer to important sources of proof of infringing activity. All locations
`
`discussed above are known to have or presumed to have evidence of infringing
`
`activity and the important sources of proof in this case, and they are closer to Tyler
`
`than to Atlanta. See Internap Corp., 114 F. Supp. 3d at 1340; Raz Imports, 2015
`
`WL 6692107, at *5. In comparison, SIPCO currently knows of no infringing
`
`activity by Emerson or BP within the State of Georgia.
`
`3.
`
`The Eastern District of Texas is a more convenient location for
`the parties.
`
`“[T]he Court looks to whether the inconvenience of the present forum to the
`
`moving party substantially outweighs the inconvenience of the proposed
`
`alternative forum to the non-moving party.” Spanx, 2013 WL 5636684, at *2. As
`
`
`
`16
`
`

`

`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 17 of 27
`
`
`
`
`explained above, BP America, Inc., BP America Production Company, Fisher-
`
`Rosemount Systems, and Emerson Process Management all have headquarters in
`
`Texas, some in Houston and some in Round Rock, and Tyler is closer and more
`
`convenient for these parties. (See TX Dkt. 76 at Exh. A ¶¶ 24-25; GA Dkt. ¶ 3.)
`
`Emerson Electric and Rosemount have headquarters in St. Louis and Chanhassen,
`
`respectively, but the distance differential between Tyler and Atlanta for these
`
`locations is insignificant. (See Exh. A ¶¶ 11-12.) SIPCO clearly indicates through
`
`this and other motions that the Eastern District of Texas is a more convenient
`
`forum for it. Given that the Eastern District of Texas is more convenient for most
`
`of the parties involved in this case, this factor weighs in favor of transfer.
`
`4.
`
`The locus of operative facts is closest to the Eastern District of
`Texas.
`
` “The locus of operative facts is another consideration in the determination
`
`of what would be in the ‘interest of justice.’” Pergo, Inc. v. Shaw Indus., Inc., No.
`
`1:03-CV-1709-BBM, 2003 WL 24129779, at *3 (N.D. Ga. Sept. 16, 2003)
`
`(citation omitted). “For patent infringement actions, the center of the accused
`
`activity is the locus of operative facts: The trier of fact ought to be as close as
`
`possible to the milieu of the infringing device and the hub of activity centered
`
`around its production.” Id. (internal quotation omitted). The dominant
`
`consideration is where the accused products are developed and where the
`
`
`
`17
`
`

`

`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 18 of 27
`
`
`
`
`marketing and sales planning occur. See Phigenix, Inc. v. Genentech, Inc., No.
`
`1:14-CV-287-MHC, 2015 WL 10910488, at *9 (N.D. Ga. Mar. 12, 2015) (finding
`
`this factor weighs in favor of transfer when development and planning activities
`
`occur in transferee forum even when patents-in-suit were developed in transferor
`
`forum).
`
`As discussed earlier, BP America, BP America Production Company,
`
`Fisher-Rosemount Systems, and Emerson Process Management’s various
`
`headquarters in Houston and Round Rock are either known to or presumed to be
`
`the location of infringing activity, such as product development and marketing and
`
`sales planning. See Raz Imports, 2015 WL 6692107, at *5. Further, BP extensively
`
`uses Emerson’s accused products throughout the Eastern District of Texas at its oil
`
`and gas wellheads. (TX Dkt. 105 ¶¶ 12-13, 80-81.) SIPCO does not currently know
`
`of similar infringing activity in Georgia or the Northern District of Georgia.
`
`Consequently, infringement is centered in and around the Eastern District of Texas,
`
`making that forum closer to the locus of operative facts than the Georgia forum.
`
`5. With no indication that any nonparty witnesses will refuse to
`appear in the Eastern District of Texas, the availability of
`compulsory process factor is neutral but will weigh in favor of
`transfer if the nonparty witnesses do refuse to appear.
`
`The availability of compulsory process factor favors transfer “where the
`
`court has absolute subpoena power to compel attendance at depositions and at
`
`
`
`18
`
`

`

`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 19 of 27
`
`
`
`
`trial.” Sarvint Techs., Inc. v. OMsignal, Inc., ___ F. Supp. 3d ___, 2015 WL
`
`10960931, at *11 (N.D. Ga. June 2, 2015). This factor is only relevant to nonparty
`
`witnesses. Id. And the factor remains neutral if there is “no indication that any non-
`
`party witnesses would refuse to appear.” Id. Here, nothing indicates that any
`
`nonparty witnesses will refuse to appear at trial in the Eastern District of Texas.
`
`See id.
`
`If the nonparties do resist, however, this factor weighs in favor of transfer
`
`because the Eastern District of Texas will have subpoena power over two
`
`important infringement witnesses, Thomas Fredricks, a resident of McKinney,
`
`Texas, and Linear Technology, which has a regular place of business in Plano,
`
`Texas. The Northern District of Georgia would only have subpoena power over
`
`Richard Huff, who is an unnecessary witness as to invalidity given that he is an
`
`inventor on only four of the thirteen patents and David Petite is also an inventor on
`
`those same patents. Petite has committed to testifying at trial in the Eastern District
`
`of Texas.
`
`6.
`
`Neither party will face a substantial hardship by litigating in
`the Eastern District of Texas.
`
`Emerson and BP have financial means far beyond SIPCO, and no evidence
`
`suggests that Emerson and BP would face a financial hardship by litigating in the
`
`Eastern District of Texas rather than the Northern District of Georgia. See Dekle v.
`
`
`
`19
`
`

`

`Case 1:16-cv-02690-AT Document 137-1 Filed 08/12/16 Page 20 of 27
`
`
`
`
`Global Digital Solutions, Inc., No. 15-0069-WS-C, 2015 WL 5734451, at *3 (S.D.
`
`Ala. Sept. 30, 2015) (factor neutral where neither party would face a substantial
`
`financial hardship by litigating in one forum or the other). Further, SIPCO, by
`
`bringing suit in the Eastern District of Texas and continuing to pursue suit there,
`
`has indicated that it will not face a substantial financial hardship by litigating there.
`
`Consequently, this factor is neutral.
`
`7.
`
`The Eastern District of Texas’s familiarity with the patents-in-
`suit and related technology weigh in favor of transfer.
`
`With regard to patent law generally, any two federal district courts are
`
`equally familiar with and able to apply governing patent law. See Spanx, 2013 WL
`
`5636684, at *3. Yet, judges in the Eastern District of Texas have construed terms
`
`from four of the patents-at-issue and have familiarity with the technology at
`
`issue.12 See In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010) (familiarity
`
`with patents is a factor affecting transfer decision). The Northern District of
`
`Georgia has not yet had the occasion to construe terms for any of the patents-in-
`
`
`
`12 SIPCO, LLC v. Amazon.com, Inc., No. 2:08-cv-00359-JRG (E.D. Tex. Oct. 19,
`2012), ECF No. 562 (Judge Gilstrap) (‘492 patent); SIPCO, LLC v. ABB, Inc., No.
`6:11-cv-00048-LED-JDL (E.D. Tex. July 30, 2012), ECF No. 255 (Magistrate
`Judge Love) (‘492 patent, ‘893 patent, and ‘

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