Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
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`Plaintiffs,
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`Civil Action No. 6:15-cv-907
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`SIPCO, LLC, and IP CO, LLC
`(d/b/a INTUS IQ),
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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,
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`
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`
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`Defendants.
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`PLAINTIFFS’ MEMORANDUM IN OPPOSITION TO EMERSON
`DEFENDANTS’ MOTION TO DISMISS OR TRANSFER THIS ACTION
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`SIPCO, LLC and IP Co, LLC (d/b/a INTUS IQ) (“Plaintiffs” or “SIPCO”) submit this
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`Memorandum in Opposition to the Motion to Dismiss or Transfer (“Mot. To Dismiss”) filed by
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`Emerson Electric Co., Fisher-Rosemount Systems, Inc., and Rosemount Inc. (collectively,
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`“Defendants” or “Emerson”). SIPCO opposes the motion because (1) Emerson is not entitled to
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`benefit from the first-to-file rule after affirmatively abandoning its preemptively-filed declaratory
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`judgment claims with respect to SIPCO’s patents in a separate action pending in the Northern
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`District of Georgia (“NDGA”); (2) the asserted patents in this case are sufficiently different from
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`those in the NDGA action such that first-to-file does not apply; and (3) the Eastern District of
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`Texas is the proper and more convenient forum for resolving this dispute. For these and other
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`reasons set forth more fully below, SIPCO respectfully requests the Court to deny Emerson’s
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`motion.
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`FACTUAL BACKGROUND
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`I.
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 2 of 13
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`SIPCO and Emerson are not strangers, and it is partly because of their history that the
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`first-to-file rule should not apply to this case. SIPCO has a substantial patent portfolio covering
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`technologies that have been incorporated into wireless protocols utilized by standard-setting
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`organizations and licensed to more than sixty corporations. See Original Complaint (hereinafter,
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`“Orig. Comp.”), at ¶¶ 50-55; see also First Amended Complaint (hereinafter, “1st Am. Comp.”),
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`at ¶¶ 59-61, 63-64. Before Emerson preemptively commenced litigation against SIPCO in the
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`NDGA, SIPCO and Emerson shared (and continue to share) a licensor/licensee relationship with
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`respect to SIPCO’s patents. More particularly, in 2011, the White-Rodgers Division of Emerson
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`Electric Co. took a license to a portfolio of SIPCO patents and pending patent applications,
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`including patents at issue in this lawsuit. See Orig. Comp. ¶¶ 60-61; see also 1st Am. Comp. ¶¶
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`71-72.
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`SIPCO’s license grant does not extend to any Emerson entity or division other than the
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`White-Rodgers Division. See Orig. Comp. ¶¶ 62-67; see also 1st Am. Comp. ¶¶ 73-80. As a
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`result, Emerson filed a preemptive declaratory judgment suit in the NDGA alleging non-
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`infringement and invalidity of eight SIPCO patents, including patents-in-suit in this case. See
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`Mot. to Dismiss, Exh. A. Thereafter, the Emerson entities changed course and withdrew their
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`complaint. They changed course yet again by re-filing a subsequent declaratory judgment
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`complaint in the NDGA, but this time alleging non-infringement and invalidity of only two
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`SIPCO patents: U.S. Patent Nos. 7,103,511 (“the ‘511 patent”) and 6,044,062 (“the ‘062
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`patent”)—neither of which are at issue in this case. See Mot. to Dismiss, Exh. B. Having full
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`knowledge of SIPCO’s patent portfolio, and having filed and abandoned claims for declaratory
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`relief in the NDGA with respect to a broad range of SIPCO patents, including many of the
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`patents-in-suit in this case, Emerson made a clear statement—it did not intend to litigate any
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`2
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 3 of 13
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`additional SIPCO patents in the NDGA.
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`As alleged in the Original Complaint, the non-licensed Emerson entities are infringing
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`ten1 SIPCO patents. See Orig. Comp. ¶¶10-49; see also 1st Am. Comp. ¶¶ 15-58. The patents at
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`issue in this case are not substantially similar to the patents at issue in the NDGA case. In fact, as
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`shown in detail below, a number of the patents-in-suit claim different systems and devices than
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`those claimed by the two patents asserted in the NDGA action.
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`SIPCO filed suit in this district because its judges have already construed the claims of
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`four SIPCO patents at issue in this case2 and are familiar with the technology and subject matter
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`underlying those patents. In addition, the non-licensed Emerson entities have places of business
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`in Texas (including a principal place of business) and in this judicial district, and they have
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`committed and continue to commit acts of patent infringement in Texas and within this judicial
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`district. Accordingly, for these and other reasons set forth more fully below, this case should not
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`be dismissed or transferred to the NDGA because the Eastern District of Texas is the proper and
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`more convenient forum for this dispute.
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`II.
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`LEGAL STANDARD
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`A.
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`First-to-File Rule
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`The first-to-file rule is a general rule that gives precedence to the first-filed action
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`“[w]hen two actions that sufficiently overlap are filed in different district courts.” Futurewei
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`Techs., Inc. v. Acacia Research Corp., 737 F. 3d 704, 708 (Fed. Cir. 2013). But “‘an ample
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`1 The ten patents are: 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”). SIPCO added U.S Patent No. 8,013,732 (“the ‘732 Patent”) in its First Amended Complaint. See 1st
`Am. Comp. ¶¶ 55-58.
`2 Attached hereto as Exhibit A, see SIPCO, LLC v. Amazon.com, Inc., No. 2:08-cv-00359-JRG (E.D. Tex. Oct. 19,
`2012), ECF No. 562 (Judge Gilstrap) (‘511 patent, ‘492 patent, and U.S. Patent No. 6,891,838); SIPCO, LLC v.
`ABB, Inc., No. 6:11-cv-00048-LED-JDL (E.D. Tex. July 30, 2012), ECF No. 255 (Magistrate Judge Love) (511
`patent, ‘692 patent, ‘492 patent, and ‘893 patent); SIPCO, LLC v. Datamatic, Ltd., No. 6:09-cv-00532-LED-JDL
`(E.D. Tex. May 6, 2011), ECF No. 161 (Magistrate Judge Love) (‘692 patent and ‘661 patent).
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`3
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 4 of 13
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`degree of discretion . . . must be left to the lower courts’” in applying the rule. Merial Ltd. v.
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`Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012) (quoting Kerotest Mfg. Co. v. C-O-Two Fire
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`Equip. Co., 342 U.S. 180, 183-84 (1952)). Exceptions to the rule “are not rare, and are made
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`when justice or expediency requires, as in any issue of choice of forum.” Genentech, Inc. v. Eli
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`Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993). And the rule is not applied when the first-filed
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`suit is merely one party’s attempt “to preempt another’s infringement suit.” Elecs. for Imaging,
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`Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed Cir. 2005). The rule also may not apply when efficiency
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`and convenience dictate otherwise. See Genentech, 998 F.2d at 937. Whether the second-filed
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`action should proceed is governed by Federal Circuit law. Futurewei, 737 F.3d at 708.
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`The moving party bears the ultimate burden to show that a case should be dismissed or
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`transferred under first-to-file. Sanofi-Aventis Deutschland GmbH v. Novo Nordisk, Inc., 614 F.
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`Supp. 2d 772, 777 n.5 (E.D. Tex. 2009). And the determination of sufficient or “substantial
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`overlap” in patent cases requires examination of the claims of the patents at issue. See Document
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`Generation Corp. v. Allscripts, LLC, No. 6:08-cv-479, 2009 WL 2824741, at *2-*3 (E.D. Tex.
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`Aug. 27, 2009). Failure to examine the asserted claims risks “chain[ing]” a patent holder to the
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`first-filed forum “whenever it assert[s] a patent in the same family” as those at issue in the first-
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`filed action. See id. at *2. Thus, a movant does not show “substantial overlap” merely by
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`showing the patents are part of the same patent family. Id. at *3 (finding no “substantial overlap”
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`where one patent was a continuation-in-part of the other).
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`Even if “substantial overlap” is established, the court in which the issue has been raised
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`must “utilize a Section 1404(a) approach in order to determine whether the ‘first to file’ rule
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`should be followed.” Sanofi-Aventis, 614 F. Supp. 2d at 781. There is no “categorical rule that
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`the first-filed court is always the appropriate court to determine which case should proceed in the
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`4
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 5 of 13
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`context of patent infringement suits.” Id. at 775.3
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`B.
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`28 U.S.C. § 1404(a) Standard
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`“For the convenience of parties and witnesses, in the interest of justice, a district court
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`may transfer a civil action to any other district or division where it might have been brought . . .
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`.” 28 U.S.C. § 1404(a). “The district court has broad discretion in deciding whether to order a
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`transfer.” Balawajder v. Scott, 160 F.3d 1066, 1067 (5th Cir. 1998) (citation omitted). But a
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`motion to transfer should only be granted “upon a showing that the transferee venue is ‘clearly
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`more convenient’ than the venue chosen by the plaintiff.” In re Nintendo Co., 589 F.3d 1194,
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`1197 (Fed. Cir. 2009) (quoting In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009)). A
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`substantial burden is placed on the movant to show the proposed forum is “clearly more
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`convenient”; this burden respects the plaintiff’s “right to choose the forum in which to seek
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`redress.” Texas Instruments, Inc. v. Micron Semiconductor, Inc., 815 F. Supp. 994, 998 (E.D.
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`Tex. 1993); see also St. Lawrence Commc’ns LLC v. LG Elecs., Inc., No. 2:14-cv-1055-JRG,
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`2015 WL 7854738, at *2 (E.D. Tex. Dec. 3, 2015).
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`The private § 1404(a) convenience factors are “(1) the relative ease of access to sources
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`of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the
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`cost of attendance for willing witnesses; and (4) all other practical problems that make a trial
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`easy, expeditious and inexpensive.” In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir.
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`3 Emerson cites RPost Holding, Inc. v. Trend Micro Inc., No. 2:13-cv-1065-JRG, at 2-3 (E.D. Tex. May 16, 2014),
`ECF No. 29, for the proposition that once substantial overlap is established, the first-filed court determines which
`case should proceed. See Mot. to Dismiss at 5. But RPost relies on Texas Instruments, Inc. v. Micron Semiconductor,
`Inc., 815 F. Supp. 994 (E.D. Tex. 1993) and Cadle Co. v. Whataburger of Alice, 174 F.3d 599 (5th Cir. 1999) for
`this proposition. Both of those decisions were issued before the Federal Circuit’s decision in Micron Technology,
`Inc. v. Mosaid Technologies, Inc., 518 F.3d 897, 904 (Fed. Cir. 2008) (holding that a district court must consider §
`1404(a) factors when exercising its discretion to dismiss or transfer a case in favor of a case pending in another
`forum). And this Court has interpreted Micron to mean that even when the two suits are “identical,” courts should
`not automatically leave the decision of which case should proceed to the first-filed court but should “utilize a
`Section 1404(a) approach in order to determine whether the ‘first to file’ rule should be followed.” Sanofi-Aventis,
`614 F. Supp. 2d at 777-78, 781. Additionally, the issue of substantial overlap was not disputed in the RPost case.
`No. 2:13-cv-01065, at *2, ECF No. 29.
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`5
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 6 of 13
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`2008). And the public factors are “(1) the administrative difficulties flowing from court
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`congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity
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`of the forum with the law that will govern the case; and (4) the avoidance of unnecessary
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`problems of conflicts of laws [or in] the application of foreign law.” Id. (quotation omitted).
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`When analyzing the factors, the movant must be specific and cannot rely on general allegations
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`and vague assertions about the location of evidence or witnesses to be considered. See Abstrax,
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`Inc. v. Hewlett-Packard Co., No. 2:14-cv-158-JRG, 2014 WL 5677834, at *2 (E.D. Tex. Nov. 4,
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`2014); Mears Techs., Inc. v. Finisar Corp., No. 2:13-cv-376-JRG, 2014 WL 1652603, at *3
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`(E.D. Tex. Apr. 24, 2014).
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`III. ARGUMENT
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`A.
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`Emerson Is Not Entitled to Benefit from the First-to-File Rule After
`Affirmatively Abandoning Its Claims and Demonstrating Its Intent Not to
`Litigate Many of the Patents-in-Suit in Its Preemptively-Filed NDGA Action.
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`Emerson is not entitled to use the first-to-file rule to bar suit on these patents in this
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`district. See Genentech, Inc., 998 F.2d at 937 (exceptions to the first-to-file rule can be made
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`“when justice . . requires”); cf. Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 (9th Cir.
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`1991) (equitable exceptions include bad faith, anticipatory suit and forum shopping); Amerada
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`Petroleum Corp. v. Marshall, 381 F.2d 661, 663 (5th Cir. 1967) (anticipatory nature of a
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`declaratory action is an “equitable consideration” a court can consider in applying the first-to-file
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`rule). Emerson’s White-Rodgers Division took a license to SIPCO’s patent portfolio, which
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`includes technology covered by almost all of the patents at issue in this case. Having allowed its
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`other non-licensed divisions and entities to infringe on these patents, Emerson then took the
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`aggressive action of filing declaratory judgment claims on eight of SIPCO’s patents in the
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`NDGA, including many of the patents-in-suit, only later to abandon its claims related to those
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`patents-in-suit and, instead, focus on two SIPCO patents that are not at issue in this case. See
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`6
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 7 of 13
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`Mot. to Dismiss, Exhs. A & B. When it abandoned suit on many of the patents now at issue
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`before this Court, it did so with full knowledge of SIPCO’s patent portfolio, thereby making a
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`clear statement that it did not intend to litigate any additional SIPCO patents in the NDGA.
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`By bringing its declaratory judgment action in the NDGA, Emerson preempted any
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`infringement suit on the ‘511 and ‘062 patents in relation to the accused products and usurped
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`SIPCO’s right to choose a forum in which to seek redress. See Texas Instruments, 815 F. Supp.
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`at 998. But it cannot similarly dictate where and when SIPCO gets to sue on its other patents,
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`including the patents-in-suit—especially when Emerson made a clear, unequivocal choice to
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`abandon any claims on many of those patents. To hold otherwise would allow Emerson to chain
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`SIPCO to the NDGA for every patent in its portfolio—even those patents, as shown below, that
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`have different claimed subject matter and devices. Cf. Document Generation, 2009 WL 2824741,
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`at *2 (examination of patent claims allowed and to hold otherwise would chain patent holder to
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`forum for all patents in family). Emerson should not be allowed to deprive SIPCO of its privilege
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`to choose the proper and most appropriate forum for asserting its rights. See Atl. Marine Constr.
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`Co. v. U.S. Dist. Ct. for W.D. Tex., ___ U.S. ___, ___, 134 S. Ct. 568, 581 (2013) (describing
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`“plaintiff’s venue privilege”). Thus, this Court should exercise its ample discretion and reject
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`Emerson’s attempt to wield the first-to-file rule merely to preempt SIPCO’s infringement suit on
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`the patents at issue in this case. Cf. Amerada Petroleum, 381 F.2d at 663 (upholding trial court’s
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`decision not to apply first-to-file rule for equitable reasons); Williamson v. Am. Mastiff Breeders
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`Council, No. 3:08-cv-336-ECR-VPC, 2009 WL 634231, at *3-*5 (D. Nev. Mar. 6, 2009)
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`(refusing application of first-to-file on a motion to dismiss or transfer the second-filed suit for
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`equitable reasons, despite the cases’ substantially similar parties and issues).
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`7
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 8 of 13
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`B.
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`The First-to-File Rule Does Not Apply Because the Patents in Both Actions
`Are Different and the Issues Do Not Substantially Overlap.
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`The issues in this case do not substantially overlap with the issues in the NDGA action
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`because SIPCO asserts patents that are different from those in the NDGA action. In addition, in a
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`number of instances—ignored by Emerson—the patents have different claimed subject matter
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`and the asserted claims have different limitations. The patents at issue in this case are different
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`patents from those at issue in the NDGA with different claim language that will require
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`independent construction—despite the fact that there are some similarities in the patents at issue
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`here and in the NDGA. See Datamize, Inc. v. Fidelity Brokerage Servs., LLC, No. 2:03-cv-321-
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`DF, 2004 WL 1683171, at *6 (E.D. Tex. Apr. 22, 2004) (“The Federal Circuit has held that
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`where there are even small differences in the language of claims in related patents, the claim
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`language in each patent should be construed independently.”).
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`For example, the ‘842 patent—one of the patents-in-suit in this case—does not cover the
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`same subject matter as the two patents in the NDGA case, the ‘511 and ‘062 patents. The ‘842
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`patent claims a communication device that is substantially different from the systems claimed in
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`the ‘511 and the ‘062 patents: it describes a device that establishes a connection between another
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`device and a central location, as opposed to the client-server network claimed in the ‘062 patent
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`and the network comprising a plurality of transceivers communicating sensor data and a site
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`controller connected to WAN and a host computer, as claimed in the ‘511 patent. See Patent
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`Comparison Charts at 1-2.4 As another example, the ‘893 and ‘492 patents (at issue in this case)
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`claim systems and devices that are substantially different from the system claims in the ‘511
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`patent (at issue in NDGA): the ‘511 patent includes a site controller connected to a WAN and a
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`host computer, but neither of those limitations exist in the ‘893 or the ‘492 patents. See id. at 3-4.
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`4 Attached hereto as Exhibit B.
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 9 of 13
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`Further, the ‘893 and ‘492 patents include a packet including scalable address and command
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`codes, and request/response messages. See id. These limitations are not present in the ‘511 and
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`‘062 patents at issue in the NDGA. These are only a few examples of the important differences
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`between what is claimed in the patents-in-suit and the NDGA patents.
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`Emerson shirks its burden of establishing that the present case is substantially related to
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`the NDGA case by largely ignoring the specific claims of the patents-in-suit and the NDGA
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`patents. Instead, Emerson relies solely on the fact that all the patents are part of the same patent
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`families,5 which is insufficient to show substantial overlap in any case. See Document
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`Generation, 2009 WL 2824741, at *3 (finding no “substantial overlap” where one patent was a
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`continuation-in-part of the other); Datamize, 2004 WL 1683171, at *4 (finding no “substantial
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`overlap” where patents have parent/child relationship).6 In particular, Emerson presents two
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`examples of what it alleges are nearly identical claims in the ‘471 and ‘692 patents and the
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`NDGA patents but blithely ignores the vast majority of the other patent claims, as well as the
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`differences in language and limitations that will require independent construction for each patent.
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`See Datamize, 2004 WL 1683171, at *6; see also Patent Comparison Charts at 5-6. Emerson
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`equally fails to show how this case will require the discovery and development of the same
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`evidence as the NDGA action by neglecting to specify what prior art will be relevant to the
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`5 In claiming that family relationships are enough to show substantial overlap, Emerson relies on previous decisions
`of this Court made in the context of significantly different facts than this case. See RPost, No. 2:13-cv-1065, at *2,
`ECF No. 29 (nonmovant did not contest substantial overlap); MOSAID Techs., Inc. v. Micron Tech., Inc., No. 2:06-
`cv-302-DF, at *5 (E.D. Tex. July 2, 2008), ECF No. 405 (cases shared eight patents in common); AmberWave Sys.
`Corp. v. Intel Corp., No. 2:05-cv-321, 2005 WL 2861476, at *2 (E.D. Tex. Nov. 1, 2005) (second-filed court relied
`on first-filed court’s prior determination that both cases “would involve overlapping issues” and two cases created
`potential conflicts and problems). Contrary to these cases, the patents between both actions are distinct, the question
`of substantial overlap is disputed, and there is no statement from the first-filed court that maintaining both suits will
`create a conflict and will be problematic.
`6 Emerson claims that the ‘842 and ‘511 patents share a “common ancestor,” Application No. 60/059,643 (although
`only the ‘842 patent claims priority directly from Application No. 60/059,643). See Parent Continuity Data for App.
`No. 13/717,384 (‘842 patent) and App. No. 09/925,269 (‘511 patent), attached hereto as Exhibit C. But it has failed
`to explain—with reference to the subject matter and devices claimed by the ‘842 and ‘511 patents—how this is at all
`meaningful to understanding whether the issues in this case and the NDGA case substantially overlap.
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`9
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 10 of 13
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`asserted claims at issue in both cases or what witnesses or other evidence both cases will have in
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`common. Consequently, Emerson does not meet its burden to demonstrate substantial overlap,
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`and its motion to dismiss or transfer under first-to-file should be denied. See Sanofi-Aventis, 614
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`F. Supp. 2d 772 at 777 n.5.
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`C.
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`The § 1404(a) Convenience Factors Show That This District is the Proper
`and More Convenient Forum for Resolving This Dispute.
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`Last, the § 1404(a) convenience factors weigh heavily in favor of keeping this suit in the
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`Eastern District of Texas. Fisher-Rosemount, one of the named Emerson entities, has its
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`principal place of business in Round Rock, Texas—where its infringing activity, such as product
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`development, manufacturing, and sales decisions, is presumed to be taking place. See Genentech,
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`566 F.3d at 1345 (bulk of relevant evidence comes from accused infringer); Raz Imports, Inc. v.
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`Luminara Worldwide, LLC, No. 3:15-cv-02223-M, 2015 WL 6692107, at *5 (N.D. Tex. Nov. 3,
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`2015) (principal place of business presumed place of infringing activity); see also Mot. to
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`Dismiss, Exh. B, ¶ 3. And the other Emerson entities have principal places of business that are
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`closer to Tyler, Texas—St. Louis, Missouri and Chanhassen, Minnesota—than they are to
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`Atlanta, showing that this district is closer to important sources of proof for this case. See Mot. to
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`Dismiss, Exh. B, ¶¶ 2-4. In addition, the Emerson entities have places of business involved in
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`infringing activities both in this district and other places in Texas, and sales of infringing
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`products occur significantly within this district. See Orig. Comp. ¶¶ 3-5, 8; see also 1st Am.
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`Comp. ¶¶ 3-6, 13.
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`Moreover, two of the three nonparty inventors that may have relevant information to this
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`dispute are closer to Tyler than Atlanta.7 See Frederick v. Advanced Fin. Sols., Inc., 558 F. Supp.
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`2d 699, 704 (E.D. Tex. 2007) (convenience of nonparty witnesses is important while
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`7 Upon information and belief, Edwin R. Brownrigg is a resident of Roseville, California, Thomas W. Wilson is a
`resident of Antelope, California, and Richard Huff is a resident of Conyers, Georgia.
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 11 of 13
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`convenience of party witnesses is generally insignificant). And although one nonparty inventor is
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`close to Atlanta, he is a named inventor on only four of the patents at issue, and David Petite, a
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`principal and founder of SIPCO, is also a named inventor on those same patents. Mr. Petite will
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`testify at trial in the Eastern District of Texas. Further, neither forum will have full subpoena
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`power over all of the nonparty witnesses, making the subpoena power factor neutral. See MHL
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`Tek, LLC v. Nissan Motor Co., No. 2:07-cv-289, 2009 WL 440627, at *5 (E.D. Tex. Feb. 23,
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`2009) (factor neutral where neither venue enjoys absolute subpoena power over all witnesses).
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`Consequently, the sources of proof and convenience of nonparty witnesses, and thus the private
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`factors, weigh heavily in favor of this district.8
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`Judicial economy also weighs in favor of retaining this action in this district. Judges in
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`this district have construed terms from four of the patents and have familiarity with the patents
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`and technology at issue in this case. See In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir.
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`2010) (familiarity with patents at issue is a factor); Mears, 2014 WL 1652603, at *4. Further, this
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`District has a particularized interest in this dispute given the identified sources of infringing
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`activity both within this district and Texas, as well as the Emerson entities’ significant presence
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`in Texas and its places of business located within this district. See In re Acer Am. Corp., 626
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`F.3d 1252, 1256 (Fed. Cir. 2010) (sale of accused product a factor if significant connection to
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`particular venue exists).
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`Finally, Emerson has not met its substantial burden, for either the first-to-file rule or
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`under § 1404(a), to show that the NDGA is a clearly more convenient forum for this action. See
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`8 Although recently added to his action, this Court may also consider the addition of BP to the suit. See RPost v.
`Holdings, Inc. v. StrongMail Sys., Inc., No. 2:12-cv-515-JRG, 2013 WL 4495119, at *3 (E.D. Tex. Aug. 19, 2013)
`(addition of co-defendants after motion filed changes convenience factors analysis); Todd Shipyards Corp. v.
`Cunard Line Ltd., 708 F. Supp. 1440, 1450 (D.N.J. 1989); see also In re Volkswagen AG, 371 F.3d 201, 204 (5th
`Cir. 2004) (nothing in §1404(a) limits determination of convenience to those parties in original complaint). Evidence
`of infringing activities will be located at BP gas wellheads located throughout this district, and two of the BP entities
`have their principal places of business in Houston, less than 200 miles away from Tyler. See 1st Am. Comp. ¶¶ 7-9,
`69-79.
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 12 of 13
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`Nintendo, 589 F.3d at 1197; St. Lawrence Commc’ns, 2015 WL 7854738, at *2. It has not
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`provided any specifics as to the location and relevance of the sources of proof and witnesses that
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`factor into the § 1404(a) analysis, nor has it mentioned the availability of compulsory process.
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`See TS Tech USA, 551 F.3d at 1319; Abstrax, 2014 WL 5677834, at *2; Mears, 2014 WL
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`1652603, at *3. It also conducted no analysis of the public factors, other than to reassert that the
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`cases overlap. See TS Tech USA, 551 F.3d at 1319. Consequently, it has failed to meet its burden
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`to show that the NDGA is a clearly more convenient forum. See Nintendo, 589 F.3d at 1197; St.
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`Lawrence Commc’ns, 2015 WL 7854738, at *2; Sanofi-Aventis, 614 F. Supp. 2d at 777 n.5; cf.
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`Abstrax, 2014 WL 5677834, at *3 (“[T]he defendant must perform a thorough investigation of
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`the facts underlying the venue analysis, before filing the motion.”) (emphasis in original).
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`IV. CONCLUSION
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`For the foregoing reasons, SIPCO respectfully asks this Court to deny Emerson’s Motion
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`to Dismiss or Transfer.
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`Dated: January 8, 2016
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`/s/ Paul J. Cronin by permission Claire Abernathy
`Henry
`Paul J. Cronin, (MA Bar No. 641230)
`LEAD ATTORNEY
`James C. Hall (MA Bar No. 656019)
`Nutter, McClennen & Fish LLP
`155 Seaport Boulevard
`Boston, MA 02210-2604
`Telephone: (617) 439-2000
`Facsimile: (617) 310-9000
`Email: pcronin@nutter.com
`Email: jhall@nutter.com
`
`T. Johnny Ward, Bar No.
`Claire Henry, Bar No.
`Ward, Smith & Hill, PLLC
`1127 Judson Rd., Ste. 220
`Longview, Texas 75601
`Telephone: (903) 757-6400
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`Case 1:16-cv-02690-AT Document 24 Filed 01/08/16 Page 13 of 13
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`Facsimile: (903) 757-2323
`Email: jw@wsfirm.com
`Email: ch@wsfirm.com
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`ATTORNEYS FOR PLAINTIFFS
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who
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`are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed.
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`R. Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
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`consented to electronic service were served with a true and correct copy of the foregoing by
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`email on this the 8th day of January, 2016.
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`/s/ Claire Abernathy Henry
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