Case 1:16-cv-02690-AT Document 37 Filed 01/26/16 Page 1 of 4
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
`
`Plaintiffs,
`
`
`
`
`
`
`
`v.
`
`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`
`
`
`
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`Civil Action No. 6:15-CV-907-JRG-KNM
`
`
`
`
`DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION TO STAY
`THIS ACTION PENDING DISMISSAL OR TRANSFER
`
`Emerson Electric Co., Fisher-Rosemount Systems, Inc., and Rosemount Inc. (collectively
`
`“Emerson” or the “Emerson defendants”) respectfully file this reply in support of their motion to
`
`stay this action pending resolution of their motion to dismiss or transfer this case. (See Dkt. 13).
`
`Plaintiffs’ SIPCO LLC and IP Co., LLC (collectively, “SIPCO”) oppose a stay pending
`
`resolution of Emerson’s motion to dismiss or transfer because of alleged substantial differences
`
`between this case and the first-filed Georgia action. But that is the center of the issue being
`
`debated by the parties with respect to the motion to dismiss or transfer. Under SIPCO’s logic,
`
`the resolution of this motion to stay turns on whether the Court finds that there is substantial
`
`overlap between this action and the Georgia action. Thus, under SIPCO’s logic, this Court
`
`should not decide the motion to stay until it has first decided the motion to dismiss/transfer. But
`
`a stay until that issue has been decided is exactly what Emerson seeks by the present motion.
`
`The only other arguable basis for denying the motion to stay provided by SIPCO is the
`
`comment that Emerson “abandon[ed] its claims” on some of the SIPCO patents at issue in this
`
`-1-
`
`

`

`Case 1:16-cv-02690-AT Document 37 Filed 01/26/16 Page 2 of 4
`
`action. This argument makes no sense. When Emerson refiled the Georgia action on only two
`
`of the SIPCO patents, it did not waive its right to defend against the other SIPCO patents in the
`
`Georgia court. Emerson fully expected that, if SIPCO wanted to assert those other patents, it
`
`would do so by including them in a counter-claim in the Georgia action. Litigating all of these
`
`related patents asserted against the same accused products in one action minimizes the burden
`
`and expense on the parties and the courts. Instead, SIPCO sought to increase the burden and
`
`expense by filing a second action involving the same products and same patent families.
`
`The witnesses and discovery in this case will substantially overlap discovery in the
`
`Georgia action. The claim construction issues in this case will substantially overlap those in the
`
`Georgia action. The invalidity and non-infringement issues also will be substantially the same in
`
`the two cases. Because discovery in the Georgia case is proceeding and the parties are engaged
`
`in the claim construction process there, conducting discovery and going through the claim
`
`construction process here would be substantially duplicative and wasteful. Consequently, this
`
`case should be stayed until Emerson’s motion to dismiss or transfer is resolved. See Sanofi-
`
`Aventix Deutschland GmbH v. Novo Nordisk, Inc., 614 F. Supp. 2d 772, 782 (E.D. Tex. 2009)
`
`(staying case and granting a conditional transfer until the first-filed forum determined certain
`
`issues, including jurisdiction).
`
`The plaintiffs in this case have asserted 11 patents, having a total of 338 patent claims.
`
`The sheer number of patents and claims merits consideration. Indeed, plaintiffs here cannot
`
`realistically intend to proceed to trial on even a tenth of those claims. Courts, including judges in
`
`this District, routinely limit the number of patent claims that can be tried together.1 Given the
`
`
`1 See, e.g., Judge Davis’ General Order No. 13-20 regarding patent infringement actions limiting
`the number of claims that can be asserted at trial to a total of 16 claims.
`
`-2-
`
`

`

`Case 1:16-cv-02690-AT Document 37 Filed 01/26/16 Page 3 of 4
`
`plaintiffs’ decision to assert essentially all of the relevant patents from two different patent
`
`families not already at issue in Georgia, it is fair to infer that the plaintiffs asserted this many
`
`patents as a strategic move calculated to improve their chances of forcing a venue change.
`
`Plaintiffs will obviously limit the number of patents and claims asserted at some future point,
`
`after the venue issue has been resolved. Forcing discovery as to all thirteen patents (discovery in
`
`the Georgia action is already on-going) in the interim will prove just plain wasteful.
`
`
`Dated: January 26, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`__/s/_Melissa R. Smith
`Melissa R. Smith
`GILLAM & SMITH LLP
`303 South Washington Ave.
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`
`Attorneys for Defendants Emerson Electric
`Co., Fisher-Rosemount Systems, Inc., and
`Rosemount Inc.
`
`-3-
`
`

`

`Case 1:16-cv-02690-AT Document 37 Filed 01/26/16 Page 4 of 4
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this 26th day of January, 2016, a true and correct
`
`copy of the foregoing document has been served via the Court’s ECF system to all counsel of
`
`record.
`
`/s/ Melissa R. Smith______________
`Melissa R. Smith
`
`
`-4-
`
`