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`EXHIBIT A
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`EXHIBIT A
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`Civil Action
`File No. 1:15-cv-00319-AT
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`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
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`Plaintiffs,
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`v.
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`SIPCO, LLC, and
`IP CO, LLC (d/b/a INTUS IQ),
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`Defendants.
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`DEFENDANTS’ MEMORANDUM IN OPPOSITION TO PLAINTIFFS’
`MOTION TO ENJOIN PROSECUTION OF THE TEXAS ACTION
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`Declaratory Judgment Defendants SIPCO, LLC and IP CO, LLC (together
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`“SIPCO” or “Defendants”) respectfully submit this response to Plaintiffs’ Motion
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`to Enjoin Defendants from Prosecuting the Second-Filed Action (“Motion to
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`Enjoin”) filed by Declaratory Judgment Plaintiffs Emerson Electric Co., Fisher-
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`Rosemount Systems, Inc., and Rosemount, Inc. (collectively, “Emerson” or
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`“Plaintiffs”) on February 17, 2016. (Dkt. 51.)1
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`1 All citations to the docket in the instant action, No. 1:15-cv-00319-AT, are
`indicated by the notation “Dkt.” Citations to papers from the first action filed by
`Emerson, No. 1:13-cv-02528-AT, and the action pending in Texas will be cited
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`SIPCO requests this Court to deny Emerson’s Motion to Enjoin because (1)
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`this case—which has different parties, does not share a single patent in common
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`with the case currently pending in the Eastern District of Texas (“Texas action”),
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`and has markedly different infringement claims—is not a “first-filed action” and
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`thus does not invoke application of the first-to-file rule; (2) even if this were a first-
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`filed case, which it is not, the 28 U.S.C. § 1404(a) factors weigh heavily in favor of
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`keeping the Texas action in Texas; (3) as a matter of equity, Emerson cannot use
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`the first-to-file rule to deny SIPCO its choice of forum for asserting patent rights
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`not at issue before this Court; and (4) Emerson has already asked the Texas court
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`to consider the first-to-file issue, which has been fully briefed to that court, and
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`that court should be allowed to rule.
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`I.
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`THE PARTIES
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`As explained in their Counterclaims, SIPCO and IP CO are small research
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`and development companies that share a common founder: T. David Petite. (Dkt.
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`10 ¶ 10; see also Declaration of T. David Petite, at ¶ 2 (hereinafter “Exh. L”).)
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`Petite developed extensive wireless control and distribution technology
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`applications through exhaustive research and development in the 1990s. (Dkt. 10 ¶
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`11.) Petite’s research resulted in various software, firmware, hardware, and a
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`with reference to their ECF numbers, and the papers cited from both cases herein
`are attached as exhibits.
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`2
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`patent portfolio, all of which are owned by SIPCO today. (Id. ¶ 12.) Investors put
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`tens of millions of dollars behind the development of Petite’s inventions, and this
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`led to, among other applications, smart-grid technology that was purchased by
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`Landis + Gyr. (Id. ¶ 11.) Today, Landis + Gyr implements the technology
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`developed by Petite in millions of devices worldwide. (Id. ¶ 11.) As a result,
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`SIPCO’s patents have been widely licensed, and their licensing remains a major
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`focus of SIPCO’s ongoing business activities. (Id. ¶ 14.)
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`In addition to his work developing wireless mesh technology, Petite has
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`dedicated his time to furthering inventorship and the development of new
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`technologies. (Exh. L ¶¶ 5-12.) Petite, a registered member of the Fond Du Lac
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`Chippewa tribe and the son of a former Chief of the Red Cliff Chippewa tribe in
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`Wisconsin, is a founder of the Native American Intellectual Property Enterprise
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`Council, which is an organization that provides patenting, copyright, and
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`trademark assistance to help foster invention and innovation in the Native
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`American community. (Id. ¶¶ 3, 5.) Petite has volunteered his time with the
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`USPTO working on projects directed toward developing Native American
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`intellectual property and as a speaker at patent-examiner training; he has also
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`volunteered for a number of organizations geared toward developing and
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`protecting entrepreneurship and innovation. (Id. ¶¶ 6, 10, 11.) A native of Atlanta,
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`3
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`Petite was recognized by the Georgia State Senate for his innovations in wireless
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`technology, job creation, and an “incredible career” in engineering and invention.
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`(Id. ¶¶ 4, 8.) He also was invited to and attended President Barack Obama’s
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`signing of the America Invents Act and has been recognized as an influential
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`inventor by the USPTO—even having been added to the USPTO’s 2014 Inventor
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`Collectible Card Series. (Id. ¶¶ 7, 12.)
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`Emerson Electric Co. and the BP group of entities, which are defendants in
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`the Texas action, are both Fortune Global 500 companies.2 Emerson made $24.5
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`billion and BP made $358.7 billion in revenues last fiscal year.3 Both are large
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`companies with many subsidiaries and with bases of operations outside of Georgia,
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`as discussed in greater detail below. In the Texas action, these companies, and their
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`considerable resources, are both aligned against SIPCO.
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`II.
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`FACTUAL BACKGROUND OF THIS DISPUTE
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`SIPCO and Emerson are not strangers. Emerson’s White-Rogers Division
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`has been a licensee of SIPCO’s patent portfolio since 2011. (See Dkt. 10 ¶ 23.)
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`However, other non-licensed Emerson divisions and entities, such Fisher-
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`Rosemount Systems, Inc. and Rosemount, Inc., have been using the technology
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`2 See Fortune Global 500, http://fortune.com/global500/, (last visited March 4,
`2016).
`3 Id.
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`4
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`and methods claimed by SIPCO’s patents in violation of SIPCO’s patent rights.
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`(Dkt. 10 ¶¶ 25-30, 35, 48.) In February 2013, rather than resort to litigation, SIPCO
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`reached out to Emerson and tried to negotiate a license agreement for these non-
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`licensed divisions and entities. (Dkt. 51 at 2.) Prior to their first scheduled meeting
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`to meet and discuss a license agreement, Emerson brought a declaratory judgment
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`suit in this Court in July 2013 over eight SIPCO patents, two of which are at issue
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`in this current action. (See Complaint ¶ 1, Emerson Elec. Co. v. SIPCO LLC, No.
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`1:13-cv-02528-AT (N.D. Ga. July 31, 2013), ECF No. 1 (hereinafter “Exh. A”).)
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`Even though Emerson took this preemptive stance and brought suit, the
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`parties continued to negotiate rather than litigate. In fact, the parties extended the
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`deadline for SIPCO’s answer repeatedly into 2014 to allow time for continued
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`licensing and settlement negotiations. (Motions for Extension & Orders, Emerson
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`Elec. Co., No. 1:13-cv-02528-AT, ECF Nos. 18-28 (hereinafter “Exh. B”).) SIPCO
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`did not file infringement counterclaims on the belief that “substantive progress
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`toward an agreement” had been made. (Id. at ECF No. 20-1 ¶ 4, ECF No. 22-1 ¶
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`4.) The parties narrowed their dispute to “one significant issue involving third
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`parties” by May 2014, and this Court entered an administrative termination of the
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`case. (Id. at ECF No. 24 at 2, ECF No. 25.) As of November 7, 2014, the parties
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`were still negotiating a settlement. (Id. at ECF No. 26.) Despite SIPCO’s earnest
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`negotiations over the course of a year and a half, Emerson dismissed its initial case
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`and immediately brought the instant declaratory judgment action—abandoning its
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`non-infringement and invalidity claims for all but two of the SIPCO patents.
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`(Notice of Voluntary Dismissal, Emerson Elec. Co., No. 1:13-cv-02528-AT, ECF
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`No. 28 (hereinafter “Exh. C”); see also Dkt. 1.)
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`Settlement discussions continued while Emerson pressed its narrowed action
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`in this Court. When the discussions failed,4 SIPCO initiated the Texas action to
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`seek redress for Emerson’s continued infringement of eleven other patents. (First
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`Amended Complaint, SIPCO, LLC v. Emerson Elec. Co., No. 6:15-cv-00907-
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`RWS-KNM (E.D. Tex. Dec. 30, 2015), ECF No. 19 (hereinafter “Exh. D”).) It also
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`filed the Texas suit to seek redress for the infringement of these eleven patents by
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`BP, p.l.c., BP America, Inc., and BP America Production Company (“BP” or “BP
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`entities”) and for the joint infringement of a number of these patents by both
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`Emerson and BP. (Id.)
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`SIPCO filed suit in the Eastern District of Texas because the BP entities
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`have significant operations using Emerson products and SIPCO technology at its
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`greater than 800 oil and gas wellheads and associated compression, production,
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`and flow lines operated at and within Greg, Harrison, Panola, Rusk, Shelby, and
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`4 For three years, SIPCO has been actively trying to resolve this dispute with
`Emerson.
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`6
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`Upshur counties in Texas, which are all located within the Eastern District of
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`Texas. (Id. ¶¶ 12, 69, 70.) Further, the American BP entities have their
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`headquarters in Houston, located less than 200 miles away from Tyler, Texas,
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`where the Texas action is pending. (Id. ¶¶ 7-8.)5 Emerson is also significantly
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`connected to Texas, with Fisher-Rosemount, Inc.’s headquarters located in Round
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`Rock, Texas and other places of business located within the Eastern District of
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`Texas. (Dkt. 10 ¶ 4; Dkt. 21 ¶ 4; Exh. D ¶ 13; see also Complaint ¶ 8, SIPCO,
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`LLC, No. 6:15-cv-00907-RWS-KNM, ECF No. 1 (hereinafter “Exh. E”).)
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`Consequently, SIPCO brought suit on eleven patents in Texas, many of
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`which Emerson deliberately chose to keep out of the case before this Court. (See
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`Dkt. 51 at 5-6; Reply at 2-3, SIPCO, LLC, No. 6:15-cv-00907-RWS-KNM, ECF
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`No. 1 (hereinafter “Exh. F”); see also Exh. A ¶ 1.) Having abandoned claims on all
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`but two patents, Emerson has put its considerable resources into trying to dictate
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`where and when SIPCO may bring suit on eleven other patents against Emerson
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`and its joint and co-infringer BP.
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`III. LEGAL STANDARD
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`“The first-filed rule provides that when parties have instituted competing or
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`5 See also
`http://maps.randmcnally.com/mileage_calculator?loc[]=tyler,%20texas&loc[]=hou
`ston,%20texas, showing the mileage as 197.9 miles.
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`7
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`parallel litigation in separate courts, the court initially seized of the controversy
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`should hear the case.” Collegiate Licensing Co. v. Am. Cas. Co. of Reading, Pa.,
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`713 F.3d 71, 78 (11th Cir. 2013). “Where two actions involving overlapping issues
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`and parties are pending in two federal courts, there is a strong presumption across
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`the federal circuits that favors the forum of the first-filed suit under the first-filed
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`rule.” Manuel v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005). This
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`Court applies a “substantial overlap” standard to determining if first-to-file applies.
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`See, e.g, Discover Prop. & Cas. Ins. Co. v. AIM Leasing Co., No. 1:14-cv-03039-
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`WSD, 2015 WL 4599199, at *4 (N.D. Ga. July 31, 2015).
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`District courts have an “ample degree of discretion” in applying the first-
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`filed rule. Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed Cir. 2012) (quoting
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`Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180, 183-84 (1952)). The
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`district court may decline to apply the rule upon a showing of compelling
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`circumstances and may consider many equitable factors in making this
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`determination. See Manual, 430 F.3d at 1135-36 (anticipatory nature of suit is “one
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`equitable factor among many” to be considered). Included in those equitable
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`considerations is whether the suit was a declaratory judgment action filed in a
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`preemptive manner in anticipation of suit in another forum. Id. at 1135. “[T]he
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`convenience of the parties and the second-filed forum’s connection with the
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`controversy” are also “relevant to deciding whether an exception to the first-filed
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`rule exists . . . .” Collegiate Licensing, 713 F.3d at 79-80; see, e.g., Spanx, Inc. v.
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`Times Three Clothier, LLC, No. 1:13-cv-710-WSD, 2013 WL 5636684, at *5
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`(N.D. Ga. Oct. 15, 2013) (finding that 28 U.S.C. § 1404(a) factors favored transfer
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`to the second-filed court). These exceptions, based on the interests of justice or
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`convenience, are not rare. Faus Group Inc. v. Berry Floor N.V., No. 1:08-cv-315-
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`TWT, 2008 WL 8218101, at *1 (N.D. Ga. June 11, 2008).
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`The convenience factors to be considered include:
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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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`Manuel, 403 F.3d at 1135 n.1 (§ 1404(a) factors). The threshold determination for
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`venue-transfer on convenience grounds is whether the suit could have originally
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`been brought in the venue for which transfer is sought. See Soroka v. Lee Techs.
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`Servs., Inc., No. 1:06-cv-0710-TWT, 2006 WL 1734277, at *3 (N.D. Ga. June 19,
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`2006).
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`IV. ARGUMENT
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`A.
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`This is not a first-filed case because the two cases have different
`parties, do not share any patents-in-suit, and have markedly
`different infringement claims at issue.
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`1.
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`The Texas action does not share any patents-in-suit with this
`case and thus shares no causes of action with this case.
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`First and foremost, this is not a first-filed action because the Texas action
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`concerns infringement claims for eleven SIPCO patents that are not patents-in-suit
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`in this case. Infringement of one patent is a cause of action independent of the
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`infringement of any other patent, even if that patent shares a common history with
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`those other patents. See H & Tool, Inc. v. Austerman, No. C-3-08-331, 2008 WL
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`420036, at *6 (S.D. Ohio Feb. 14, 2008) (infringement of different patents are
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`independent causes of action, even if one patent is a continuation-in-part of the
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`other).6 Suits with different patents-in-suit are generally not subject to the first-to-
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`file rule. Actifio, Inc. v. Delphix Corp., No. 14-13247-DJC, 2015 WL 1243164, at
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`*1 (D. Mass. Mar. 17, 2015) (“Although the Federal Circuit has not conclusively
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`determined whether mirror image patents are required for the first-filed rule to
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`apply, a difference in patents generally weighs against such a finding.”).
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`The patents-at-issue in the Texas action are different patents with different
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`6 Contrary to Emerson’s allegation of “claim splitting,” each infringement claim
`for each patent is a separate, independent cause of action. (Dkt. 51 at 16.)
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`10
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`claims having different limitations and claiming different subject matter. Emerson
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`focuses on the similarities and shared application histories for the patents-in-suit
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`between the cases,7 but the differences among the patents are not minor, and each
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`court will need to decide the different meanings of different claim language in
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`deciding infringement. See Datamize Inc. v. Fidelity Brokerage Servs., LLC, No.
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`2:03-cv-321-DF, 2004 WL 1683171, at *6 (E.D. Tex. Apr. 22, 2004) (“The
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`Federal Circuit has held that where there are even small differences in the language
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`of claims in related patents, the claim language in each patent should be construed
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`independently.”). Emerson provides a limited example of the similarity in claim
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`language between U.S. Patent No. 6,044,062 (the “‘062 Patent”), the IPCO-owned
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`patent in this case, and only one of the eleven patents-in-suit in Texas.8 (Dkt. 51 at
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`12.) But it ignores otherwise substantive differences among the patents and their
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`7 Emerson emphasizes that the extent of the overlap is relevant (Dkt. 51 at 14), but
`this does not make the dissimilarities between the issues in the cases unimportant
`or irrelevant. Emerson cites no authority suggesting that dissimilarities are
`irrelevant and should not be considered by this Court. (Id.)
`8 Emerson, without any legal or factual support, claims that SIPCO “believes” the
`patents owned by SIPCO and patents owned by IPCO should be “grouped together
`in two patent families” for the purpose of litigation. (Dkt. 51 at 15-16.) SIPCO
`licenses its entire SIPCO and IPCO patent portfolio to its licensees as a matter
`convenience for both itself and its licensees, and as a way to prevent future
`disputes. Whether an infringer, like Emerson, has infringed one or all of the SIPCO
`and IPCO patents depends on the nature of the accused products and how those
`products relate to the specific claims asserted by each patent.
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`asserted claims.9
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`For example, U.S. Patent No. 8,908,842, a SIPCO-owned patent at issue in
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`Texas, does not cover the same subject matter as U.S. Patent No. 7,103,511 (the
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`“‘511 patent”), the SIPCO-owned patent at issue in this case. The ‘842 patent
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`claims a communication device that is substantially different from the system
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`claimed in the ‘511 patent: it describes a device that establishes a connection
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`between another device and a central location, as opposed to the network
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`comprising a plurality of transceivers communicating sensor data and a site
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`controller connected to a wide area network (“WAN”) and a host computer, as
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`claimed in the ‘511 patent. (See Patent Comparison Charts at 1-2 (hereinafter
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`“Exh. G”).) As another example, U.S. Patent Nos. 6,914,893 (the “‘893 Patent”)
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`and 7,697,492 (the “‘492 Patent”), both SIPCO-owned patents at issue in Texas,
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`9 Emerson relies heavily on the fact that the patents in this case are in the same
`“family” as the patents in the Texas action. However, in doing so, it cites as
`authority two cases in which the district court did not decide the issue of
`substantial overlap. (Dkt. 51 at 11.) In Good Technology Corp. v. MobileIron, Inc.,
`the Delaware court “assume[d], without deciding, that the ‘first-to-file’ rule [was]
`not implicated . . . .” No. 14-1308-LPS-CJB, 2015 WL 1458091, at n.4 (D. Del.
`Mar. 27, 2015). In fact, the court “questioned” whether first-to-file would apply,
`noting “our Court has tended to find the rule implicated most often in situations
`where both cases involved the same patent or patents.” Id. In Amberwave System
`Corp. v. Intel Systems Corp., the Texas court, which was the second-filed court,
`relied on the first-filed court’s determination of substantial overlap and does not
`explain the rationale for the substantial-overlap finding. No. 2:05-cv-321, 2005
`WL 2861476, at *2 (E.D. Tex. Nov. 1, 2005).
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`claim systems and devices that are substantially different from the system claims in
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`the ‘511 patent: the ‘511 patent includes a site controller connected to a WAN and
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`a host computer, but neither of those limitations exist in the ‘893 or the ‘492
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`patents. (See id. at 3-4.) Further, the ‘893 and ‘492 patents include a packet
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`including scalable address and command codes, and request/response messages—
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`limitations that are not present in the ‘511 patent. (See id.)
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`How the patents in the Texas case relate to the accused Emerson products is
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`also different than how the patents in this case relate to those products. For
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`example, the accused product features in the Texas case relate to software on
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`remote computers that controls actuators on devices on separate wireless internal
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`networks. (Sur-Reply at 5, SIPCO, LLC, No. 6:15-cv-00907-RWS-KNM, ECF No.
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`42 (hereinafter “Exh. H”).) These product features are not accused in this case.
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`(Id.) In this case, a network of the accused wireless devices can either be
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`standalone or connected externally to a WAN. (Id.) In the Texas case, a network of
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`the accused wireless devices has features that go beyond that and can be connected
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`to any type of network. (Id.)
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`These examples show how a determination of infringement on the patents in
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`this case will not obviate the need to construe the different claim language in each
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`of the eleven patents in the Texas action. Distinct issues regarding claim
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`construction and how the patents relate to the accused Emerson products exist
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`between this case and the Texas action. Thus, no substantial overlap exists between
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`the issues to be decided for the two patents-at-issue here compared to the issues to
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`be decided for the eleven patents-at-issue in Texas. See Actifio, 2015 WL 1243164,
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`at *6 (court, “wary of broadening the [first-filed] rule further than circumstances
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`involving identical patents or functionally duplicative actions[,]” denied transfer
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`where cases involved different patents).10
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`2.
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`The Texas action includes infringement claims against BP and
`joint infringement claims against both BP and Emerson that are
`not at issue in this case.
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`The Texas action is not just a case about Emerson. That case includes
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`infringement claims against BP that are separate and distinct from the claims
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`against Emerson. (Exh. D ¶¶ 100-104, 124-128, 148-152, 172-176, 190-194, 208-
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`212, 226-229, 243-247, 261-265, 279-283, 297-300.) The Texas case will
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`necessitate the development of evidence regarding BP’s infringing activities at BP
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`10 Emerson argues that the patents in both cases share common prosecution files
`and that the same prior art will be at issue in both cases. (Dkt. 51 at 10-11.) But
`this is not necessarily the case. Different claim scopes in different patents will
`require different claim interpretations and different application of prior art to
`determine infringement and invalidity. See Datamize, No. 2:03-cv-321-DF, 2004
`WL 1683171, at *6 (rejecting superficial reliance on Microsoft Corp. v. Multi-
`Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir. 2004), and the assertion that the prior
`art for one patent in a family is necessarily relevant to infringement claims for
`another patent in the same family).
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`oil and gas wellheads located throughout the Eastern District of Texas. (Id. ¶¶ 12,
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`69-70.) Evidence regarding the development and implementation of the infringing
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`monitoring systems will also be located at the two American BP entities, which
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`have their principal places of business in Houston, less than 200 miles away from
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`the Texas court. (Id. ¶¶ 7-9.) The Texas action also includes unique joint
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`infringement claims against both Emerson and BP. (Id. ¶¶ 105-110, 129-134, 153-
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`158.) The parties will not undertake an analysis of these complex and unique joint
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`infringement claims in the instant action. Simply, the two cases do not have
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`identical parties or identical causes of actions.
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`Emerson claims, without any factual or legal support, that the addition of BP
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`to the Texas action was a “procedural gimmick” and that BP should not be
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`considered in the first-to-file analysis. First, BP is not a mere “innocent customer”;
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`SIPCO has specific, distinct claims against it for the installation, modification, and
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`use of infringing products both independently and in conjunction with Emerson.
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`(Id.) Second, SIPCO likely could not bring suit against the BP entities for its
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`infringing acts in Texas; it knows no facts that suggest BP is committing the
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`aforesaid acts of infringement in Georgia. See, e.g., Ralls Corp. v. Huerfano River
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`Wind, LLC, 27 F. Supp. 3d 1303, 1312 (N.D. Ga. 2014) (“A plaintiff . . . must
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`allege sufficient facts in the complaint to make out a prima facie case of personal
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`Case 1:15-cv-00319-AT Document 66 Filed 03/07/16 Page 16 of 26Case 1:16-cv-02690-AT Document 58-1 Filed 03/08/16 Page 17 of 493
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`jurisdiction over a nonresident defendant.”). SIPCO does know, however, that
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`BP’s infringing acts are occurring in the Eastern District of Texas and that personal
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`jurisdiction and venue are proper within that district. See 28 U.S.C. § 1400(b)
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`(“any civil action for patent infringement may be brought in the judicial district . . .
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`where the defendant has committed acts of infringement and has a regular and
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`established place of business”); Loyalty Conversion Sys. Corp. v. Am. Airlines,
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`Inc., 66 F. Supp. 3d 813, 818, 821 (E.D. Tex. 2014) (specific jurisdiction, under
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`the U.S. Constitution and Texas long-arm statute, is established if “the defendant
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`purposefully directed its activities at residents of the forum,” “the plaintiff’s claim
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`arises out of or relates to those activities,” and the exercise of jurisdiction would be
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`“fair and reasonable”).
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`Finally, Emerson has cited no authority that restricts this Court from
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`considering BP when deciding the first-to-file issue.11 On the contrary, courts will
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`11 Emerson’s reliance on Micron Technology, Inc. v. Mosaid Technologies, Inc. is
`misplaced. In Micron, the first-filed district court dismissed the declaratory
`judgment action based on the discretion afforded it under the Declaratory
`Judgment Act, and the rationale for reversing the district court’s dismissal related
`to the statutory interpretation of that Act. See 518 F.3d 897, 903 (concerning
`authority to decline jurisdiction pursuant to word “may” in Declaratory Judgment
`Act). The first-filed court in that case was not asked to exercise its common law
`authority to enjoin the second-filed action. Id. at 900. Further, the two suits at issue
`before the Micron court shared patents in common, which is not the case here. See
`Complaint, Mosaid Techs. Inc. v. Micron Tech., Inc., No. 2:06-cv-302-DF, at 3-4
`(E.D. Tex. July 25, 2006), ECF No. 1 (e.g., U.S. Patent No. 6,657,919); Complaint,
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`16
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`Case 1:15-cv-00319-AT Document 66 Filed 03/07/16 Page 17 of 26Case 1:16-cv-02690-AT Document 58-1 Filed 03/08/16 Page 18 of 493
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`consider parties brought into a suit when trying to determine the proper venue for
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`the suit. Cf. In re Volkswagen AG, 371 F.3d 201, 204 (5th Cir. 2004) (nothing
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`limits determination of convenience to those parties in original complaint); In re
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`Fine Paper Antitrust Litig., 685 F.2d 810, 819 (3d Cir. 1982) (“district court . . .
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`not required to confine its venue consideration to the facts as they existed at the
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`time of the complaint”). Consequently, no reason exists to ignore BP’s presence in
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`the Texas action, especially when the claims SIPCO has brought against BP are
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`legitimate claims intimately related to the Eastern District of Texas forum.
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`B.
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`The convenience factors analyzed pursuant to 28 U.S.C. § 1404(a)
`weigh heavily in favor of keeping the Texas action in Texas.
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`Even if this Court were to find substantial overlap between this action and
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`the Texas action—which it should not—compelling circumstances based on the §
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`1404(a) convenience factors justify an exception to the first-to-file rule. As stated
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`above, BP has major operations in the Eastern District of Texas, and it is the
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`district specifically and uniquely related to BP’s infringing activity and BP and
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`Emerson’s jointly infringing activities. See In re Acer Am. Corp., 626 F.3d 1252,
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`1256 (Fed. Cir. 2010) (sale of accused product a factor in favor of venue if a
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`significant connection to a particular venue exists). Further, the Texas forum is
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`Micron Tech., Inc. v. Mosaid Techs. Inc., No C06-04496, at 14 (N.D. Cal. July 24,
`2006), ECF No. 1 (same). These complaints are attached as Exhibit I.
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`17
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`Case 1:15-cv-00319-AT Document 66 Filed 03/07/16 Page 18 of 26Case 1:16-cv-02690-AT Document 58-1 Filed 03/08/16 Page 19 of 493
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`closer than Atlanta to Emerson’s principal places of business, where infringing
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`activity, such as product development, manufacturing, and sales decisions, is
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`presumed to be taking place. See In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed.
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`Cir. 2009) (bulk of relevant evidence comes from accused infringer); Raz Imports,
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`Inc. v. Luminara Worldwide, LLC, No. 3:15-cv-02223-M, 2015 WL 6692107, at
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`*5 (N.D. Tex. Nov. 3, 2015) (principal place of business presumed place of
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`infringing activity). The American BP entities both have their principal places of
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`business in Houston, Texas—only 200 miles from Tyler, Texas. (Exh. D ¶ 7-8.)
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`One of the named Emerson entities, Fisher-Rosemount, has its principal place of
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`business in Round Rock, Texas. (Dkt. 10 ¶ 4; Dkt. 21 ¶ 4; Exh. D ¶ 13; Exh. E ¶
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`8.) And the other named Emerson entities have principal places of business that are
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`closer to Tyler, Texas—St. Louis, Missouri and Chanhassen, Minnesota. (Dkt. 10
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`¶¶ 3, 5; Dkt. 21 ¶¶ 3, 5.) The Emerson entities also have places of business
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`involved in infringing activities both within the Eastern District of Texas and
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`throughout Texas. (Exh. D ¶¶ 3-6, 13.)
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`Moreover, two of the three nonparty inventors that may have relevant
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`information to this dispute are closer to Tyler than to Atlanta.12 See Frederick v.
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`12 Upon information and belief, Edwin R. Brownrigg is a resident of Roseville,
`California, Thomas W. Wilson is a resident of Antelope, California, and Richard
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`18
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`Advanced Fin. Sols., Inc., 558 F. Supp. 2d 699, 704 (E.D. Tex. 2007) (convenience
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`of nonparty witnesses is important while convenience of party witnesses is
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`generally insignificant). And although one nonparty inventor is close to Atlanta, he
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`is a named inventor on only four of the patents at issue, and Petite, a principal of
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`SIPCO, is also a named inventor on those same patents.13 Petite will testify at trial
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`in the Eastern District of Texas. (Exh. L ¶ 13.) Further, although Texas will not
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`have full subpoena power over all of the nonparty witnesses, neither would this
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`Court, and this makes the subpoena power factor neutral. See MHL Tek, LLC v.
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`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 forum enjoys absolute subpoena power).
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`Consequently, the most important sources of proof and convenience of nonparty
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`witnesses weigh heavily in favor of keeping the Texas action where it is—in
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`Texas.
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`Judicial economy also weighs in favor of keeping the Texas action in Texas.
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`Judges in that district previously have construed the terms from four of the patents
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`in that case and have familiarity with the technology at issue.14 See In re Vistaprint
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`Huff is a resident of Conyers, Georgia. (See Declaration of Timothy J. Reppucci, at
`¶¶ 3-4 (attached as Exhibit J).)
`13 Id. ¶¶ 5-7.
`14 See, attached as Exhibit K, 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);
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`19
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`Case 1:15-cv-00319-AT Document 66 Filed 03/07/16 Page 20 of 26Case 1:16-cv-02690-AT Document 58-1 Filed 03/08/16 Page 21 of 493
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`Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010) (familiarity with patents is a factor).
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`Moreover, weight is afforded SIPCO’s choice of forum for the Texas action, and
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`SIPCO’s choice cannot be treated lightly. See Manuel, 403 F.3d at 1135 n.1; see
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`also Atlantic Marine Constr. Co. v. U.S. Dis
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