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`Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 1 of 19
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 1 of 19
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:15-cv-00319-AT Document 75 Filed 03/24/16 Page 1 of 18Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 2 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`EMERSON ELECTRIC CO., FISHER-
`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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`Civil Action No. 1:15-CV-00319-AT
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`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION TO
`ENJOIN PROSECUTION OF THE SECOND-FILED TEXAS ACTION
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`William V. Custer
`Damon J. Whitaker
`BRYAN CAVE, LLP
`One Atlantic Center, Fourteenth Floor
`1201 W. Peachtree St., N.W.
`Atlanta, Georgia 30309
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`Admitted Pro Hac Vice
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
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`Attorneys for Plaintiffs
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`Case 1:15-cv-00319-AT Document 75 Filed 03/24/16 Page 2 of 18Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 3 of 19
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`SIPCO’s Opposition Brief, like the numerous filings it has made in the
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`duplicative Texas action, fails to establish a basis for requiring two district courts
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`to proceed in parallel with such closely related litigations. For reasons that it has
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`kept to itself, SIPCO, headquartered in Atlanta, is doing everything it can to split a
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`single dispute into two parts, with one part being tried here and the second being
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`tried in the Eastern District of Texas. But this does not promote a just, speedy or
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`inexpensive resolution.
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`SIPCO has never asked this Court to transfer this, the first-filed action, to
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`Texas and it has not asked the Texas court to enjoin Emerson’s prosecution of this
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`action. SIPCO’s apparent preference is to compound the dispute by maintaining
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`two separate actions, one in this district where SIPCO resides and one in a district
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`in which neither the Emerson parties nor the SIPCO parties have any substantial
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`connection. Apparently recognizing the tenuousness of its reasons for proceeding
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`with the second action, SIPCO amended its Texas complaint to add three BP
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`entities. According to SIPCO, BP’s use of the products purchased from Emerson,
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`the very same products SIPCO relies upon to accuse Emerson of infringement in
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`both this and the Texas action, constitutes an act of infringement. None of this,
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`changes the fact that these two proceedings substantially overlap and this Court
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`should enjoin SIPCO from further prosecution of the second-filed Texas action.
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`I. Mr. Petite’s Ancestry and Personal Recognitions Are Not Relevant
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`SIPCO’s lead argument relates to Mr. Petite’s personal and ancestral
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`background, and his professional recognitions. (Doc. 66, pp. 3-4). None of that,
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`however, is relevant to any issue in this or the Texas case, including the issue of
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`whether two overlapping cases should proceed in parallel.
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`II.
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`The White-Rogers License Does Not Justify the Second Action in Texas
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`The existence of a license under the patents in suit here and in Texas
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`likewise fails to provide a basis for SIPCO to continue prosecution of the
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`substantially overlapping Texas action. The license SIPCO granted to the White-
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`Rodgers Division of Emerson is restricted to a specific product category, with very
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`limited sales. Over the life of that license, White-Rodgers has paid less than ten-
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`thousand dollars in royalties to SIPCO. That amount did not justify the expense of
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`a patent infringement action.
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`If anything, the existence of the White-Rodgers license supports the
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`consolidation of these two cases. That license grants rights to the White-Rodgers
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`Division under every patent in the ‘511 and the ‘062 patent families – including the
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`two patents at issue in this action and every one of the related patents SIPCO
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`asserts in the Texas action. SIPCO candidly admits that it “licenses its entire
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`SIPCO and IPCO patent portfolio to its licensees.” (Doc. 66, p. 11, fn. 7).
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`Because SIPCO licenses its patents as a bundle, not on a patent-by-patent basis,
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`any damage award should be based on a license of the entire patent bundle,
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`eliminating any basis to obtain a double recovery. See, e.g., Georgia-Pacific v.
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`United States Plywood Corp., 318 F.Supp. 1116 (S.D.N.Y. 1970) (existing license
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`practices used in computing reasonable royalty).
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`III. No Equitable Factors Trump Application of the First-to-File Rule Here
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`Courts have on occasion found that the filing of a preemptive action can
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`trump application of the First-to-File rule. See Spanx, Inc. v. Times Three Clothier,
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`LLC, No. 1:13-cv-710-WSD, 2013 WL 5636684, at *4 (N.D. Ga. Oct. 15, 2013).
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`The equitable trigger in each of those cases, however, is an affirmative statement
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`by a patent owner that it would file an action by a date certain and the accused
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`infringer races to the courthouse. See, e.g., Alden Corp. v. Eazypower Corp., 294
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`F.Supp.2d 233, 236 (D. Conn. 2003) (declaratory judgment action did not
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`improperly preempt patent owner’s filing where pre-filing communications did not
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`state a date or forum for such filing). Here, SIPCO never made such a promise.
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`Rather, after exchanging positions, Emerson recognized that it and SIPCO
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`fundamentally disagreed on two points: (i) whether SIPCO’s patents covered
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`Emerson’s products and (ii) whether SIPCO’s patents are valid over the prior art.
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`Accordingly, Emerson’s complaint in this action cannot be treated as
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`improperly preempting SIPCO’s promised filing. Indeed, preemption usually
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`arises where the patent owner has filed an infringement action on or about the
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`same day as the declaratory judgment action. Micron Tech., Inc. v. Mosaid Tech.,
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`Inc., 518 F.3d 897, 904 (Fed. Cir. 2008) (providing guidance as to forum selection
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`“where the two actions were filed almost simultaneously.”). In this case, SIPCO
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`waited more than nine months before it initiated the Texas action. Additionally,
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`preemptory actions are filed in order to obtain the advantage of having the action
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`tried in the accused infringer’s home court. Emerson filed in SIPCO’s home court.
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`IV. The Patent Claims at Issue Before Both District Courts Substantially
`Overlap, Notwithstanding Any Language Differences That May Exist
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`The Emerson and the SIPCO parties in this action are the same Emerson and
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`SIPCO parties in the Texas action. Moreover, patents from the same patent
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`families are at issue in both cases. All of the IPCO patents asserted in Texas relate
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`to, and derive from, the ‘062 patent at issue before this Court. Similarly, all of the
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`SIPCO patents asserted in Texas relate to the SIPCO patent at issue in this action.
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`SIPCO spends much of its opposition brief detailing differences in claim language
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`and arguing that those differences make the cases different enough to warrant a
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`separate action before a different judge. Under SIPCO’s analysis, because some
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`claim language differs from patent to patent (as it must), it could have filed at least
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`13 separate actions – one for each of the patents it asserts. Under SIPCO’s
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`analysis, there is no reason for these actions even to be heard by the same judge.
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`SIPCO’s approach, however, vexatiously multiplies costs and it does not
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`promote either comity or judicial efficiency. All of SIPCO’s patents are directed
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`to wireless communications and as much as SIPCO would like to avoid it, many
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`claim terms are common or analogous among the patents in both cases. For
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`example, the claim phrase “a client process that … initiates and selects a radio
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`transmission path to said server” of claim 2 of the ‘062 patent and the phrase “a
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`client process … selecting a link to said server” of claim 6 of the ‘062 patent (at
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`issue in this case) are indistinguishable in meaning from the claimed “client node
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`controller … selecting a radio transmission path to said server” of claim 10 of the
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`‘314 patent (at issue in the Texas action).
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`Despite minor linguistic differences, these three claim limitations are all
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`directed to the same thing, a client process that selects the route through which a
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`message from that client will travel en route to the server. The arguments SIPCO
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`made regarding the meaning of that language in one patent is applicable to the
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`meaning of that language in a related patent, especially where, as here, the two
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`patents have the exact same specification. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
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`789 F.3d 1335, 1343 (Fed. Cir. 2015) (“A statement made during prosecution of
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`related patents may be properly considered in construing a term common to those
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`patents, regardless of whether the statement pre- or post-dates the issuance of the
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`particular patent at issue.”); Microsoft Corp. v. Multi-Tech Systems, Inc.,
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`357 F.3d 1340 (Fed. Cir. 2004); see also Emerson’s Opening Markman Brief (Doc.
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`65 at 90-92).
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`Given the over 200 patent claims SIPCO presently asserts in the Texas case
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`and in this Court, a claim-by-claim comparison of every claim would be
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`prohibitively long and complex for this motion. It suffices to say, however, that
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`certain claim elements are common to patents in both cases. These terms should
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`not be construed by two different courts. Moreover, the patents asserted in both
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`cases are directed to the same technology. Whatever claim language differences
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`may exist, they are common enough that every one of the Emerson products
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`accused at issue here are also accused of infringing the patents in Texas. Indeed,
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`the infringement contentions SIPCO served in the two actions are highly
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`repetitious of each other.
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`V.
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`SIPCO’s “Product Feature” Infringement Analysis Misses Its Mark
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`SIPCO argues that the overlap between these actions is not as substantial as
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`it may appear because of the way it intends to read its patent claims on different
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`product features. (Doc. 66, pp. 12-13). The most obvious problem with SIPCO’s
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`analysis is that it ignores the fact that while different features may be at issue, the
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`same products are accused of infringement in both of the pending actions. SIPCO
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`is not free to assert patent infringement in a first district court action, relying upon
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`a first group of claim features, and file a second district court action for the same
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`product, relying on different features of that product. That is claim splitting.
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`The extent of the overlap must be measured on a product-level basis, not a
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`feature-level basis. It is the Emerson products, with all of their features, that are
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`accused of infringement. SIPCO does not contest that each and every product at
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`issue in this action is also at issue in the Texas action. That fact alone establishes
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`the substantial overlap of the two actions. Moreover, it is the development and
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`sale of those products that have been and will be the subject of discovery in this
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`action. Thus, both cases will involve the same documents and the testimony of the
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`same witnesses describing the same technology.
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`At page 13 of its Opposition, SIPCO argues that the two cases do not
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`overlap because the software on the remote computers that control actuators “are
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`not accused in this case.” Curiously, as support for that assertion, SIPCO cites
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`only the argument it made in a Sur-Reply it filed in Texas. Moreover, the Emerson
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`Smart Wireless products at issue in this action have the same features as those at
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`issue in Texas – they are the same products, including the same software products.
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`VI. The Addition of the BP Defendants Does Not Change the Application of
`the First-Filed Analysis
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`SIPCO’s story with regard to the addition of the BP entities is less than
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`candid. First, SIPCO wrongly informs this Court that it “filed suit in the Eastern
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`District of Texas because the BP entities have significant operations using
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`Emerson products . . . [and] the American BP entities have their headquarters in
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`Houston, located less than 200 miles away from Tyler, Texas.” (Doc. 66 at 6-7).
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`No BP party was charged with infringement in the original complaint SIPCO
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`filed in Texas. Indeed, BP was not even mentioned in that complaint. (See Doc.
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`35-1). The BP entities were added to that action just weeks after Emerson filed its
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`motion to dismiss or transfer on December 10, 2015. (See Amended Texas
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`Complaint, attached hereto as Exhibit 1). SIPCO plainly did not file suit in Texas
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`because BP was subject to jurisdiction there as it currently asserts. SIPCO added
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`the BP defendants, purchasers of Emerson’s accused products, to try to anchor the
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`second action in Texas.
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`Moreover, the American BP defendants are headquartered in Houston.
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`Houston is within the Southern District of Texas, not the Eastern District of Texas.
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`Thus, once again, the desire to sue the BP entities plainly did not drive SIPCO’s
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`decision to file in the Eastern District of Texas.
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`Nor is SIPCO right to advise this Court that the first-to-file rule can be
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`avoided by the inclusion of additional parties. The question in most jurisdictions,
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`including this one, is whether the disputes in the two actions “substantially
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`overlap.” See, e.g., Discover Prop. & Cas. Ins. Co. v. AIM Leasing Co., 2015 WL
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`4599199, at *4 (N.D. Ga. July 31, 2015). Contrary to SIPCO’s assertion
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`otherwise, the courts have taken the pragmatic view that adding another defendant
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`will not avoid the First-to-File rule.
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`If, as in this case, a patent holder could simply name another
`defendant or add a few additional claims to the later filed
`infringement [action], then the Supreme Court’s more lenient
`standard for the declaratory judgment plaintiff would lost its
`primary intended effect.
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`Micron Technology, 518 F.3d at 903. The inclusion of BP does not render
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`SIPCO’s Texas action immune to the First-to-File rule.
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`VII. SIPCO’s Forum Selection Analysis Misses Its Mark
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`Rather than addressing whether there should be one case instead of two,
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`SIPCO argues Emerson’s motion to enjoin prosecution of the Texas action should
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`be denied because the § 1404 factors make Texas the more appropriate forum. But
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`underlying that argument is the assumption that there should be two parallel
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`actions involving the same parties, the same accused products, and patents from
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`the same two patent families. At no point does SIPCO even attempt to justify such
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`a burdensome approach. Because it lacks any basis to even ask this Court to
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`transfer this action to Texas, and because it is happy with multiple costly
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`proceedings, SIPCO is content to simply argue that Texas is the most convenient
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`and proper forum for the claims it filed. SIPCO’s arguments do not justify the
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`maintenance of two lawsuits between the same parties over the same products.
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`SIPCO complains that Emerson’s filing in this court has denied SIPCO the
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`right to file in the forum of its choosing and the plaintiff’s choice of forum should
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`not lightly be disturbed. But SIPCO’s Texas filing plainly disrupts Emerson’s
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`choice of forum for this dispute. Moreover, a plaintiff’s choice of forum is usually
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`given more weight when the plaintiff has chosen its home forum. Huntley v.
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`Chicago Board of Options Exchange, 2015 WL 5672218, at *5 (N.D. Ga. Sept. 23,
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`2015). The plaintiff’s choice of forum is given less weight where, as here, it is the
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`result of opportunistic forum shopping. SIPCO is headquartered in Atlanta. Thus,
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`Emerson did not forum shop this action to obtain a favorable forum – it filed this
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`action in SIPCO’s home court, a court that SIPCO itself has used previously to
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`assert some of the patents now being asserted in Texas. See IPCO, LLC v. Cellnet
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`Tech., Inc., No 1:05-cv-2658-CC (N.D. Ga.) (complaint attached as Exhibit 2).
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`SIPCO could have brought its related infringement claims in this action, but
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`decided that it would attempt to disrupt Emerson’s choice of forum by filing those
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`claims in Texas instead. Having made the decision to frustrate Emerson’s choice
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`of forum, SIPCO now asserts that the Texas action should be permitted to proceed
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`because, among other things, it is the more convenient forum for Emerson! (Doc.
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`66 at 17-18). But Emerson brought the present action in Georgia knowing that its
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`employees might well be required to travel to Atlanta.
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`If that trip represents a hardship, and it does not, that hardship could provide
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`Emerson with a basis to argue forum non-convenience. It does not provide SIPCO
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`with a basis to make that argument. SIPCO’s offices are in Atlanta and two of the
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`named inventors, Messrs. Petite and Huff live in the Atlanta area. The remaining
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`two named inventors, Messrs. Brownrigg and Wilson, are residents of California
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`and they are not subject to subpoena power in either state. Moreover, while Texas
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`is closer to California, Tyler is a small town in Texas that is approximately 2 hours
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`away from the Dallas-Ft. Worth Airport. (Exhibit 3 (Google Maps)). Travel to
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`Tyler is not comparable to travel to Atlanta.
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`SIPCO also argues in favor of Texas as the proper forum for the second filed
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`action because Judge Gilstrap of that district had presided over an earlier action
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`involving three SIPCO patents. First, the ‘511 patent, already at issue in this
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`proceeding, was one of three patents at issue in the earlier action before Judge
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`Gilstrap. Second, the earlier Texas action settled well before going to trial. In
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`addition, Judge Gilstrap, the judge initially assigned to the Texas case, recused
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`himself from presiding over that case on March 1, 2016. (Exhibit 4).
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`In footnote 9 of its brief, SIPCO purports to distinguish Emerson’s case
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`authority for consolidating actions involving the same parties and related patents.
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`SIPCO asserts that the Amberwave case did not consider the extent of the overlap
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`presented but instead “relied on the first-file court’s determination of substantial
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`overlap.” What the first-filed court actually did, however, was comment during a
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`telephonic conference that:
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`You guys [AmberWave] have created now a conflict that
`probably shouldn’t have existed by suing the same party in
`another district … on the face of it, create[s] the potential for
`conflicting discovery rules and schedules and that is a problem.
`That is a real problem.
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`AmberWave Sys. Corp. v. Intel Systems Corp., 2005 WL 2861476, at *2 (E.D. Tex.
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`Nov. 1, 2005). Although it is not clear that the first-filed court decided the issue,
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`Emerson is asking this Court to do so.
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`Similarly, whether or not the Good Technology case found it necessary to
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`rely on the first-to-file rule, that court transferred the second-filed action to the
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`district handling the first-filed case because the two patents at issue in those
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`proceedings were related and because “[t]here is a significant amount of uniformity
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`among the accused products in both cases.” Good Tech. v. MobileIron, Inc., 2015
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`WL 1458091, at *8. (D. Del. March 27, 2015).
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`By contrast, the authority SIPCO relies upon is not on point. In Datamize,
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`SIPCO’s primary case, the moving defendants were not parties to the first-filed
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`action and the accused infringer in the first filed action was not a party to the
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`second-filed action. Moreover, the Datamize court found no overlap on the further
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`ground that “different products in different industries are accused of infringing” in
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`the two cases. Datamize, Inc. v. Fidelity Brokerage Services, Inc., 2004 WL
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`1683171, at *5 (E.D. Tex. April 22, 2004).
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`Finally, at no point in any of its briefing does SIPCO even acknowledge the
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`efficiencies of being able to consolidate the claims presented in the two parallel
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`actions. Beyond improving judicial efficiencies, having one court construe the
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`same or similar claim terms would promote uniformity and minimize the risk of
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`inconsistent results. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350
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`(Fed. Cir. 2004); see also Fin Control Systems Pty, Ltd. v. OAM, Inc., 265 F.3d
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`1311, 1318 (Fed. Cir. 2001). No matter what happens, SIPCO cannot take thirteen
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`patents to trial. This is true whether the cases are consolidated or not. If parties
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`are unwilling or unable to limit their contentions to a reasonable number of claims,
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`courts routinely order them to do so.
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`VIII. This Court, as the First-Filed Court, Should Decide the First-Filed Issue
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`For its parting shot, SIPCO reverses course and urges this Court, the first-
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`filed court, to hold off making any ruling because “the interest of comity and
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`judicial efficiency require that the Texas court be allowed to rule on the first-to-file
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`motion.” Having jeopardized comity and judicial efficiency by initiating a second,
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`overlapping infringement action, SIPCO cannot now be heard to complain about
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`the very problem it created. It was SIPCO’s decision to spread its dispute with
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`Emerson to Texas that jeopardizes comity and judicial efficiency. In briefing the
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`Texas motion to dismiss or transfer, Emerson discovered case authority in which
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`the second-filed court deferred to the first-filed court as to application of the first-
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`filed rule. Moreover, and as Emerson advised in its opening motion to enjoin,
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`SIPCO opposed Emerson’s motion and attempted to distinguish Emerson’s case
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`authority on the grounds that this Court has not criticized SIPCO’s decision to
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`spread its infringement dispute with Emerson to Texas. (See Doc. 46-1, p. 9, fn. 5
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`(“there is no statement from the first-filed court that maintaining both suits will
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`create a conflict and will be problematic.”)).
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`In furtherance of that effort, SIPCO argues that this Court should not even
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`consider the issue. That is not SIPCO’s only inconsistency on this point. Indeed,
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`SIPCO’s present briefing is internally inconsistent. After advising this Court that
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`the “court initially seized of the controversy should hear the case,” (Doc. 66, pp. 7-
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`8), and citing case authority holding that “the judge in the first-filed case should
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`make the initial ruling on whether the ‘convenience factors’ outweigh the first-filed
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`rule,” id. at 9, citing Faus Group Inc. v. Berry Floor N.V., 2008 WL 8218101, at
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`*1 (N.D. Ga. June 11, 2008), SIPCO reverses course, and argues that it is the
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`second-filed Texas court that should decide the issue. (Doc. 66, pp. 23-24).
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`Nor do the cases cited by SIPCO support its argument. Rather, both of the
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`cases SIPCO relies upon addressed the situation where the other judge involved
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`had already decided the issue. See SKF USA, Inc. v. Miller, No. 10-4625, 2011
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`WL 940817, at *4 (E.D. Pa. 2011); Ellicott Mach. Cor. v. Modern Welding Co.,
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`Inc., 502 F.2d 178, 182 (4th Cir. 1974). Not only has the Texas court not decided
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`the issue, the Texas district court may well “decide” the issue by deferring to this
`
`Court’s application of the first-to-file rule. Faus Group, 2008 WL 8218101, at *1.
`
`IX. Conclusion
`
`In light of the foregoing, Emerson respectfully requests and Order enjoining
`
`SIPCO from further prosecution of the Texas action.
`
`This 24th day of March, 2016
`
`/s/ Damon J. Whitaker
`William V. Custer
`Georgia Bar No. 202910
`bill.custer@bryancave.com
`
`- 15 -
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 75 Filed 03/24/16 Page 17 of 18Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 18 of 19
`
`Damon J. Whitaker
`Georgia Bar No. 752722
`damon.whitaker@bryancave.com
`BRYAN CAVE, LLP
`One Atlantic Center, Fourteenth Floor
`1201 W. Peachtree St., N.W.
`Atlanta, Georgia 30309
`Tel: 404-572-6828
`Fax: 404-420-0828
`
`Admitted Pro Hac Vice
`Donald L. Jackson
`djackson@dbjg.com
`James D. Berquist
`jberquist@dbjg.com
`J. Scott Davidson
`sdavidson@dbjg.com
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, Virginia 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`Attorneys for Plaintiffs
`
`- 16 -
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 75 Filed 03/24/16 Page 18 of 18Case 1:16-cv-02690-AT Document 80-1 Filed 04/27/16 Page 19 of 19
`
`Local Rule 7.1(D) Certification
`
`I hereby certify that the foregoing pleading has been prepared with Times
`New Roman font, 14 point, one of the font and point selections approved by the
`Court in L.R. 5.1B, N.D. Ga.
`
`/s/ Damon J. Whitaker______________
`Georgia Bar No. 752722
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this date, I filed Plaintiff’s Reply in Support of
`Motion to Enjoin Prosecution of the Second-Filed Texas Action with the Clerk
`of Court using the CM/ECF system, which will automatically notify Defendants'
`counsel of record as follows:
`
`J. Christopher Fox, II
`Michael Coleman
`THOMPSON HINE LLP
`Two Alliance Center, Ste 1600
`3560 Lenox Road
`Atlanta, Georgia 30326
`Chris.Fox@ThompsonHine.com
`Michael.Coleman@ThompsonHine.com
`
`Paul J. Cronin
`James C. Hall
`NUTTER, MCCLENNEN & FISH
`LLP
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`peronin@nutter.com
`jhall@nutter.com
`
`Dated: March 24, 2016
`
`By: /s/ Damon J. Whitaker
`Georgia Bar No. 752722
`
`
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