Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 1 of 22 PageID #: 3924
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`C.A. No. 6:12-cv-00799-LED
`
`PLAINTIFF’S RESPONSE IN OPPOSITION TO DEFENDANTS’
`MOTION TO STAY LITIGATION PENDING INTER PARTES REVIEW
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`§
`
`Plaintiff,
`§
`v.
`
`§
`
`
`§
`EMERSON ELECTRIC CO. and
`§
`MICRO MOTION INC.,
`§
`
`
`§
`
`Defendants,
`§
`and
`
`§
`
`
`§
`MICRO MOTION INC.,
`§
`
`
`§
`
`Counterclaim-Plaintiff,
`§
`v.
`
`§
`
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`
`Counterclaim-Defendant. §
`
`
`
`
`
`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 2 of 22 PageID #: 3925
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`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`B.
`
`2.
`
`Page(s)
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 2
`LEGAL STANDARD ........................................................................................................ 3
`ARGUMENT ..................................................................................................................... 3
`A.
`Defendants’ Motion Is Both Premature And Late, And Was Brought In
`The Exact Circumstances Where A Stay Is Inappropriate ..................................... 3
`Application of Soverain Factors ............................................................................ 7
`A Stay Would Unduly Prejudice Invensys, And Give Defendants An
`1.
`Unfair Tactical Advantage ......................................................................... 7
`a.
`The Parties Are Direct Competitors And A Stay Would
`Unduly Prejudice Invensys’ Efforts To Enforce Its Patent
`Rights ............................................................................................. 7
`Defendants’ Argument Relating To A Preliminary
`Injunction Lacks Merit ................................................................... 9
`Staying Litigation Pending The Petitions For IPR Would Not
`Simplify The Issues Before This Court ..................................................... 11
`a.
`It Is Far Too Speculative To Assume That Micro Motion’s
`IPRs Will Have Any Effect On The Issues For Trial .................. 11
`There Are No Efficiencies To Be Gained By Staying This
`Litigation ...................................................................................... 13
`A Stay Is Inappropriate Given The Advanced Stage Of The Case ........... 14
`3.
`CONCLUSION ................................................................................................................ 15
`
`TABLE OF CONTENTS
`
`
`b.
`
`b.
`
`i
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 3 of 22 PageID #: 3926
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ADA Solutions, Inc. v. Engineered Plastics, Inc.,
`826 F. Supp. 2d 348 (D. Mass. 2011) ........................................................................................8
`
`Am. Vehicular Scis. LLC v. Toyota Motor Corp.,
`No. 12-cv-404, slip op. (E.D. Tex. Jan. 7, 2014) ...................................................................3, 4
`
`Automatic Mfg. Sys., Inc. v. Primera Tech., Inc.,
`No. 12-cv-1727, slip op. (M.D. Fla. May 13, 2013) ..................................................................5
`
`Avago Techs. Fiber IP (Singapore) Pte. Ltd. v. IPtronics Inc.,
`No. 10-cv-2863, 2011 WL 3267768 (N.D. Cal. July 28, 2011) ................................................8
`
`BarTex Research, L.L.C. v. FedEx Corp.,
`611 F. Supp. 2d 647 (E.D. Tex. 2009) ...................................................................................3, 8
`
`Blue Calypso, Inc. v. Groupon, Inc.,
`No. 12-cv-486, slip op. (E.D. Tex. July 19, 2013) .....................................................................4
`
`Cooper Notification, Inc. v. Twitter, Inc.,
`No. 09-cv-865, 2010 WL 5149351 (D. Del. Dec. 13, 2010) .....................................................8
`
`Dane Techs., Inc. v. Gatekeeper Sys., Inc.,
`No. 12-cv-2730, 2013 WL 4483355 (D. Minn. Aug. 20, 2013) ................................................4
`
`Davol, Inc. v. Atrium Med. Corp.,
`No. 12-cv-958, 2013 WL 3013343 (D. Del. June 17, 2013) .................................................4, 8
`
`Derma Scis., Inc. v. Manukamed Ltd.,
`No. 12-cv-3388, slip op. (D.N.J. July 17, 2013) ........................................................................4
`
`eBay Inc. v. MercExchange L.L.C.,
`547 U.S. 388 (2006) .................................................................................................................10
`
`Eon Corp. IP Holdings, LLC v. Skytel Corp.,
`No. 08-cv-385, 2009 WL 8590963 (E.D. Tex. Apr. 29, 2009)..................................................3
`
`ESN, LLC v. Cisco Sys., Inc.,
`No. 08-cv-20, 2008 WL 6722763 (E.D. Tex. Nov. 20, 2008) ...................................................3
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`11-cv-1220, 2012 WL 5878087 (S.D. Ind. Nov. 20, 2012) .......................................................9
`
`
`
`ii
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 4 of 22 PageID #: 3927
`
`
`ImageVision Net, Inc. v. Internet Payment Exch., Inc.,
`No. 12-cv-054, 2013 WL 663535 (D. Del. Feb. 25, 2013) ........................................................8
`
`Kowalski v. Anova Food, LLC,
`No. 11-cv-795, slip op. (D. Haw. June 14, 2013) ......................................................................5
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................3
`
`Lennon Image Techs., LLC v. Lumondi Inc.,
`No. 13-cv-238, slip op. (E.D. Tex. Jan. 6, 2014) ...................................................................3, 4
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 08-cv-448, slip op. (E.D. Tex. May 23, 2011 ) .................................................................12
`
`Meyers v. Brooks Shoe, Inc.,
`912 F.2d 1459 (Fed. Cir. 1990)..................................................................................................9
`
`Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc.,
`No. 12-cv-773, slip op. (W.D. Tex. June 10, 2013)...................................................................4
`
`Nat’l Prods., Inc. v. Gamber–Johnson LLC,
`No. 12-cv-840, 2012 WL 3527938 ............................................................................................8
`
`Nidec Corp. v. LG Innotek Co., Ltd.,
`No. 07-cv-108, 2009 WL 3673433 (E.D. Tex. Apr. 3, 2009) ..................................................15
`
`One StockDuq Holdings, LLC v. Becton, Dickinson & Co.,
`No. 12-cv-3037, slip op. (W.D. Tenn. May 6, 2013).................................................................5
`
`PPC Broadband, Inc. v. Corning Gilbert, Inc.,
`No. 12-cv-911, slip op. (N.D.N.Y. July 16, 2013).....................................................................4
`
`Proctor & Gamble Co. v. Team Techs., Inc., No. 12-cv-552,
`2013 WL 4830950 (S.D. Ohio Sept. 10, 2013) .........................................................................4
`
`ROY-G-BIV Corp. v. FANUC Ltd.,
`No. 07-cv-418, 2009 WL 1080854 (E.D. Tex. Apr. 14, 2009)............................................3, 15
`
`SenoRx, Inc. v. Hologic, Inc.,
`No. 12-cv-173, 2013 WL 144255 (D. Del. Jan. 11, 2013) ........................................................8
`
`Soverain Software, L.L.C. v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) ............................................................................. passim
`
`Sunbeam Prods. v. Hamilton Beach Brands, Inc.,
`No. 09-cv-791, 2010 WL 1946262 (E.D. Va. May 10, 2010) ...................................................7
`
`
`
`iii
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 5 of 22 PageID #: 3928
`
`
`Tesco Corp. v. Weatherford Int’l, Inc.,
`599 F. Supp. 2d 848 (S.D. Tex. 2009) .......................................................................................8
`
`Trustees of Boston Univ. v. Everlight Elecs. Co., Ltd.,
`No. 12-cv-11935, slip op. (D. Mass. July 11, 2013) ..................................................................4
`
`Unifi Scientific Batteries, LLC v. Sony Mobile Commc’ns,
`No. 12-cv-224, slip op. (E.D. Tex. Jan. 14, 2014) .....................................................3, 9, 13, 14
`
`Universal Elecs., Inc. v. Universal Remote Control, Inc.,
`943 F. Supp. 2d 1028 (C.D. Cal. 2013) ...............................................................................9, 10
`
`VirtualAgility, Inc. v. Salesforce.com, Inc.,
`No. 13-cv-011, 2014 WL 94371 (E.D. Tex. Jan. 9, 2014) ..................................................7, 11
`
`Warsaw Orthopedic, Inc. v. Nuvasive, Inc.,
`No. 12-cv-2738, slip op. (S.D. Cal. May 30, 2013) ...................................................................5
`
`STATUTES
`
`35 U.S.C. §§ 112 ¶¶ (1) and (2) .....................................................................................................14
`
`35 U.S.C. § 311(b) .........................................................................................................................14
`
`35 U.S.C. § 316(a)(11) .....................................................................................................................8
`
`OTHER AUTHORITIES
`
`Alston & Bird LLP, Intellectual Property Advisory: Inter Partes Review—One Year
`Later, at 7 (Sept. 17, 2013), available at http://www.alston.com............................................12
`
`
`
`
`
`iv
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 6 of 22 PageID #: 3929
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`
`I.
`
`INTRODUCTION
`
`Defendants want to litigate anywhere but here and anytime but now. In Defendants’
`
`second motion to stay this lawsuit, Defendants seek to stay this case based upon seven IPRs
`
`initiated by Micro Motion on the eve of the statutory deadline and only after the Court denied
`
`Defendants’ motion to transfer. In all instances, the United States Patent and Trademark Office
`
`(“PTO”) has not yet reviewed the petitions for IPR to determine whether or not to accept them
`
`for review, and will likely not do so for several months. Given that the PTO has not yet granted
`
`the IPR petitions, Defendants’ motion is premature. As discussed below, numerous courts that
`
`have addressed this issue have refused stays sought in favor of IPRs that had been filed but not
`
`granted.
`
`Furthermore, all three of the Soverain factors militate strongly against granting a stay.
`
`The prejudice factor weighs against a stay because the parties are, undeniably, competitors;
`
`because within the past few months Defendants have released (but, to date, have refused to
`
`produce or make available for inspection) a new, potentially infringing digital flowmeter which
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`may entitle Invensys to preliminary injunctive relief; and because a stay could well result in an
`
`adjournment of the trial date. The simplification factor weighs against a stay because (among
`
`other things) there is no argument for simplification by an IPR that has not even been instituted,
`
`because it is far more likely than not that the USPTO will deny review of at least some of the
`
`nearly 200 claims in the seven patents-in-suit, and because Defendants have asserted other
`
`grounds for invalidating Invensys’ patents in this Court unrelated to the IPRs. The procedural
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`posture factor weighs against a stay because this litigation has now been pending for over 16
`
`months, and the parties have expended considerable resources on the case, including (i) the
`
`production of over 1.4 million pages of documents in discovery; (ii) the noticing of more than 15
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`depositions scheduled to commence this month; (iii) the service of detailed infringement and
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 7 of 22 PageID #: 3930
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`invalidity contentions, and (iv) the preparation and filing of extensive Markman-related materials
`
`in preparation for the hearing scheduled on May 1, 2014. See pp. 5-6 infra. In this same vein,
`
`the Court has invested a substantial amount of time and resources addressing a slew of motions
`
`filed by Defendants, including the motion to transfer venue, the first motion to stay pending
`
`disposition of the motion to transfer venue, the motion for summary judgment of non-
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`infringement filed by Emerson, and now this second motion to stay.
`
`In short, all of the Soverain factors clearly weigh in favor of this case remaining on track.
`
`Defendants’ Motion to Stay should be denied in its entirety.
`
`II.
`
`
`
`BACKGROUND
`
`On October 22, 2012, Invensys filed this case against Micro Motion and Emerson for
`
`infringing United States Patent Nos. 7,124,646 (“the ’646 patent”), 7,136,761 (“the
`
`’761 patent”), 6,311,136 (“the ’136 patent”), and 7,505,854 (“the ’854 patent”). Defendants
`
`were each served on November 20, 2012, and eventually filed answers and a concurrent opposed
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`motion to transfer on January 10, 2013. On January 31, 2013, Invensys filed a first amended
`
`complaint, adding claims for infringement of United States Patent Nos. 8,000,906 (“the
`
`’906 patent”), 6,754,594 (“the ’594 patent”), and 7,571,062 (“the ’062 patent”). On
`
`May 31, 2013, Defendants filed an opposed motion to stay pending the Court’s ruling on the
`
`motion to transfer venue. On September 30, 2013, the Court issued an order denying both
`
`Defendants’ motion to transfer and Defendants’ first motion for stay.
`
`
`
`On November 19, 2013—more than one year after this action was filed and on the last
`
`possible day—Micro Motion filed IPR petitions on the ’646, ’761, ’136, and ’854 patents. Again
`
`at the eleventh hour, on January 29, January 30, and January 31, 2014, Micro Motion filed IPR
`
`petitions on the ’906, ’594, and ’062 patents. On February 7, 2014, Defendants filed the instant
`
`motion to stay pending IPR.
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`2
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 8 of 22 PageID #: 3931
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`III. LEGAL STANDARD
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`
`
`The decision whether to stay a patent case pending PTO review rests entirely within this
`
`Court’s discretion. Soverain Software, L.L.C. v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662
`
`(E.D. Tex. 2005); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). When analyzing
`
`whether a stay is warranted, this Court considers: (1) whether a stay will unduly prejudice or
`
`present a clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the
`
`issues in question and the trial of the case; and (3) whether discovery is complete and a trial date
`
`has been set. Soverain, 356 F. Supp. 2d at 662. Motions to stay are considered on a case-by-
`
`case basis, and there exists no policy in this Court to routinely grant such motions. BarTex
`
`Research, L.L.C. v. FedEx Corp., 611 F. Supp. 2d 647, 652 (E.D. Tex. 2009) (noting that “[t]o
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`do so would turn reexamination into an administrative process that must be completed before a
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`suit for patent infringement may move forward” and “use of the reexamination process as a
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`dilatory tactic must be considered”).1
`
`IV. ARGUMENT
`
`A.
`
`Defendants’ Motion Is Both Premature And Late, And Was Brought In The
`Exact Circumstances Where A Stay Is Inappropriate
`
`
`
`Defendants’ motion—which was brought more than 15 months into this case and in the
`
`midst of claim construction proceedings, but before the PTO has taken any action on the IPR
`
`petitions—seeks a stay in the precise circumstances where the law is clear that a stay is
`
`1 See also, e.g., Unifi Scientific Batteries, LLC v. Sony Mobile Commc’ns AB, No. 12-cv-224, slip op. at 6-7 (E.D.
`Tex. Jan. 14, 2014) (denying stay pending IPR where “parties have engaged in substantial discovery, produced
`documents, answered interrogatories, and served and supplemented infringement and invalidity contentions”); Am.
`Vehicular Scis. LLC v. Toyota Motor Corp., No. 12-cv-404, slip op. at 2-3 (E.D. Tex. Jan. 7, 2014) (denying request
`for stay as premature where PTO had not yet determined whether to grant IPR); Lennon Image Techs., LLC v.
`Lumondi Inc., No. 13-cv-238, slip op. at 4 (E.D. Tex. Jan. 6, 2014) (denying stay as “premature” where IPR had not
`yet been granted and stay appeared “unlikely to simplify the issues for trial”); Eon Corp. IP Holdings, LLC v. Skytel
`Corp., No. 08-cv-385, 2009 WL 8590963, at *5 (E.D. Tex. Apr. 29, 2009) (denying stay pending reexamination due
`to prejudice to patent owner); ROY-G-BIV Corp. v. FANUC Ltd., No. 07-cv-418, 2009 WL 1080854, at *3 (E.D.
`Tex. Apr. 14, 2009) (concluding “not a single factor weighs in favor of stay” pending reexamination); ESN, LLC v.
`Cisco Sys., Inc., No. 08-cv-20, 2008 WL 6722763, at *5 (E.D. Tex. Nov. 20, 2008) (denying stay upon finding that
`unfair prejudice to patent owner outweighed any potential simplification of issues in IPR).
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`3
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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 9 of 22 PageID #: 3932
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`inappropriate.
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`First, a stay is inappropriate because Defendants’ motion is premature. Defendants filed
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`the instant motion shortly after Micro Motion filed its last three IPR petitions and, under the
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`statutory period, the PTO may not determine until August 2014 whether or not to accept these
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`petitions. While Defendants would have the Court disregard the fact that the PTO has taken no
`
`action with regard to the IPR petitions, it would betray common sense—and the great weight of
`
`the authority—to think that the prematurity of Defendants’ motion does not weigh against a stay.
`
`Am. Vehicular Scis. LLC, No. 12-cv-404, slip op. at 2-3 (E.D. Tex. Jan. 7, 2014) (denying
`
`request for stay as premature where PTO had not yet determined whether to grant IPR); Lennon
`
`Image Techs., LLC v. Lumondi Inc., No. 13-cv-238, slip op. at 4 (E.D. Tex. Jan. 6, 2014)
`
`(denying stay as “premature” where IPR had not yet been granted and stay appeared “unlikely to
`
`simplify the issues for trial”); Blue Calypso, Inc. v. Groupon, Inc., No. 12-cv-486, slip op. at 4
`
`(E.D. Tex. July 19, 2013) (denying request for stay as premature where PTO had not yet
`
`determined whether review was appropriate); Nat’l Oilwell Varco, L.P. v. Omron Oilfield &
`
`Marine, Inc., No. 12-cv-773, slip op. at 3 (W.D. Tex. June 10, 2013) (denying without prejudice
`
`defendant’s motion to stay pending IPR and noting “there is a real risk” PTO could decline
`
`review).2
`
`
`2 Accord Proctor & Gamble Co. v. Team Techs., Inc., No. 12-cv-552, 2013 WL 4830950, at *3-4 (S.D. Ohio
`Sept. 10, 2013) (denying motion to stay as premature where IPR petition was not yet granted); Dane Techs., Inc. v.
`Gatekeeper Sys., Inc., No. 12-cv-2730, 2013 WL 4483355, at *2 (D. Minn. Aug. 20, 2013) (denying stay before
`PTO makes a decision on petition because “Court can only speculate as to whether the PTO will review a patent and
`to what extent”); Derma Scis., Inc. v. Manukamed Ltd., No. 12-cv-3388, slip op. at 2 (D.N.J. July 17, 2013)
`(denying request for stay pending IPR without prejudice and noting that Court could “more fully evaluate” merits of
`stay following PTO’s determination whether to grant IPR application); PPC Broadband, Inc. v. Corning Gilbert,
`Inc., No. 12-cv-911, slip op. at 2-3 (N.D.N.Y. July 16, 2013) (denying request for stay pending IPR without
`prejudice to renewal after PTO acted upon recently filed IPR application); Trustees of Boston Univ. v. Everlight
`Elecs. Co., Ltd., No. 12-cv-11935, slip op. at 3 (D. Mass. July 11, 2013) (concluding, “Here, however, it is not yet
`even established that a re-examination of the ’738 patent will be undertaken by the PTO. Therefore, it would be
`premature for the Court to analyze this potential reexamination as cause for a stay under the factors set forth
`above.”) (emphasis in original); Davol, Inc. v. Atrium Med. Corp., No. 12-cv-958, 2013 WL 3013343, at *2 (D. Del.
`June 17, 2013) (finding fact that inter partes review had not yet been granted weighed against granting stay);
`
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`4
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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 10 of 22 PageID #: 3933
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`Second, while Defendants’ motion is premature, it is at the same time late. In their
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`motion, Defendants assert that this case “is still in its preliminary stages.” Mot. at 11. This case
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`is not in its “preliminary stages.” This case has been pending since October 2012, discovery and
`
`claim construction are well underway, and numerous core milestones have been completed:
`
`The parties have produced over 1.4 million pages of documents in discovery
`(including Invensys’ production of thousands of documents housed at the
`Invensys University Technology Centre (“UTC”) in Oxford, England),3 and
`identified likely e-mail custodians;
`
`The parties served detailed infringement contentions on all the patents-in-suit
`(seven for Invensys, two for Micro Motion) in July 2013, more than seven months
`ago;
`
`The parties served detailed invalidity contentions on all the patents-in-suit in
`September 2013, six months ago;
`
`The parties have finalized and filed their joint claim construction statement, filed
`detailed technology tutorials, recommended technical advisors to the Court, filed
`letter briefs requesting leave to file motions for summary judgment of
`indefiniteness, and filed their opening Markman claim construction brief (and the
`responsive Markman claim construction brief will likely have been filed by the
`time the Court considers the instant motion);
`
`
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` 
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` 
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` 
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`The Markman hearing is around the corner, on May 1, 2014;
`
`
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`Micro Motion has noticed a Rule 30(b)(6) deposition of Invensys comprised of
`thirty-five topics, which is scheduled to commence in a week, and has demanded
`the individual depositions of Robert Arias (Product Sales Executive/Business
`Development Manager), Mark Avery (Sales Director, North America, M&I),
`
`Kowalski v. Anova Food, LLC, No. 11-cv-795, slip op. at 10-11 (D. Haw. June 14, 2013) (concluding that
`“[b]ecause the USPTO has not yet made its initial determination, Anova LLC’s Motion to Stay is premature” and
`noting that “[i]f litigation were stayed every time a claim in suit undergoes reexamination, federal infringement
`actions would be dogged by fits and starts. Federal court calendars should not be hijacked in this manner”); Warsaw
`Orthopedic, Inc. v. Nuvasive, Inc., No. 12-cv-2738, slip op. at 1 (S.D. Cal. May 30, 2013) (denying motion to stay
`where decision whether to grant IPR was still pending); Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., No. 12-cv-
`1727, slip op. at 4-5 (M.D. Fla. May 13, 2013) (concluding, “[I]t seems clear that a stay of a patent infringement
`action is not warranted when based on nothing more than the fact that a petition for inter partes review was filed in
`the USPTO…because a stay could delay these proceedings for at least six months with little to show, the Court finds
`that a stay would unduly prejudice or present a clear tactical disadvantage to Plaintiff”); One StockDuq Holdings,
`LLC v. Becton, Dickinson & Co., No. 12-cv-3037, slip op. at 3 (W.D. Tenn. May 6, 2013) (concluding, “The Court
`agrees with Plaintiff that a stay in this case is premature… [because] the PTO has not yet granted Defendant’s
`Petition for [IPR] and it is possible that the PTO will never grant Defendant’s Petition”).
`3 Contrary to Defendants’ claim (see Mot. at 3 n.4), Invensys has produced the relevant documents housed at the
`UTC.
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`5
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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 11 of 22 PageID #: 3934
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`
`Craig Barth (Vice President, Finance), Alastaire Davidson (Senior Director,
`Financial Controls), Tim Dorr (Senior Hardware Engineer), Mark Ferencik
`(Consulting Systems Analyst), Manus Henry (an inventor on the ’646, ’761, ’136,
`’854, ’906, ’594, and ’062 patents), Bob Jones (Vice President and General
`Manager, M&I), Tara Kirby (Senior Director of Finance), Wade Mattar (Flow
`Marketing Manager), Michael Plaziak
`(Principal Software Development
`Engineer), and Mike Reese (M&I Business Development Manager);
`
`Invensys has noticed five separate Rule 30(b)(6) depositions of Emerson and
`Micro Motion to commence in March 2014;
`
`The parties have propounded and responded to interrogatories (and supplemented
`their responses); and
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` 
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` 
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` 
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`
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`Micro Motion has served document subpoenas to DLA Piper LLP (US) and Shore
`Chan DePumpo LLP.
`
`
`Notably, Emerson and Micro Motion have been aware of the Invensys patents-in-suit for years
`
`now (as major competitors of Invensys), as evidenced by the fact that Micro Motion and/or
`
`Emerson is an assignee on no fewer than six issued patents that specifically identify the Invensys
`
`parent ’136 patent (issued in 2001) as prior art in their prosecution.4 Notwithstanding
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`Defendants’ long-standing awareness of the Invensys patents-in-suit, the filing of this lawsuit in
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`the fall of 2012, and Defendants’ service of invalidity contentions containing the same prior art
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`that Micro Motion now relies upon in its IPR petitions in September 2013, Defendants chose to
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`wait until this case was in the midst of discovery and claim construction proceedings before
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`filing the instant motion. Their foot-dragging should not be countenanced.
`
`
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`In a nutshell, after delaying for months—and after the parties have done substantial work
`
`and completed numerous core milestones—Defendants now demand a stay before the Patent
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`Office has even looked at Micro Motion’s IPR petitions on the ’646, ’761, ’136, ’854, ’906,
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`’594, and ’062 patents. These circumstances mutually weigh against a stay and, in fact, reflect
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`the exact opposite of those circumstances that normally justify a stay. This is reason enough to
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`4 The Invensys ’062 and ’906 patents were similarly cited as prior art during prosecution of the applications that
`evolved into Emerson and/or Micro Motion patents.
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`6
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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 12 of 22 PageID #: 3935
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`deny Defendants’ motion. See, e.g., Sunbeam Prods. v. Hamilton Beach Brands, Inc., No. 09-
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`cv-791, 2010 WL 1946262, at *5 (E.D. Va. May 10, 2010) (denying stay and finding that any
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`simplifying benefits from reexamination were outweighed because “[d]iscovery is well
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`underway. The Markman process has kicked off, with opening and response briefs already filed.
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`Moreover, the inter partes reexamination procedure has not yet begun, and shows no likelihood
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`of getting underway—assuming Homeland’s reexamination request is even granted—before
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`claim construction is likely to occur”).
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`B.
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`Application of Soverain Factors
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`1.
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`A Stay Would Unduly Prejudice Invensys, And Give Defendants An
`Unfair Tactical Advantage
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`
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`The first factor—whether a stay would unduly prejudice or present a clear tactical
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`disadvantage to the non-moving party—strongly disfavors a stay, especially where, as here, the
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`parties are direct competitors.
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`a.
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`The Parties Are Direct Competitors And A Stay Would
`Unduly Prejudice Invensys’ Efforts To Enforce Its Patent
`Rights
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`As many courts have recognized, a stay will affect the competitive balance when it is
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`sought in a case between direct competitors. In particular, the parties compete with each other
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`not only in the same market, but also for the same customers. A stay would cause undue
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`prejudice to Invensys and allow Defendants to continue infringing Invensys’ patents for as long
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`as the stay is in place. This factor alone justifies denying the stay. VirtualAgility, Inc. v.
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`Salesforce.com, Inc., No. 13-cv-011, 2014 WL 94371, at *7 (E.D. Tex. Jan. 9, 2014) (refusing to
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`stay litigation pending PTO review of Covered Business Method (“CBM”) petition, since “courts
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`are generally reluctant to stay proceedings where the parties are direct competitors, because in
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`such cases, there is a reasonable chance that delay in adjudicating the alleged infringement will
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`7
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`

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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 13 of 22 PageID #: 3936
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`have outsized consequences to the party asserting infringement, including the potential for a loss
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`in market share and an erosion of goodwill”) (citing Market-Alerts Pty. Ltd. v. Bloomberg Fin.
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`L.P., 922 F. Supp. 2d 486, 494 (D. Del. 2013); accord SenoRx, Inc. v. Hologic, Inc., No. 12-cv-
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`173, 2013 WL 144255, at *9 (D. Del. Jan. 11, 2013) (finding issue-simplification factor
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`“favor[ed] a stay, though not strongly so” and litigation-status factor “favor[ed] a stay” but
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`denying motion to stay in view of prejudice factor “decidedly weigh[ing] against a stay” due to,
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`inter alia, parties being “hard-fought competitors”); ADA Solutions, Inc. v. Engineered Plastics,
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`Inc., 826 F. Supp. 2d 348, 351 (D. Mass. 2011) (noting that “prejudice [to patentee] is
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`heightened when parties to litigation are direct competitors; in such cases, courts presume that a
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`stay will prejudice the non-movant.”) (emphasis added); Tesco Corp. v. Weatherford Int’l, Inc.,
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`599 F. Supp. 2d 848, 851 (S.D. Tex. 2009) (observing, “Where the parties are direct competitors,
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`a stay would likely prejudice the nonmovant.”)5
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`The potential prejudice to Invensys is exacerbated by Micro Motion’s delay in filing its
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`IPR petitions (see infra at 5-7) and seeking the instant stay. The Markman hearing in this case is
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`set for May 1, 2014, and trial is set for October 13, 2015. By statute, the PTO will likely have
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`until approximately August 2014 to determine whether or not to accept the last of Micro
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`Motion’s IPR petitions. Pursuant to 35 U.S.C. § 316(a)(11), the PTO will then have one year to
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`5 Accord BarTex Research, 611 F. Supp. 2d at 652 (finding stay would be prejudicial to patentee because “should
`[the defendant] be found to infringe . . . damages alone may not fully compensate . . . for a lengthy delay resulting
`from reexamination”); Davol, 2013 WL 3013343, at *2-3 (finding undue prejudice factor weighed in plaintiff’s
`favor because of risk of surrendering market share, coupled with early stage of IPR); ImageVision Net, Inc. v.
`Internet Payment Exch., Inc., No. 12-cv-054, 2013 WL 663535, at *6 (D. Del. Feb. 25, 2013) (denying motion to
`stay and noting “courts are generally reluctant to stay proceedings where the parties are direct competitors”); Nat’l
`Prods., Inc. v. Gamber–Johnson LLC, No. 12-cv-840, 2012 WL 3527938, at **2-3 (W.D. Wash. Aug. 14, 2012)
`(recognizing that, when parties are direct competitors, there is reasonable chance delay in adjudicating alleged
`infringement will have outsized consequences to party asserting infringement, including potential for loss of market
`share and erosion of goodwill); Avago Techs. Fiber IP (Singapore) Pte. Ltd. v. IPtronics Inc., No. 10-cv-2863, 2011
`WL 3267768, at *5 (N.D. Cal. July 28, 2011) (noting that “infringement among competitors can cause harm in the
`marketplace that is not compensable by readily calculable money damages.”); Cooper Notification, Inc. v. Twitter,
`Inc., No. 09-cv-865, 2010 WL 5149351, at *5 (D. Del. Dec. 13, 2010) (observing, “Courts are reluctant to stay
`proceedings where the parties are direct competitors.”).
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`8
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`Case 6:12-cv-00799-JRG Document 126 Filed 03/10/14 Page 14 of 22 PageID #: 3937
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`issue final decisions (until August 2015), but the PTO can extend that deadline by 6 months
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`(until February 2016) — thereby delaying the case beyond its current trial date. This militates
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`against a stay. Unifi Scientific Batteries, LLC v. Sony Mobile Commc’ns, No. 12-cv-224, slip op.
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`at 6-7 (E.D. Tex. Jan. 14, 2014); accord Universal Elecs., Inc. v. Universal Remote Control, Inc.,
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`943 F. Supp. 2d 1028, 1033 (C.D. Cal. 2013) (noting, “[T]he inter partes review, normally
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`required to be completed in a year, can be extended for good cause for six months. There could
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`be a two-year delay, even before any appellate proceedings that will likely arise out of the inter
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`partes review”).
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`Emerson and Micro Motion make much of Invensys’ alleged six-year delay in
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`“complain[ing] about Micro Motion’s (and Emerson’s) allegedly infringing conduct,” claiming
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`that this means that Invensys will not be prejudiced. See Mot. at 8. But Em