Case 6:12-cv-00799-JRG Document 32 Filed 02/27/13 Page 1 of 5 PageID #: 1378
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`PLAINTIFF INVENSYS SYSTEMS, INC.’S SUR-REPLY TO
`DEFENDANT MICRO MOTION INC., USA’S MOTION
`TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`It is not enough for Defendant Micro Motion Inc., USA (“Micro Motion”) to show that
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`there are some witnesses in Colorado or that Colorado has some interest in this dispute. Micro
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`Motion must prove that a trial in Colorado would be “clearly more convenient” than trial in the
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`Eastern District, a burden it has failed to meet. In re Volkswagen of Am., Inc., 545 F.3d 304, 315
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`(5th Cir. 2008). To the contrary, Micro Motion is simply attempting to shift any inconvenience
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`from itself to Invensys, which is not a permissible use of § 1404(a). See Frito-Lay N. Am., Inc. v.
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`Medallion Foods, Inc., 867 F. Supp. 2d 859, 870 (E.D. Tex. 2012).
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`I.
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`The Witnesses Are Not Concentrated in Colorado.
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`ARGUMENT
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`Micro Motion baselessly attempts to downplay the significance of the witnesses located
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`in Texas and the Eastern District. Plaintiff Invensys Systems, Inc. (“Invensys”) has identified
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`four non-party witnesses within the subpoena power of this Court, while Micro Motion has failed
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`to identify a single non-party witness within the Colorado court’s subpoena power.
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`See
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`Invensys’s Resp. at 10-11.
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`It is difficult to see how a transfer to a district that does not have
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`Case 6:12-cv-00799-JRG Document 32 Filed 02/27/13 Page 2 of 5 PageID #: 1379
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`subpoena power over any non-party witnesses would promote convenience, when this Court has
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`subpoena power over at least four non-party witnesses.1
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`In addition, most of Invensys’s damages witnesses (which Micro Motion acknowledges is
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`one of the three “major issues” in a patent case) are located in Texas. A patentee’s ability to
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`supply the market is an element of a claim for lost profits under the Panduit standard. See State
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`Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577 (Fed. Cir. 1989). Thus, witnesses on
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`Invensys’s financial capability and sales in the state representing Invensys’s largest source of
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`revenue from Coriolis flowmeters are material and relevant. See Invensys’s Resp. at 8. These
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`witnesses are concentrated in Texas and several are in the Eastern District. See id. at 11-12.
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`Finally, Micro Motion’s suggestion that all the infringement witnesses (another “major
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`issue” in patent cases) are located in Colorado is belied by its own briefing. While Defendant
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`Emerson Electric Co. (“Emerson”) denies involvement in the design or sale of the accused
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`Coriolis flowmeters (but admits the accused products are sold under the Emerson name), the
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`witnesses Emerson will need to support these denials will be located in St. Louis, Missouri where
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`Emerson in headquartered.2
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`Courts transfer cases when the witnesses and documents are concentrated in or around
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`the proposed transferee forum. See Emanuel v. SPX Corp., Civ. No. 6:09cv220, 2009 WL
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`3063322, at *9 (E.D. Tex. Sept. 21, 2009); cf. Odom v. Microsoft Corp., 596 F. Supp. 2d 995,
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`1002 (E.D. Tex. 2009) (granting transfer because “[t]his is not a case where witnesses are spread
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`1 Forums other than the Eastern District would also have subpoena power over some non-party witnesses, but
`Colorado is not one of them.
`2 Micro Motion also acknowledges that Emerson is responsible for “strategic planning, product profitability and
`market position” for Micro Motion. Micro Motion’s Reply, Ex. B, ¶ 9 (declaration of Andrew Dudiak). These
`facts are relevant to both the reasonable royalty and lost profits analyses. See Ga.-Pac. Corp. v. U.S. Plywood
`Corp., 318 F. Supp. 1116, 1121 (S.D.N.Y. 1970) (success of the patented invention, benefits of the patented
`invention, and the portion of the profit attributable to the patented invention); State Indus., 883 F.2d at 1577
`(demand for the patented product).
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`Case 6:12-cv-00799-JRG Document 32 Filed 02/27/13 Page 3 of 5 PageID #: 1380
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`out all over the country or the world”). While Invensys does not deny that some witnesses on
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`one issue (infringement) may be located in Colorado, many witnesses are also located in Texas
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`and the Eastern District, and others are dispersed across several equally distant forums (Missouri,
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`Massachusetts, and overseas).
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`It is not appropriate to transfer a case for the benefit of some
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`witnesses and parties at the expense of others. See Frito-Lay, 867 F. Supp. 2d at 870.
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`II.
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`Texas Has a Significant Interest in This Dispute.
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`A local
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`interest
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`is absent only when it could “apply virtually to any district.”
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`Volkswagen, 545 F.3d at 318; see also In re TS Tech USA Corp., 551 F.3d 1315, 1321 (Fed. Cir.
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`2008) (a local interest is not relevant when the transferor district “[has] no more or less of a
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`meaningful connection to th[e] case than any other venue”).
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`Industries that rely on Coriolis
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`flowmeters are highly concentrated in Texas. See Invensys’s Resp. at 4-7.
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`Invensys also sells
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`nearly a fifth of its Coriolis flowmeters in Texas, far more than any other state, while it sells
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`almost none in Colorado. See id. at 8. Micro Motion does not dispute that it supplies 45% of the
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`flowmeters used in the oil and gas industry and 38% of the flowmeters used in the refining
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`industry, making it the largest supplier in both fields. See id. at 7. Nor has Micro Motion made
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`any effort to show that Texas fails to account for a substantial percentage of its sales of Coriolis
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`flowmeters.
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`Texas’s interest in this dispute and the industries it implicates is not common “virtually to
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`any district,” Volkswagen, 545 F.3d at 318, and Colorado does not share this particularized local
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`interest since it has almost no connection to these industries. See Invensys’s Resp. at 4-7.
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`In
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`addition, the presence of Invensys’s office in Plano counterbalances any interest Colorado may
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`have in the work and reputation of Micro Motion’s employees. See RMail Ltd. v. Docusign, Inc.,
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`No. 2:11-CV-299-JRG, 2012 WL 1416299, at *5 (E.D. Tex. Apr. 24, 2012).
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`Case 6:12-cv-00799-JRG Document 32 Filed 02/27/13 Page 4 of 5 PageID #: 1381
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`Invensys respectfully requests that
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`the Court deny Micro Motion’s and Emerson’s
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`CONCLUSION
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`Motion to Transfer.
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`Date: February 27, 2013
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`Respectfully submitted,
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`Amy P. Mohan
`State Bar No. 24051070
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Amy.Mohan@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF, INVENSYS
`SYSTEMS, INC.
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`OF COUNSEL:
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`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF,
`INVENSYS SYSTEMS, INC.
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`EAST\55185796.4
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`Case 6:12-cv-00799-JRG Document 32 Filed 02/27/13 Page 5 of 5 PageID #: 1382
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing document was filed electronically on February 27, 2013,
`pursuant to Local Rule CV-5(a) and has been served on all counsel who have consented to
`electronic service. Any other counsel of record will be served by first class U.S. mail on this
`same date.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`EAST\55185796.4
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`5