Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 1 of 8 PageID #: 1391
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Plaintiff,
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`Case No. 6:12-cv-00799-LED
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`INVENSYS SYSTEMS, INC.,
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`vs.
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`vs.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`DEFENDANTS EMERSON ELECTRIC CO.’S AND MICRO MOTION, INC.’S
`MOTION TO STAY PROCEEDINGS PENDING RESOLUTION OF MICRO MOTION,
`INC.’S MOTION TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404(a)
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 2 of 8 PageID #: 1392
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`I.
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`INTRODUCTION
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`The Federal Circuit has stated that it is appropriate to stay the progress of a lawsuit
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`pending the resolution of a motion to transfer. This Motion requests that the procedure be
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`followed here.
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`On January 10, 2013, Defendant and Counterclaim-Plaintiff Micro Motion, Inc. (“Micro
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`Motion”) filed a Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a), (Dkt. No. 14),
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`which was later joined by Defendant Emerson Electric Co. (“Emerson”).1 (Dkt. No. 30.) As
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`described in the Motion to Transfer, which has been fully briefed, Emerson and Micro Motion
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`seek to transfer this case to the District of Colorado because this case has no significant
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`connection with this District; the District of Colorado is more convenient and less costly for the
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`majority of relevant witnesses; compulsory process will be available for witnesses in Colorado;
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`access to relevant evidence will be easier in Colorado; and the District of Colorado has a strong
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`interest in resolving this case. In view of this, Emerson and Micro Motion respectfully request a
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`stay of this matter pending disposition of the Motion to Transfer.
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`A stay of all proceedings is warranted. It is consistent with Federal Circuit reasoning and
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`case law, which district courts are applying to stay cases until the motion to transfer is decided.
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`See In re Fusion-IO, Inc., 489 Fed. Appx. 465, 465 (Fed. Cir. 2012) (non-precedential); In re
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`EMC Corp., 501 Fed. Appx. 973, 975-76 (Fed. Cir. 2013) (non-precedential);2 see also Solid
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`State Storage Solutions, Inc. v. STEC, Inc., Case No. 11-cv-391-JRG-RSP, slip op. at 1 (E.D.
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`Tex. Jan. 3, 2013). (Declaration of Kadie M. Jelenchick (“Jelenchick Decl.”), Ex. A.) In
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`1 Emerson notes that it is not a proper defendant in this case as it does not make, use, sell,
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`offer for sale, or import the accused digital Coriolis flowmeters. (See Dkt. No. 30-1.) Emerson
`intends to seek a dismissal from this case at the appropriate time.
`2 The Federal Circuit permits parties to cite non-precedential decisions such as In re
`Fusion-IO and In re EMC. See Federal Circuit Rule of Practice 32.1(c).
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`1
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 3 of 8 PageID #: 1393
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`addition, a stay does not prejudice Invensys Systems, Inc. (“Invensys”), and it avoids duplicative
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`and unnecessary litigation. By contrast, to allow this case to proceed prior to resolving the
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`transfer issue would be prejudicial to Emerson and Micro Motion and undermine judicial
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`efficiency.
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`II.
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`PROCEDURAL BACKGROUND
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`On October 22, 2012, Invensys filed a Complaint against Emerson and Micro Motion
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`alleging infringement of U.S. Patent Nos. 7,124,646, 7,136,761, 6,311,136, and 7,505,854.3
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`(Dkt. No. 1.) Emerson and Micro Motion answered on January 10, 2013, denying, among other
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`things, that either Emerson or Micro Motion infringe the asserted patents. (Dkt. Nos. 15-16.)
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`That same day, Micro Motion filed a Motion to Transfer to the District of Colorado given Micro
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`Motion’s lack of connections, let alone meaningful connections, to the Eastern District of Texas.
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`(Dkt. No. 14.) Emerson joined the Motion to Transfer. (Dkt. No. 30.) The Motion to Transfer
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`has been fully briefed and is ready for disposition. (Dkt. No. 34.)
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`On March 29, 2013, Invensys filed its Notice of Readiness for Status Conference, (Dkt.
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`No. 34), and this Court set a Status Conference for June 27, 2013, (Dkt. No. 35), which will
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`cause this case to progress while the Motion to Transfer is pending – the very concern addressed
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`by the Federal Circuit in In re Fusion-IO and In re EMC.
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`No schedule has been entered in this case. The parties have not yet conducted any Rule
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`26(f) conference or engaged in any negotiations regarding any proposed Docket Control,
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`Discovery, ESI, and/or Protective Orders. Discovery has not begun.
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`3 Invensys has since amended its Complaint, adding U.S. Patent Nos. 6,754,594,
`7,571,062, and 8,000,906. (See Dkt. No. 25.) Accordingly, Micro Motion and Emerson filed
`their respective Amended Answers on February 19, 2013. (Dkt. Nos. 28-29.)
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`2
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 4 of 8 PageID #: 1394
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`III. LEGAL STANDARD
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`“The District Court has the inherent power to control its own docket, including the power
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`to stay proceedings.” Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662
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`(E.D. Tex. 2005); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936) (“[T]he power to stay
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`proceedings is incidental to the power inherent in every court to control the disposition of the
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`causes on its docket with economy of time and effort for itself, for counsel, and for litigants.”).
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`In evaluating a motion to stay pending a decision on transfer, courts in the Fifth Circuit consider
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`the following: (1) the potential prejudice to the Plaintiff from a brief stay; (2) the hardship to the
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`Defendant if the stay is denied; and (3) the judicial efficiency in avoiding duplicative litigation.
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`See Nguyen v. BP Exploration & Prod., Inc., No. H-10-2484, 2010 U.S. Dist. LEXIS 80068, at
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`*3 (S.D. Tex. Aug. 9, 2010) (granting motion to stay pending resolution of the transfer issue);
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`Esquivel v. BP Co. N. Am., Nos. B-10-236, B-10-227, B-10-237, 2010 U.S. Dist. LEXIS 110015,
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`at *9 (S.D. Tex. Oct. 14, 2010) (same).
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`A stay is compatible with the Federal Circuit’s directive that resolving motions to transfer
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`early in the litigation is important. See In re VTech Commc’ns., Inc., Misc. Dkt. No. 909, 2010
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`U.S. App. LEXIS 372, at *6 (Fed. Cir. Jan. 6, 2010) (emphasizing the importance of resolving
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`transfer motions “before the district court invest(s) considerable time and attention on discovery
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`and completing claim construction”). In fact, a stay of proceedings is consistent with the
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`Federal Circuit’s explicit instructions in In re Fusion-IO, where Fusion-IO was instructed to file
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`a motion to stay and the district court was instructed to act on the motion to stay and pending
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`motion to transfer before proceeding with the litigation. 489 Fed. Appx. at 465-66 (citing In re
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`Horseshoe Entm’t, 337 F.2d 429, 433 (5th Cir. 2003) (“As indicated earlier, Horseshoe filed its
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`motion to transfer timely and before it filed its answer and in our view disposition of that motion
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 5 of 8 PageID #: 1395
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`should have taken top priority in the handling of this case[.]”)).4
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`Following the Federal Circuit’s directive, Fusion-IO promptly filed an emergency motion
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`to stay proceedings pending resolution of its motion to transfer, which the Eastern District of
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`Texas Court granted. See Solid State Storage Solutions, Case No. 11-cv-391-JRG-RSP, slip op.
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`at 1. (Jelenchick Decl., Ex. A.) Since the recent decision in In re Fusion-IO, a number of
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`district courts have granted stays pending resolution of transfer motions. See, e.g., One Stockduq
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`Holdings, LLC v. Becton, Dickinson & Co., No. 2:12-cv-03037-JPM-tmp (W.D. Tenn. Feb. 13,
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`2013); B.E. Tech., LLC v. Sony Computer Entm’t Am., LLC, Case No. 2:12-cv-2826, 2013 U.S.
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`Dist. LEXIS 25008, at *3 (W.D. Tenn. Feb. 11, 2013); B.E. Tech., LLC v. Facebook, Inc., Case
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`No. 2:12-cv-2769 (W.D. Tenn. Feb. 8, 2013). (Jelenchick Decl., Exs. B-D.) Emerson and Micro
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`Motion urge this Court to likewise grant a stay pending resolution of their Motion to Transfer.
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`IV. A STAY PENDING THE MOTION TO TRANSFER IS WARRANTED
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`In view of the Federal Circuit’s explicit expectations in In re Fusion-IO, Emerson and
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`Micro Motion respectfully request that the Court exercise its inherent power to stay this case. A
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`stay will not prejudice Invensys, but rather promote judicial efficiency and avoid duplicative and
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`unnecessary litigation.
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`A.
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`Invensys Is Not Prejudiced By A Stay
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`As this case is in its very early stages, Invensys will not be prejudiced by a stay. While a
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`Status Conference has been scheduled, no schedule has been entered, let alone discussed by the
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`parties. In addition, the parties have not yet conducted any Rule 26(f) conference or engaged in
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`any negotiations regarding any proposed Docket Control, Discovery, ESI, and/or Protective
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`4 Again citing to In re Horseshow Entertainment, the Federal Circuit once more stressed
`“the importance of addressing motions to transfer at the outset of litigation.” In re EMC Corp.,
`501 Fed. Appx. at 975-76.
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`4
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 6 of 8 PageID #: 1396
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`Orders. Discovery has not begun.
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`Proceeding quickly cannot be a priority for Invensys; it has waited years to bring suit.
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`One of the asserted patents, U.S. Patent No. 6,311,136, issued on October 30, 2001. (See Dkt.
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`No. 25-3.) Despite the fact that the accused Micro Motion digital Coriolis flowmeters have been
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`on the market since 2006, Invensys delayed in bringing this litigation for six years. Any
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`objection by Invensys to a short stay while the Court addresses the pending Motion to Transfer
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`would ring hollow.
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`There is no prejudice to Invensys. Instead, as explained below, a stay has the potential to
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`benefit Invensys as it will prevent the possibility of relitigating issues in the District of Colorado
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`if this case is transferred. This weighs in favor of a stay.
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`B.
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`The Parties, particularly Micro Motion, Will Incur Hardships If A Stay Is
`Denied
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`With the Motion to Transfer pending, the parties could bear the time and financial costs
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`of litigating identical issues in two forums if the Motion to Stay is not granted. In addition,
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`proceeding with the litigation, including discovery, prior to resolution of the Motion to Transfer
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`may increase the expenditure of Micro Motion’s time and resources as all the likely relevant
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`witnesses and documents are located in Colorado. For Micro Motion to make such an
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`expenditure now is particularly burdensome if the case is ultimately transferred to the District of
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`Colorado.
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`Further, the potential new forum – the District of Colorado – does not have the same
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`patent disclosure requirements or rules that this District has. Consequently, the parties may
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`engage in work that would not necessarily be required, or at least not be required on the time-
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`table contemplated by this Court.
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`A short stay while the Court decides the Motion to Transfer avoids burdening Emerson
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`and Micro Motion as well as Invensys with these hardships; this factor weighs in favor of a stay.
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 7 of 8 PageID #: 1397
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`C.
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`A Stay Promotes Judicial Efficiency And Avoids Duplicative And
`Unnecessary Litigation
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`As described above, staying this case not only avoids prejudice to the parties, but would
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`also promote judicial efficiency and avoid duplicative and unnecessary litigation. This case is in
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`its infancy. Thus, a short stay is beneficial, not disruptive. Indeed, if this case is transferred to
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`the District of Colorado, it makes little sense to burden this Court and its docket with a Status
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`Conference, potential discovery matters, and other substantive matters, including the dismissal of
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`Emerson from this case. A stay will save the parties from undue burden and expense and should
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`be granted.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Emerson and Micro Motion respectfully requests the Court
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`order a stay of all other proceedings in this case, pending resolution of the Motion to Transfer.
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`Dated: May 31, 2013
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`Guy N. Harrison, State Bar No. 00000077
`Harrison Law Firm
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`217 N. Center Street
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`Longview, Texas 75606
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`Phone: (903) 758-7361
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`Fax: (903) 753-9557
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`Email: guy@gnhlaw.com and
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`cj-gnharrison@att.net
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`Respectfully submitted,
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`/s/ Kadie M. Jelenchick
`Linda E.B. Hansen, WI Bar No. 1000660
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Kadie M. Jelenchick, WI Bar No. 1056506
`Matthew J. Shin, WI Bar No. 1090096
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`Phone: (414) 271-2400
`Fax: (414) 297-4900
`Email: lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`Attorneys for Defendants Emerson Electric
`Co. and Micro Motion, Inc.
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`Case 6:12-cv-00799-JRG Document 36 Filed 05/31/13 Page 8 of 8 PageID #: 1398
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`CERTIFICATE OF CONFERENCE
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`This is to certify that on May 30, 2013, I, Kadie M. Jelenchick, counsel for Defendants
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`Emerson Electric Co. and Micro Motion, Inc., spoke on the telephone with Jeffrey Johnson,
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`counsel for Plaintiff Invensys Systems, Inc., regarding the above Motion, which Plaintiff’s
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`counsel indicates is opposed. Counsel’s discussions conclusively ended in an impasse, leaving
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`an open issue for the Court to resolve. Counsel have complied with the meet and confer
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`requirement in Local Rule CV-7(h).
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 31, 2013, I electronically filed the foregoing document with
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`the Clerk of Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`7