Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 1 of 11 PageID #: 1892
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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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`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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`§
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`§ CASE NO. 6:12-CV-799
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`ORDER
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`Before the Court are Defendants Micro Motion Inc., USA (“Micro Motion”) and
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`Emerson Electric Co.’s (“Emerson”) Motion to Transfer Venue to the District of Colorado (Doc.
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`No. 14) and Micro Motion and Emerson’s Motion to Stay Proceedings Pending Resolution of the
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`Motion to Transfer Venue (Doc. No. 36). For the reasons set forth below, the Motion to Transfer
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`is DENIED and the Motion to Stay is DENIED AS MOOT.
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`BACKGROUND
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`On October 22, 2012, Invensys filed suit against Micro Motion and Emerson for
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`infringement of patents related to Coriolis flowmeters. Doc. No. 25 at 1. Coriolis flowmeters
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`are used to measure the mass flow rate of liquids in a variety of applications, such as the oil and
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`gas, refinery, and food and beverage industries. Doc. No. 26 at 2. On January 10, 2013, Micro
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`Motion filed a motion to transfer venue to the District of Colorado. Doc. No. 14. Emerson later
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`joined the motion to transfer. Doc. No. 30. Micro Motion and Emerson then filed a motion to
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`stay the proceedings pending resolution of the motion to transfer venue. Doc. No. 36. Micro
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 2 of 11 PageID #: 1893
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`Motion and Emerson argue that this case should be transferred to the District of Colorado under
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`28 U.S.C. § 1404(a) because it is a more convenient forum. Doc. No. 14 at 1.
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`Invensys provides automation and information technologies for the manufacturing and
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`infrastructure industries. Id. at 3. It manufactures Coriolis flowmeters using the patented
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`technology at issue. Doc. No. 26 at 2. Invensys is a Massachusetts corporation with its principal
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`place of business in Houston, Texas, which borders but is not in this District. Doc. No. 25 at ¶ 1.
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`Houston is about two hundred miles from the Tyler courthouse in this District. Doc. No. 14 at 9.
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`Invensys also has a sixty-employee office in Plano, Texas, which is in this District. Doc. No. 25
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`at ¶ 1. Its design and manufacturing facilities are located in Massachusetts. Doc. No. 26 at 3.
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`Invensys sells twenty percent of its Coriolis flowmeters in Texas. Id. at 8. The patents-in-suit
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`were designed and developed outside of this District. Doc. No. 14 at 12. Three inventors of the
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`patents-in-suit reside in the United Kingdom, one in Spain, and the remaining inventor resides in
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`Massachusetts. Id. at 8.
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`Micro Motion develops and markets devices that measure the flow, mass, density,
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`temperature, and viscosity of various materials. Id. at 2–3. Micro Motion is headquartered in
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`Boulder, Colorado, which is in the District of Colorado. Id. at 10. Boulder is thirty miles from
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`the District of Colorado courthouse. Id. The accused products were designed in that District and
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`the engineers who designed the accused products are located there. Id. at 6, 12. The great
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`majority of Micro Motion’s employees, facilities, and documents involved with the accused
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`products are located in the District of Colorado. Doc. No. 14 at 10, 12. Micro Motion sells the
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`accused products nationwide. Id. at 12.
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`2
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 3 of 11 PageID #: 1894
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`Emerson is Micro Motion’s parent company. Id. at 2. Emerson is a Missouri corporation
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`with its principal place of business in St. Louis, Missouri. Doc. No. 25 at ¶ 2. Emerson has a
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`service center in Beaumont, Texas. Doc. No. 26 at 7–8.
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`APPLICABLE LAW
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`Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the
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`interest of justice, a district court may transfer any civil action to any other district or division
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`where it might have been brought.” The first inquiry when analyzing a case’s eligibility for
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`1404(a) transfer is “whether the judicial district to which transfer is sought would have been a
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`district in which the claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th
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`Cir. 2004) (“In re Volkswagen I”).
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`Once that threshold inquiry is met, courts analyze both public and private factors relating
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`to the convenience of parties and witnesses as well as the interests of particular venues in hearing
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`the case. See In re Nintendo Co., 589 F.3d 1194, 1198 (Fed. Cir. 2009); Humble Oil & Ref. Co.
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`v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963). The private factors are: 1) the relative
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`ease of access to sources of proof; 2) the availability of compulsory process to secure the
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`attendance of witnesses; 3) the cost of attendance for willing witnesses; and 4) all other practical
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`problems that make trial of a case easy, expeditious, and inexpensive. In re Nintendo, 589 F.3d
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`at 1198; In re Volkswagen I, 371 F.3d at 203. The public factors are: 1) the administrative
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`difficulties flowing from court congestion; 2) the local interest in having localized interests
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`decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
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`avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
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`Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re TS Tech, 551 F.3d at
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`1319.
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`3
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 4 of 11 PageID #: 1895
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`The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
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`Inc., 545 F.3d 304, 314–15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
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`of venue contributes to the defendant’s burden in proving that the transferee venue is “clearly
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`more convenient” than the transferor venue. In re Nintendo, 589 F.3d at 1200; In re Volkswagen
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`II, 545 F.3d at 315. Furthermore, though the private and public factors apply to most transfer
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`cases, “they are not necessarily exhaustive or exclusive,” and no single factor is dispositive. In
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`re Volkswagen II, 545 F.3d at 314–15.
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`ANALYSIS
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`A.
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`Threshold – Eligibility for Transfer
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`Micro Motion asserts that jurisdiction is proper in the District of Colorado because Micro
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`Motion’s principal place of business is within that District and it is subject to personal
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`jurisdiction there. Doc. No. 14 at 5. Invensys does not dispute that jurisdiction is proper in the
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`District of Colorado. Thus, this case could have been filed in the District of Colorado.
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`B.
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`Private Factors
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`1.
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`The Relative Ease of Access to Sources of Proof
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`Despite technological advances that certainly lighten the relative inconvenience of
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`transporting large amounts of documents across the country, this factor is still a part of the
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`transfer analysis. In re Volkswagen II, 545 F.3d at 316. Courts analyze this factor in light of the
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`distance that documents, or other evidence, must be transported from their existing location to
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`the trial venue. See id. This factor will turn upon which party, usually the accused infringer, will
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`most probably have the greater volume of documents relevant to the litigation and their
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`presumed location in relation to the transferee and transferor venues. See, e.g., In re Nintendo,
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`589 F.3d at 1199; In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009); In re Volkswagen
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 5 of 11 PageID #: 1896
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`II, 545 F.3d at 314–15. However, documents that have been moved to a particular venue in
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`anticipation of a venue dispute should not be considered. In re Hoffman-La Roche Inc., 587 F.3d
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`1333, 1336–37 (Fed. Cir. 2009). Presumably, the bulk of the discovery material relating to a
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`corporate party is located at the corporate headquarters. See In re Acer Am. Corp., 626 F.3d
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`1252, 1256 (Fed. Cir. 2010).
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`Micro Motion argues that this factor favors transfer because all of its relevant documents
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`are located at its principal place of business in Boulder, Colorado. Doc. No. 14 at 10. Invensys
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`responds that none of its relevant documents are located in Colorado, but are located at its office
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`in Plano, its headquarters in Houston, and its design and manufacturing facilities in
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`Massachusetts. Doc. No. 26 at 12. Emerson’s relevant documents are located at its principal
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`place of business in Missouri and not in either judicial district under consideration. Doc. No. 14
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`at 2 n.1. Similarly, none of the five named inventors reside in either district. Id. at 8.
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`The sources of proof in this case are scattered across the United States and Europe. It is
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`likely that there are relevant documents in both Colorado and Texas. The documents located at
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`Micro Motion’s principal place of business in the District of Colorado are more accessible to that
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`forum. However, the evidence located at Invensys’s principal place of business in Houston and
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`at its office in Plano is more accessible to this District. The evidence possessed by Emerson and
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`the inventors is equally accessible to both districts. Considering the location of documents,
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`neither venue is clearly more accessible for a greater volume of documents. Therefore, this
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`factor is neutral.
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`2.
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`The Availability of Compulsory Process to Secure the Attendance of Witnesses
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`This factor will weigh more heavily in favor of transfer when more third-party witnesses
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`reside within the transferee venue. See In re Volkswagen II, 545 F.3d at 316. The factor will
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 6 of 11 PageID #: 1897
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`weigh the heaviest in favor of transfer when a transferee venue is said to have “absolute
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`subpoena power.” Id. “Absolute subpoena power” is subpoena power for both depositions and
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`trial. In re Hoffmann-La Roche Inc., 587 F.3d at 1338.
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`Micro Motion argues that this factor weighs in favor of transfer because the District of
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`Colorado may use compulsory process to secure the attendance of all witnesses related to the
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`accused products. Doc. No. 14 at 9. Additionally, Micro Motion contends that witnesses located
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`at Invensys’s principal place of business in Houston would not be subject to compulsory process.
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`Id. Invensys responds by identifying two potential non-party witnesses from this District. Doc.
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`No. 26 at 10. These potential witnesses are two sales targets that Invensys claims to have lost to
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`Micro Motion and Emerson. Id.
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`Micro Motion does not identify any non-party witnesses residing in Colorado. Any
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`unidentified Colorado witnesses that would testify about the accused products would likely be
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`willing witnesses connected to Micro Motion. Invensys, on the other hand, identifies two
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`potential non-party witnesses from this District. Therefore, this factor weighs slightly against
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`transfer.
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`3.
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`The Cost of Attendance for Willing Witnesses
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`This factor is analyzed giving broad “consideration [to] the parties and witnesses in all
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`claims and controversies properly joined in a proceeding.” In re Volkswagen I, 371 F.3d at 204.
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`All potential material and relevant witnesses must be taken into account for the transfer analysis,
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`irrespective of their centrality to the issues raised in a case or their likelihood of being called to
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`testify at trial. See In re Genentech, 566 F.3d 1343 (“Requiring a defendant to show that a
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`potential witness has more than relevant and material information at this point in the litigation or
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`risk facing denial of transfer on that basis is unnecessary.”).
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 7 of 11 PageID #: 1898
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`The Fifth Circuit has adopted a “100 mile rule” to assist with analysis of this factor. See
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`In re Volkswagen I, 371 F.3d at 204–05. “When the distance between an existing venue for trial
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`of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of
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`inconvenience to witnesses increases in direct relationship to the additional distance to be
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`traveled.” Id. at 205. When applying the “100 mile rule” the threshold question is whether the
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`transferor and transferee venues are more than 100 miles apart. See In re TS Tech USA Corp.,
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`551 F.3d 1315, 1320 (Fed. Cir. 2008); In re Volkswagen II, 545 F.3d at 317. If so, then a court
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`determines the respective distances between the residences (or workplaces) of all the identified
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`material and relevant witnesses and the transferor and transferee venues. See In re TS Tech, 551
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`F.3d at 1320; In re Volkswagen II, 545 F.3d at 317. The “100 mile rule” favors transfer (with
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`differing degrees) if the transferee venue is a shorter average distance from witnesses than the
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`transferor venue. See In re Volkswagen II, 545 F.3d at 317; In re TS Tech, 551 F.3d at 1320.
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`Furthermore, the existence or non-existence of direct flights can impact the analysis of travel
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`time. See In re Volkswagen I, 371 F.3d at 204, n.3. Thus, regardless of the “straight line”
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`distances calculated for the “100 mile rule,” if “travel time” distances favor the transferee venue,
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`then this factor will favor transfer. However, the “100 mile rule” should not be rigidly applied.
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`See In re Genentech, 566 F.3d at 1344. When a particular witness will be required to travel “a
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`significant distance no matter where they testify,” then that witness is discounted for purposes of
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`the “100 mile rule” analysis. See id. (discounting European witnesses in the convenience
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`analysis when reviewing a denial of transfer from Texas to California). However, in cases where
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`no potential witnesses are residents of the court’s state, favoring the court’s location as central to
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`all of the witnesses is improper. Id. at 1344. Finally, this factor favors transfer when a
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`“substantial number of material witnesses reside in the transferee venue” and no witnesses reside
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 8 of 11 PageID #: 1899
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`in transferor venue regardless of whether the transferor venue would be more convenient for all
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`of the witnesses. Id. at 1344–45.
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`Micro Motion argues that this factor favors transfer because Micro Motion and the
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`engineers who designed the accused products are all located in the District of Colorado. Doc.
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`No. 14 at 6. Micro Motion asserts that Invensys’s witnesses will come from Houston,
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`Massachusetts, and overseas. Id. at 8. It also argues that Invensys’s Texas witnesses have no
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`connection to infringement, validity, or damages. See Doc. No. 31 at 1. Invensys responds by
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`listing potential witnesses based in Texas, some of whom are located in this District. Doc. No.
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`26 at 11–12. Invensys also notes that Emerson’s witnesses are located in Missouri, not
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`Colorado. Id. at 13.
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`It is likely that there are willing witnesses in both Colorado and Texas. Micro Motion’s
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`engineers who designed the accused products are more accessible to that forum. However,
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`Micro Motion does not identify those engineers or any witnesses residing in Colorado with
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`particularity. Invensys, on the other hand, identifies with particularity potential witnesses
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`located in Texas, some of whom are located in this District. Neither venue is clearly more
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`accessible for a greater number of willing witnesses. Therefore, this factor is neutral.
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`4.
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`Other Practical Problems
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`Practical problems include those that are rationally based on judicial economy.
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`Particularly, the existence of duplicative suits involving the same or similar issues may create
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`practical difficulties that will weigh heavily in favor or against transfer. In re Volkswagen of
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`Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“In re Volkswagen III”). Neither party
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`specifically addressed this factor. Thus, it is neutral in the analysis.
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 9 of 11 PageID #: 1900
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`C.
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`Public Factors
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`1.
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`The Administrative Difficulties Flowing from Court Congestion
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`The speed with which a case can come to trial and be resolved is a factor in the transfer
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`analysis. In re Genentech, 566 F.3d at 1347. This factor appears to be the most speculative, and
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`this factor alone should not outweigh other factors. Id.
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`Micro Motion argues that this factor favors transfer because the District of Colorado
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`resolves cases of all types more quickly than this District.1 Doc. No. 14 at 13. Invensys
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`responds that this District advances patent cases to trial more quickly than the District of
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`Colorado.2 Doc. No. 26 at 9. Invensys concedes, however, that the District of Colorado resolves
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`patent cases more quickly than this District.3 Id.
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`The District of Colorado resolves patent cases faster than this District. However, this
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`District advances cases to trial faster than the District of Colorado. Neither venue clearly has
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`fewer administrative difficulties flowing from court congestion. Therefore, this factor is neutral.
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`2.
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`The Local Interest in Having Localized Interests Decided at Home
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`The Fifth Circuit has explained that “[j]ury duty is a burden that ought not to be imposed
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`upon the people of a community which has no relation to the litigation.” In re Volkswagen I, 371
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`F.3d at 206. This factor analyzes the “factual connection” that a case has with both the
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`transferee and transferor venues. See id. Generally, local interests that “could apply virtually to
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`any judicial district or division in the United States” are disregarded in favor of particularized
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`local interests. In re Volkswagen II, 545 F.3d at 318 (in a products liability suit, disregarding
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`1 Median times to resolution are 5.7 months in the District of Colorado and 8.6 months in this District. Doc. No. 14
`at 13.
`2 Average times to trial in patent cases are 2.1 years in this District and 3.2 years in the District of Colorado. Doc.
`No. 26 at 9.
`3 Average times to resolution in patent cases are 11 months in the District of Colorado and 15 months in this
`District. Doc. No. 14 at 13.
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 10 of 11 PageID #: 1901
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`local interest of citizens who used the widely-sold product within the transferor venue); In re TS
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`Tech, 551 F.3d at 1321. Thus, when products are sold throughout the United States, citizens of a
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`venue do not have a particularized interest in deciding the dispute simply based on product sales
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`within the venue. In re Nintendo, 589 F.3d at 1198.
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`Micro Motion argues that this factor favors transfer because the District of Colorado has
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`a greater local interest in resolving this case than does this District. Doc. No. 14 at 11. Micro
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`Motion notes that it is headquartered in Colorado, which is where the accused products were
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`designed and developed and where the great majority of its employees and facilities involved
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`with the accused products are located. Id. at 12. It emphasizes that, in contrast, the patents-in-
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`suit were designed and developed outside of this District. Id. Micro Motion further asserts that
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`it sells the accused products nationwide, rather than concentrating sales in this District. Id.
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`Invensys responds that Micro Motion and Emerson have ties to this District because the
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`oil and natural gas industries, which utilize the accused Coriolis flowmeters, are concentrated in
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`this District. Doc. No. 26 at 4–7. It asserts that Emerson has direct contact with this District
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`because it has opened a service center in Beaumont. Id. at 7–8. Invensys also argues that it also
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`has ties to this District because it has a sixty-employee office in Plano, it is headquartered in
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`Houston, and it sells twenty percent of its Coriolis flowmeters in Texas. Id. at 2, 8.
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`Micro Motion has strong ties to the District of Colorado and very few ties to this District.
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`However, Emerson and Invensys have ties to this District and very few ties to the District of
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`Colorado. Though Emerson’s headquarters are in Missouri, it has a service center in this
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`District. Id. at 7–8. Additionally, Invensys has a sixty-employee office in Plano. Id. at 2. The
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`Court presumes that this office is relevant to this case because Micro Motion, which carries the
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`burden to show that transfer would be clearly more convenient, does not assert that it is not. See
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`Case 6:12-cv-00799-JRG Document 75 Filed 09/30/13 Page 11 of 11 PageID #: 1902
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`In re Volkswagen II, 545 F.3d at 315; In re Nintendo, 589 F.3d at 1200; In re TS Tech, 551 F.3d
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`at 1319. Because one party has strong ties to the District of Colorado and two parties have some
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`ties to this District, neither venue has a greater interest in having localized issues decided at
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`home. Therefore, this factor is neutral.
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`3.
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`Remaining Public Factors
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`The remaining two public factors, familiarity of forum with governing law and conflicts
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`of law, are not addressed by the parties. Accordingly, these factors are neutral in the analysis.
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`CONCLUSION
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`Defendants have not shown that it is clearly more convenient for the parties and
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`witnesses to transfer the instant case to the District of Colorado. Here, the availability of
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`compulsory process to secure the attendance of witnesses weighs slightly against transfer, while
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`all the other factors are neutral.
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`Accordingly, Defendant Micro Motion’s Motion to Transfer Venue to the District of
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`Colorado (Doc. No. 14) is DENIED. Because the Motion to Transfer Venue is resolved, the
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`Motion to Stay (Doc. No. 36) is DENIED AS MOOT.
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`11
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`__________________________________
`LEONARD DAVIS
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 30th day of September, 2013.