Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 1 of 12 PageID #: 54
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
`
`Plaintiffs,
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`v.
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`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`
`
`
`
`
`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`Civil Action No. 6:15-CV-907-JRG-KNM
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`
`
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`MOTION OF EMERSON ELECTRIC CO.,
`FISHER-ROSEMOUNT SYSTEMS, INC. AND
`ROSEMOUNT INC. TO DISMISS OR TRANSFER THIS ACTION
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`Emerson Electric Co., Fisher-Rosemount Systems, Inc., and Rosemount Inc. (collectively
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`“Emerson” or the “Emerson defendants”) respectfully request that this Court dismiss the patent
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`infringement claims filed by SIPCO LLC and IP CO., LLC (collectively “SIPCO” or the “SIPCO
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`plaintiffs”) in this second-filed action or transfer SIPCO’s claims to the Northern District of
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`Georgia for consolidation with Emerson’s first-filed action pursuant to the First-to-File Rule. In
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`the alternative, if the Court does not grant this requested relief, Emerson respectfully requests
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`that this Court transfer this case to the Northern District of Georgia pursuant to 28 U.S.C. §
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`1404(a).
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`I.
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`
`
`BACKGROUND
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`The present motion is brought in response to SIPCO’s effort to challenge the venue of the
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`first-filed action by filing a second complaint involving the same parties, the same accused
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`products, the same named inventors, and patents from the same two patent families in a later
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`-1-
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`

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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 2 of 12 PageID #: 55
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`action filed in a second jurisdiction. In the instant case, IP CO, LLC asserts 4 patents, all entitled
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`“Wireless Network System and Method for Providing Same.” All four of these patents identify
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`the same two inventors, Edwin Brownrigg and Thomas Wilson, and all four derive from a
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`common patent application that matured into United States Patent No. 6,044,062 (“the ‘062
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`patent”). Given this common ancestry, these 5 patents are considered to be part of the same
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`patent family. Critically, the ‘062 patent is at issue in the first-filed action now pending in the
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`Northern District of Georgia and SIPCO has accused Emerson of infringing the ‘062 patent in
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`that action.
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`In the instant case, SIPCO LLC asserts 6 patents, five of which share the common title,
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`“System and Method for Monitoring and Controlling Remote Devices.”1 Each of these patents
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`identifies a common inventor, T. David Petite, and all six patents claim priority to a common
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`patent application. That application, Serial No. 60/059,643, never matured into an issued patent,
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`but it provides the common ancestry for all six of the patents SIPCO LLC asserts in this action as
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`well as United States Patent No. 7,103,511 (“the ‘511 patent). Like the ‘062 patent, the ‘511
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`patent is the second of the two patents at issue in the first-filed action pending in Georgia and
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`SIPCO has asserted an infringement counterclaim in that action.
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`In short, the dispute as to both patent families has been already joined in the first-filed
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`action in Georgia. Although only the ‘062 and ‘511 were placed at issued by the Complaint filed
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`with the Georgia court, SIPCO was free to counterclaim as to any of the other patents in either
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`patent family, or to assert unrelated patents. SIPCO did not do so. Instead, SIPCO limited the
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`Answer and Counterclaims filed in Georgia to just the two patents Emerson put at issue in
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`1 The sixth patent, U.S. Patent No. 8,908,842, is directed to the same technology but is entitled
`“Multi-Functional General Purpose Transceivers and Devices.”
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`-2-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 3 of 12 PageID #: 56
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`Georgia. On October 16, 2015, almost 10 months after the Georgia Complaint was filed, SIPCO
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`attempts a venue change by filing a second action, this one in this District, asserting ten patents
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`drawn from the same two patent families already at issue in the Georgia action.
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`The dispute between the instant parties over the two patent families has even more
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`history. SIPCO had initially written to Emerson on January 31, 2007, to invite Emerson to
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`review their products in view of the ‘062 and ‘511 patents and two other patents, another from
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`each the two patent families at issue in this action. On February 16, 2007, Emerson asked
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`SIPCO to identify the products and claims of those patents at issue. SIPCO did not respond to
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`that letter for more than six years. On February 27, 2013, SIPCO again wrote regarding patents
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`from these two patent families. Ultimately, following discussion, SIPCO identified one claim
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`from eight patents from these two patent families as being relevant to Emerson’ Smart Wireless
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`products.
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`On July 31, 2013, Emerson filed a Complaint for Declaratory Judgment asserting, among
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`other things, the invalidity and non-infringement of each of these eight patent claims. See
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`Exhibit A (“Original Georgia Complaint”). In an effort to streamline that action, Emerson
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`dismissed the original Georgia action without prejudice and filed a replacement action on
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`January 30, 2015, narrowing the challenged patents to just one representative patent from each
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`patent family, the ‘062 patent from the IP CO LLC patent family, and the ‘511 patent from the
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`SIPCO LLC patent family. See Exhibit B (“Replacement Georgia Complaint”). The SIPCO
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`plaintiffs in this action answered the Replacement Georgia Complaint on July 27, 2015, but
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`limited their Georgia pleadings to just the ‘062 and ‘511 representative patents, but expanding
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`the claims asserted beyond the two previously discussed by the parties and included in the
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`Replacement Complaint. See Exhibit C, ¶¶ 35, 48 (Georgia Answer and Counterclaims). On
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`-3-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 4 of 12 PageID #: 57
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`August 28, 2015, the Georgia court entered a Scheduling Order, see Exhibit D (Scheduling
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`Order), and discovery in that case is active and on-going.
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`II.
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`LEGAL BACKGROUND
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`
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`
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`A.
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`The First-to-File Rule
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`“When the declaratory action can resolve the various legal relations in dispute and afford
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`relief from the controversy that gave rise to the proceeding, and absent a sound reason for a
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`change of forum, a first-filed declaratory action is entitled to precedence as against a later-filed
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`patent infringement action.” Genetech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 938 (Fed. Cir.
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`1993) (application of First-to-File Rule governed by Federal Circuit law in patent cases); see also
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`Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012 (‘[t]he ‘first –to-file’ rule
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`…generally favors pursuing only the first filed action”). Courts typically enforce the First-to-
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`File Rule “absent sound reason for a change of forum.” Genetech, 998 F.3d at 938; see also
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`Elecs. For Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005).
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`
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`The Fifth Circuit has also long recognized the first-filed rule. Cadle Co. v. Whataburger
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`of Alice, Inc., 174 F.3d 599, 606 (5th Cir. 1999). “In determining whether to apply the first-to-
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`file rule to an action, a court must resolve two questions: 1) are the two pending actions so
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`duplicative or involve substantially similar issues that one court should decide the subject matter
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`of both actions; and 2) which of the two courts should take the case?” Texas Instruments, Inc. v.
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`Micron Semiconductor, Inc., 815 F. Supp. 994, 997 (E.D. Tex. 1993). The primary concern is
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`“to avoid the waste of duplication, to avoid rulings which may trench upon the authority of sister
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`courts, and to avoid piecemeal resolution of issues that call for a uniform result.” West Gulf
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`Maritime Ass’n v. ILA Deep Sea Local 24, 751 F.2d 721, 729 (5th Cir. 1985); see also Mosaid
`
`Techs. Inc. v. Micron Tech, Inc., Case No. 2:06-cv-00302-DF, Doc. No. 405 at 3 (E.D. Tex. July
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`-4-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 5 of 12 PageID #: 58
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`2, 2008) (copy attached as Exhibit E). The First-to-File Rule was created to dissuade parties
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`from filing retaliatory lawsuits in a different district after being sued. West Gulf, 751 F.2d at
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`729-30. The key question is whether there is a likelihood that the second-filed action might
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`substantially overlap with the first action. Sutter Corp. v. P&P Indus., Inc., 125 F.3d 914, 920
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`(5th Cir. 1997); see also RPost Holding, Inc. v. Trend Micro Inc., Case No. 2:13-cv-01065-JRG,
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`Doc. No. 29 at 2-3 (E.D. Tex. May 16, 2014) (citing Texas Instruments and Cadle) (copy
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`attached as Exhibit F). Once the likelihood of substantial overlap has been demonstrated, “the
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`first-to-file rule gives the first-filed court the responsibility to determine which case should
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`proceed.” RPost Holdings at 2 (citing Texas Instruments at 999) (emphasis in original).
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`
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`B. Motions to Transfer Pursuant to Section 1404(a)
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`A district court “may transfer any civil action to any other district where it might have
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`been brought…for the convenience of the parties and witnesses” or “in the interest of justice.”
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`28 U.S.C. § 1404(a). Courts evaluate multiple factors to determine whether a venue change
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`would be more convenient for parties and witnesses or serve the interest of justice. 28 U.S.C. §
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`1404(a); In re Volkswagon AG, 371 F.3d 201, 203 (5th Cir. 2004); Mediatek, Inc. v. Sanyo
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`Elecric Co. LTD, 2006 WL 463871 (E.D. Tex. 2006). The private factors include: (1) the
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`relative ease of access of proof; (2) the availability of the compulsory process to secure witness
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`attendance; (3) the willing witnesses’ cost of attendance; and (4) all other practical
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`considerations that make a trial easy, expeditious, and inexpensive. In re Volkswagon AG, 371
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`F.3d at 203. The public factors include: (1) the administrative difficulties flowing from court
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`congestion; (2) the local interest in having local issues decided at home; (3) the forum’s
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`familiarity with the governing law; and (4) the avoidance of unnecessary conflict of law
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`problems involving foreign law’s application. Id.
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`-5-
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`III. ARGUMENT
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`
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`A.
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`This Court Should Dismiss or Transfer Plaintiff’s Claims Pursuant to The
`First-to-File Rule
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`There is no question Emerson was the first to file. Emerson filed its declaratory
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`judgment complaint in the Northern District of Georgia. SIPCO cannot even contest the point –
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`Emerson’s Original Complaint in Georgia dates back to July 31, 2013 and even the Replacement
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`Georgia Complaint was filed January 30, 2015, over 9 months before SIPCO filed its complaint
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`in this District. This is all courts have required to apply the First-to-File Rule.
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`The requested dismissal or transfer of this action is necessary to remedy SIPCO’s
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`improper effort to change venue and to compound the dispute by filing a second action involving
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`the same parties, the same accused products and the same two patent families in a different
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`jurisdiction. As the result of SIPCO’s actions, two nearly identical proceedings are currently
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`pending in two different courts. Because the patents from each of the two patent families at issue
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`in the two competing actions share common prosecution histories, the same prosecution files and
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`prior art will be at issue in both cases. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
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`1350 (Fed. Cir. 2004). Similarly, claim terms that are common to different patents should be
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`construed consistently to ensure uniformity and by the same court to promote efficiency. Id.; see
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`also Fin Control Systems Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001) (same).
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`In addition, the same products, witnesses and evidence will be at issue in both cases.
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`Because Emerson’s complaint in the Northern District of Georgia was filed almost 9
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`months before SIPCO’s second-filed action in this district and because there is substantial
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`overlap between the two actions, Emerson respectfully asks the Court to dismiss or transfer this
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`action. See Micron Tech. Inc., 518 F.3d at 904 (“The general rule favors the forum of the first-
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`filed action.”); Amberwave System Corp. v. Intel Systems Corp., 2005 WL 2861476 at *1-2 (E.D.
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`-6-
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`Tex. 2005) (transferring second filed action even though first-filed action involved a different,
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`but closely related patent); see also Good Tech. Corp. v. MobileIron, Inc., 2015 WL 1458091 at
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`*8 (D. Del. 2015 (transferring action to district where patents from the same patent families were
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`already at issue). As the Amberwave Court found, “[s]ubstantial overlap does not require that the
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`core issues be identical, but that the two actions will involve closely related questions or subject
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`matter.” Amberwave at *2; see also Sutter Corp., 125 F.3d at 920; RPost Holding, at *2-3.
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`The parties to the two actions are identical and the patents in both actions are
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`substantially similar. SIPCO, plaintiffs here and counterclaim plaintiffs in the first-filed Georgia
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`action, chose to assert different patents from the same two patent families in order to create an
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`illusory basis to justify forum shopping this dispute. But such tactics are insufficient to create an
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`exception to the First-to-File Rule. Micron Tec., Inc., 518 F.3d at 903 (reversing district court’s
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`decision to transfer to the second-filed court, noting that if a patent holder could artificially
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`broaden an infringement suit by naming additional defendants or patents to the later filed action,
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`“the Supreme Court’s more lenient standard for the declaratory judgment plaintiff would lose its
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`primary intended effect”). The patents asserted in this action and those already at issue in
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`Georgia are all directed to the same technology, routing of data within a wireless network.
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`The patents are so related that many of the same claim elements are present in multiple
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`patents. For example, claim 2 of the ‘062 patent (at issue in the Georgia action) requires both a
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`“server controller and a server radio modem” and “a plurality of clients each including a client
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`controller and a client radio modem” wherein each of “said clients initiates and selects a radio
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`transmission path...” See Exh. G, col. 23, lines 32-50. Those same limitations are found in,
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`among others, claim 1 of the United States Patent No. 8,233,471 (“the ‘471 patent,” asserted in
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`the instant action). See Exh. H, col. 22, line 60 – col. 23, line 9. Like claim 2 of the ‘062 patent,
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`-7-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 8 of 12 PageID #: 61
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`claim 1 of the ‘471 patent requires “a server including a server controller and server radio
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`modem,” “a plurality of clients each including a client controller and a client radio modem,”
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`wherein “each of said clients initiates and selects a radio transmission path…” The emphasis
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`may vary from patent to patent and from claim to claim, but the claims at issue in both
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`proceedings are directed to routing within a wireless network and share the same basic structure
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`– a server that can serve as a gateway to another network and a number of clients wirelessly
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`connected with each other and the server.
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`Similarly, the patents in the SIPCO patent family also have a substantial overlap. For
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`example, claim 1 of the ‘511 patent (at issue in the Georgia action) recites a “plurality of wireless
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`transceivers,” where a first transceivers transmits a signal having a “sensor data signal” and its
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`“corresponding unique identifier” to a second transceiver that re-transmits the signals from the
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`first transceiver to a “site controller” that further transmits the signals to a “wide area network”
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`for delivery to a “host computer.” See Exh. I, col. 23, lines 21-46. This general arrangement and
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`transmission of signals is also recited in claim 1 of the ‘692 patent at issue in this action. Claim
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`1 of the ‘692 patent recites “a plurality of [RF] transceivers” that receive “select information”
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`(corresponding to the “sensor data signal” of claim 1 of the ‘511 patent) and “transmitter
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`identification information” from a first transmitter. Each of the transceivers further transmits the
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`“select information” the “transmitter identification information,” and the “transceiver
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`identification information” to a “gateway” (referred to as the “site controller” in claim 1 of the
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`‘511 patent). The “gateway” transmits the “select information, the transmitter identification
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`information, and transceiver identification information” “to the computer over the WAN” (i.e.,
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`the wide area network). See Exh. J, col. 18, lines 44-57.
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`-8-
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`The overlap between the issues presented by this action and those already pending in the
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`first-filed action is both extensive and undeniable. Under these facts, the holdings in Micron
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`Tech, RPost Holdings, and Amberwave are particularly instructive.
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`In Micron Tech, the accused infringer had filed a declaratory judgment action in
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`California. MOSAID, the patent owner, then filed an infringement complaint in the Eastern
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`District of Texas asserting infringement of the same patents at issue in California and two others.
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`The California court transferred first-filed the case to Texas. The Federal Circuit, however, ruled
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`that the California court erred because the California action was the first-filed and the additional
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`patents in the second-filed action were substantially similar. Micron Tech., 518 F.3d at 903.
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`Following the Federal Circuit opinion and remand, Judge Folsom transferred the case back to
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`California. MOSAID Tech. Inc. v. Micron Tech., Inc., Case No. 2:06-cv-00302-DF, Doc. No.
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`405 (E.D. Tex. July 2, 2008). The same result was reached in RPost Holdings.
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`In Amberwave, the two patents were not even from the same patent family and were
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`directed to different scientific aspects of semiconductor transistors. More specifically, the
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`Amberwave court found that the first patent taught a method of using transistors to construct
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`inverters while the second patent taught a method of minimizing impurities while fabricating
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`transistors. Id. at *1. The Amberwave court nevertheless found the overlap to be substantial
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`enough to warrant transfer to the first-filed district. Because the patents asserted in this action
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`are members of the same patent families as the patents at issue in Georgia, the same products are
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`accused of infringement in both actions, and the overlap between the patents asserted in these
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`two jurisdiction is even more closely related that those at issue in Amberwave, this action should
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`be dismissed or transferred to the Northern District of Georgia under the First-to-File Rule.
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`-9-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 10 of 12 PageID #: 63
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`B.
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`The Section 1404(a) Transfer Factors Also Favor Transfer to the Northern
`District of Georgia
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`Because the requested relief is appropriate under the First-to-File Rule, the Court need
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`
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`not reach the Section 1404(a) transfer analysis. Even if the Court considers the 1404(a) factors,
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`it should order transfer to the Northern District of Georgia. As revealed in the instant complaint,
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`not one party is incorporated in Texas. See Doc. 1, ¶¶ 1 - 5. Defendant Emerson Electric is a
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`Missouri corporation headquartered in St. Louis. Defendant Rosemount is Minnesota
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`corporation headquartered in Minnesota. Defendant Fisher-Rosemount is a Delaware
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`corporation. Id. SIPCO LLC and IP CO, LLC are both Georgia corporations and share offices
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`in Atlanta Georgia. Id. Thus, this is not a venue challenge in which Emerson is trying to move
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`the dispute to a local court, Emerson brought the first-filed case in SIPCO’s home court, the
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`same court SIPCO has resorted to on multiple prior occasions to assert one or more of the patents
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`asserted in this action. The Emerson defendants voluntarily subjected themselves to the Georgia
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`court’s jurisdiction by filing a complaint against SIPCO and IPCO in Georgia.
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`
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`To the extent that witness convenience is a factor, Georgia is probably the most
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`convenient – certainly for SIPCO. Both SIPCO entities are Georgia corporations headquartered
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`in Atlanta. SIPCO’s employees, including the named inventor on at least the SIPCO family of
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`patents, Mr. Petite, resides and works in the Atlanta area. More importantly, because the goal is
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`to render trial easy, expeditious or inexpensive and to conserve judicial resources, transfer to the
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`Northern District of Georgia would enable one court to address all of the patents in these two
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`patent families. Accordingly, transfer of this action to the Northern District of Georgia is also
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`appropriate under § 1404(a). Good Tech. Corp. v. Mobilelron, Inc., 2015 WL 1458091 at *8
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`(transferring second-filed action involving patents from the same patent families as the patents at
`
`-10-
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`issue in an earlier-filed action where there was “a significant amount of uniformity among the
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`accused products in both cases”).
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`IV. CONCLUSION
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`For the foregoing reasons, Emerson respectfully request that this Court dismiss this
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`action or transfer it to the Northern District of Georgia for consolidation with the first-filed
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`action.
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`Dated: December 10, 2015
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`
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`Respectfully submitted,
`
`__/s/_Melissa R. Smith
`Melissa R. Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`
`Attorneys for Defendants Emerson Electric
`Co., Fisher-Rosemount Systems, Inc., and
`Rosemount Inc.
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`-11-
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`Case 6:15-cv-00907-RWS-KNM Document 10 Filed 12/10/15 Page 12 of 12 PageID #: 65
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 10th day of December, 2015, a true and
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`correct copy of the foregoing document has been served via the Court’s ECF system to all
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`counsel of record.
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`/s/ Melissa R. Smith______________
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`
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`Pursuant to L.R. CV-7(i), the undersigned hereby certifies that counsel for Defendants
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`met and conferred on December 10, 2015 and have complied with L.R. CV- 7(h). Plaintiff
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`opposes the motion to dismiss or transfer, conclusively leaving the parties at an impasse, and an
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`open issue for the Court to resolve.
`
`/s/ Melissa Smith
`Melissa Smith
`
`
`-12-
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`