Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 1 of 5 PageID #: 751
`
`
`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),
`
`
`
` v.
`
`EMERSON ELECTRIC CO., EMERSON
`PROCESS MANAGEMENT LLLP, FISHER-
`ROSEMOUNT SYSTEMS, INC.,
`ROSEMOUNT INC., BP, p.l.c., BP
`AMERICA, INC., and BP AMERICA
`PRODUCTION COMPANY,
`
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`
`Plaintiffs,
`
`
`
`
`
`
` Civil Action No. 6:15-cv-907
`
`
`
`
`
`PLAINTIFFS’ MEMORANDUM IN OPPOSITION TO EMERSON DEFENDANTS’
`MOTION TO STAY THIS ACTION PENDING DISMISSAL OR TRANSFER
`
`Plaintiffs SIPCO, LLC and IP Co, LLC (d/b/a INTUS IQ) (collectively “Plaintiffs” or
`
`“SIPCO”) submit this Memorandum in Opposition to the Motion to Stay This Action Pending
`
`Dismissal or Transfer (“Motion to Stay”) filed by Emerson Electric Co., Fisher-Rosemount
`
`Systems, Inc., and Rosemount Inc. (collectively, “Defendants” or “Emerson”). For the reasons
`
`set forth below, and those set forth in Plaintiffs’ Memorandum in Opposition to Emerson
`
`Defendants’ Motion to Dismiss or Transfer This Action (“Opposition Brief”) (Doc. No. 24), this
`
`Court should deny Emerson’s Motion to Stay.
`
`I.
`
`INTRODUCTION
`
`Emerson seeks a stay for the sole purpose of further obstructing SIPCO’s right to seek
`
`redress for Emerson’s infringement of its patents. Emerson preemptively brought declaratory
`
`judgment claims on eight of SIPCO’s patents in the Northern District of Georgia in an attempt to
`
`usurp SIPCO’s right to choose a forum in which to pursue its infringement claims. See
`
`
`
`

`

`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 2 of 5 PageID #: 752
`
`
`Opposition Brief at 2. It then withdrew its complaint, and later re-filed—abandoning its claims
`
`on all but two of SIPCO’s patents, neither of which are at issue in this case. See id. Yet, when
`
`SIPCO brought suit on the patents Emerson withdrew and additional patents in this district,
`
`Emerson decided that it wanted to stop the suit by improperly claiming that the issues in both
`
`cases were practically identical—despite the different patents and patent claims in both cases.
`
`See id. at 2-3, 6-10. Granting this stay would serve no purpose other than to allow Emerson to
`
`further delay speedy resolution of SIPCO’s infringement claims on the patents at issue in this
`
`case because, as explained in detail below, a stay will prejudice SIPCO and will likely cause
`
`more inefficiencies than Emerson has already inserted into this case.
`
`II.
`
`LEGAL STANDARD AND ARGUMENT
`
`It is well within this Court’s authority to deny a stay pending resolution of a motion to
`
`transfer on first-to-file and 28 U.S.C. § 1404(a) grounds. See Datamize, Inc. v. Fidelity
`
`Brokerage Services, LLC, No. 2:03-cv-321-DF, 2004 WL 1683171, at *12 (E.D. Tex. Apr. 22,
`
`2004) (summarily denying a similar request for a stay pending resolution of a motion to transfer
`
`on first-to-file and 28 U.S.C. § 1404(a) grounds); Hr’g Tr.,1 Datamize, at 33:15-20 (dated Mar.
`
`11, 2004), ECF No. 87. Indeed, “the power to stay proceedings is incidental to the power
`
`inherent in every court to control the disposition of the causes on its docket with the economy of
`
`time and effort for itself, for counsel, and for its litigants.” Landis v. N. Am. Co., 299 U.S. 248,
`
`254 (1936). Management of the Court's docket requires “the exercise of judgment, which must
`
`weigh competing interests and maintain an even balance.” Id. at 254-55. A stay should be
`
`supported by “genuine necessity,” and “[g]enerally, the moving party bears a heavy burden to
`
`show why a stay should be granted absent statutory authorization, and a court should tailor its
`
`
`1 Attached hereto as Exhibit A.
`
`2
`
`

`

`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 3 of 5 PageID #: 753
`
`
`stay so as not to prejudice other litigants unduly.” Coastal (Bermuda) Ltd. v. E.W. Saybolt & Co.,
`
`Inc., 761 F.2d 198, 203 n.6 (5th Cir. 1985).2
`
`There is no “genuine necessity” for a stay pending resolution of Emerson’s motion
`
`because moving forward will not put the parties at risk of duplicating litigation efforts. Indeed, if
`
`the Court promptly resolves the Motion to Dismiss, there is no basis to order a stay. See Lone
`
`Star Steakhouse & Saloon, Inc. v. Adams, 169 F. Supp. 2d 1197, 1203 (D. Kan. 2001) (denying
`
`motion to stay discovery pending resolution of motion to dismiss or transfer while noting that
`
`defendant’s “motion assumes a delay in the court’s decision on the motion to dismiss”). Further,
`
`granting the stay would delay the inevitable discovery and claim construction that will take place
`
`for the patents at issue.
`
`SIPCO is asserting a significant number of patents—ten at the time Emerson’s motion
`
`was filed—that are not at issue in the Georgia action. As set forth in detail in SIPCO’s
`
`Opposition Brief, meaningful differences exist between the patents at issue here and the two
`
`patents at issue in Georgia: the patents do not all have the same limitations or claim the same
`
`subject matter or devices. See Opposition Brief at 8-10 & Exh. B.
`
`SIPCO will pursue its infringement claims on these patents whether this action proceeds
`
`or the case is transferred. Consequently, even if this case proceeds into discovery pending
`
`resolution of Emerson’s motion, the parties’ initial disclosures, other discovery, and claim
`
`construction in this proceeding can still be utilized. See Hr’g Tr., Datamize, ECF No. 87 (“In the
`
`meantime, everyone should go forward. Whatever work you do here, if I should not transfer it,
`
`
`2 Emerson cites Hernandez v. ASNI, Inc., No. 2:15-cv-00078-LDG-NJK, 2015 WL 3932415 (D. Nev. June 24,
`2015), as support for applying a three-factor test here. But the test cited is a test for “deciding whether to stay
`proceedings pending resolution of a request to transfer to an MDL,” which is a decision that will be made by an
`MDL Panel—not by the court entertaining the motion to stay. Id. at *1. Emerson has not cited any authority
`concerning what factors a court should consider when that court has complete control over the event terminating the
`stay—namely, the court’s own decision on the motion before it. In any event, on these facts, the three-factor test
`Emerson applies weighs heavily in favor of denying the stay for the reasons stated in the body of this memorandum.
`
`3
`
`

`

`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 4 of 5 PageID #: 754
`
`
`obviously will be needed here. If it is [transferred], I am sure it can be used in California.”).
`
`Thus, moving forward in this case will promote efficiency without unnecessarily delaying
`
`resolution of SIPCO’s infringement claims.
`
`In sum, the lack of any benefit to granting the stay does not outweigh the cost of
`
`needlessly stalling this proceeding and delaying SIPCO’s pursuit of its infringement claims. See
`
`Luv N' Care, Ltd. v. Jackel Int’l Ltd., No. 2:14-cv-00855-JRG, 2014 WL 5841501, at *3 (E.D.
`
`Tex. Nov. 10, 2014) (“This Court places emphasis on the speedy resolution of a party’s rights—
`
`including patent rights . . . .”). Simply, a stay will benefit no one but will prejudice SIPCO and
`
`cause more inefficiencies than it could possibly prevent. This Court should exercise its discretion
`
`to deny Emerson’s request for a stay.
`
`III. CONCLUSION
`
`For the foregoing reasons, SIPCO respectfully requests that this Court deny Emerson’s
`
`Motion to Stay.
`
`Dated: January 8, 2016
`
`
`
`
`
`
`
`
`
`
`
`/s/ Paul J. Cronin by permission Claire Abernathy
`Henry
`Paul J. Cronin, (MA Bar No. 641230)
`LEAD ATTORNEY
`James C. Hall (MA Bar No. 656019)
`Nutter, McClennen & Fish LLP
`155 Seaport Boulevard
`Boston, MA 02210-2604
`Telephone: (617) 439-2000
`Facsimile: (617) 310-9000
`Email: pcronin@nutter.com
`Email: jhall@nutter.com
`
`T. Johnny Ward, Bar No.
`Claire Henry, Bar No.
`Ward, Smith & Hill, PLLC
`1127 Judson Rd., Ste. 220
`Longview, Texas 75601
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`
`4
`
`

`

`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 5 of 5 PageID #: 755
`
`
`Email: jw@wsfirm.com
`Email: ch@wsfirm.com
`
`ATTORNEYS FOR PLAINTIFFS
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a copy of the foregoing document was filed electronically in
`
`compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who
`
`are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed.
`
`R. Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
`
`consented to electronic service were served with a true and correct copy of the foregoing by
`
`email on this the 8th day of January, 2016.
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Claire Abernathy Henry
`
`
`
`5
`
`