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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`SIPCO, LLC, and IP CO, LLC
`(d/b/a INTUS IQ),
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` v.
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`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,
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`Defendants.
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`Plaintiffs,
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` Civil Action No. 6:15-cv-907
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`PLAINTIFFS’ MEMORANDUM IN OPPOSITION TO EMERSON DEFENDANTS’
`MOTION TO STAY THIS ACTION PENDING DISMISSAL OR TRANSFER
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`Plaintiffs SIPCO, LLC and IP Co, LLC (d/b/a INTUS IQ) (collectively “Plaintiffs” or
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`“SIPCO”) submit this Memorandum in Opposition to the Motion to Stay This Action Pending
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`Dismissal or Transfer (“Motion to Stay”) filed by Emerson Electric Co., Fisher-Rosemount
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`Systems, Inc., and Rosemount Inc. (collectively, “Defendants” or “Emerson”). For the reasons
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`set forth below, and those set forth in Plaintiffs’ Memorandum in Opposition to Emerson
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`Defendants’ Motion to Dismiss or Transfer This Action (“Opposition Brief”) (Doc. No. 24), this
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`Court should deny Emerson’s Motion to Stay.
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`I.
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`INTRODUCTION
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`Emerson seeks a stay for the sole purpose of further obstructing SIPCO’s right to seek
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`redress for Emerson’s infringement of its patents. Emerson preemptively brought declaratory
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`judgment claims on eight of SIPCO’s patents in the Northern District of Georgia in an attempt to
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`usurp SIPCO’s right to choose a forum in which to pursue its infringement claims. See
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`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 2 of 5 PageID #: 752
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`Opposition Brief at 2. It then withdrew its complaint, and later re-filed—abandoning its claims
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`on all but two of SIPCO’s patents, neither of which are at issue in this case. See id. Yet, when
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`SIPCO brought suit on the patents Emerson withdrew and additional patents in this district,
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`Emerson decided that it wanted to stop the suit by improperly claiming that the issues in both
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`cases were practically identical—despite the different patents and patent claims in both cases.
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`See id. at 2-3, 6-10. Granting this stay would serve no purpose other than to allow Emerson to
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`further delay speedy resolution of SIPCO’s infringement claims on the patents at issue in this
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`case because, as explained in detail below, a stay will prejudice SIPCO and will likely cause
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`more inefficiencies than Emerson has already inserted into this case.
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`II.
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`LEGAL STANDARD AND ARGUMENT
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`It is well within this Court’s authority to deny a stay pending resolution of a motion to
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`transfer on first-to-file and 28 U.S.C. § 1404(a) grounds. See Datamize, Inc. v. Fidelity
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`Brokerage Services, LLC, No. 2:03-cv-321-DF, 2004 WL 1683171, at *12 (E.D. Tex. Apr. 22,
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`2004) (summarily denying a similar request for a stay pending resolution of a motion to transfer
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`on first-to-file and 28 U.S.C. § 1404(a) grounds); Hr’g Tr.,1 Datamize, at 33:15-20 (dated Mar.
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`11, 2004), ECF No. 87. Indeed, “the power to stay proceedings is incidental to the power
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`inherent in every court to control the disposition of the causes on its docket with the economy of
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`time and effort for itself, for counsel, and for its litigants.” Landis v. N. Am. Co., 299 U.S. 248,
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`254 (1936). Management of the Court's docket requires “the exercise of judgment, which must
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`weigh competing interests and maintain an even balance.” Id. at 254-55. A stay should be
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`supported by “genuine necessity,” and “[g]enerally, the moving party bears a heavy burden to
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`show why a stay should be granted absent statutory authorization, and a court should tailor its
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`1 Attached hereto as Exhibit A.
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`2
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`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 3 of 5 PageID #: 753
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`stay so as not to prejudice other litigants unduly.” Coastal (Bermuda) Ltd. v. E.W. Saybolt & Co.,
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`Inc., 761 F.2d 198, 203 n.6 (5th Cir. 1985).2
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`There is no “genuine necessity” for a stay pending resolution of Emerson’s motion
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`because moving forward will not put the parties at risk of duplicating litigation efforts. Indeed, if
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`the Court promptly resolves the Motion to Dismiss, there is no basis to order a stay. See Lone
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`Star Steakhouse & Saloon, Inc. v. Adams, 169 F. Supp. 2d 1197, 1203 (D. Kan. 2001) (denying
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`motion to stay discovery pending resolution of motion to dismiss or transfer while noting that
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`defendant’s “motion assumes a delay in the court’s decision on the motion to dismiss”). Further,
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`granting the stay would delay the inevitable discovery and claim construction that will take place
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`for the patents at issue.
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`SIPCO is asserting a significant number of patents—ten at the time Emerson’s motion
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`was filed—that are not at issue in the Georgia action. As set forth in detail in SIPCO’s
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`Opposition Brief, meaningful differences exist between the patents at issue here and the two
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`patents at issue in Georgia: the patents do not all have the same limitations or claim the same
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`subject matter or devices. See Opposition Brief at 8-10 & Exh. B.
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`SIPCO will pursue its infringement claims on these patents whether this action proceeds
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`or the case is transferred. Consequently, even if this case proceeds into discovery pending
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`resolution of Emerson’s motion, the parties’ initial disclosures, other discovery, and claim
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`construction in this proceeding can still be utilized. See Hr’g Tr., Datamize, ECF No. 87 (“In the
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`meantime, everyone should go forward. Whatever work you do here, if I should not transfer it,
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`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.
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`3
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`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 4 of 5 PageID #: 754
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`obviously will be needed here. If it is [transferred], I am sure it can be used in California.”).
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`Thus, moving forward in this case will promote efficiency without unnecessarily delaying
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`resolution of SIPCO’s infringement claims.
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`In sum, the lack of any benefit to granting the stay does not outweigh the cost of
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`needlessly stalling this proceeding and delaying SIPCO’s pursuit of its infringement claims. See
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`Luv N' Care, Ltd. v. Jackel Int’l Ltd., No. 2:14-cv-00855-JRG, 2014 WL 5841501, at *3 (E.D.
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`Tex. Nov. 10, 2014) (“This Court places emphasis on the speedy resolution of a party’s rights—
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`including patent rights . . . .”). Simply, a stay will benefit no one but will prejudice SIPCO and
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`cause more inefficiencies than it could possibly prevent. This Court should exercise its discretion
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`to deny Emerson’s request for a stay.
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`III. CONCLUSION
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`For the foregoing reasons, SIPCO respectfully requests that this Court deny Emerson’s
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`Motion to Stay.
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`Dated: January 8, 2016
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`/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
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`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
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`4
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`Case 6:15-cv-00907-RWS-KNM Document 25 Filed 01/08/16 Page 5 of 5 PageID #: 755
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`Email: jw@wsfirm.com
`Email: ch@wsfirm.com
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`ATTORNEYS FOR PLAINTIFFS
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Therefore, this document was served on all counsel who
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`are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed.
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`R. Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
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`consented to electronic service were served with a true and correct copy of the foregoing by
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`email on this the 8th day of January, 2016.
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`/s/ Claire Abernathy Henry
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`5
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