No. 00 C7199 Page 3

and, in the interest of justice, we transfer the case to the district of Delaware. The court there
can, obviously, lift that stay ifit believes those claims could have been prosecuted in Delaware.
That should not, however, be necessary, as Lasertron is already before that court and

Rockwell can raise the same claims as counterclaims.

JAMES B. MORAN
nior Judge, U. S. District Court

Qegick 4S”, 2002.


Crs orm (06/97)

United States District Court, Northern District of Illinois

(7

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge James B. Moran than Assigned Judge
CASE NUMBER 00 C 7199 DATE 4/15/2002
CASE Rockwell Technologies, LLC vs. Corning, Inc. et al.
TITLE
[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
Motion: of the motion being presented.}
Memorandum Opinion and Order
DOCKET ENTRY:
qd) Oo Filed motion of [ use listing in “Motion” box above.]
(2) a Brief in support of motion due
(3) Oo Answer brief to motion due. . Reply to answer brief due
(4) im Ruling/Hearing on set for at
(5) oO Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference[held/continued to] [set for/re-set for] on set for at
(7) Oo Trial[set for/re-set for] on at
(8) oO [Bench/Jury trial] [Hearing] held/continued to -at
(9) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OOFRCP4(m) OGeneral Rule 21 CFRCP4i(a)(1) COFRCP41(a)(2).
(10) Ml [Otherdocketentry} Enter Memorandum Opinion and Order. We stay the prosecution of the claims
against Lasertron in this case and, in the interest of justice, we transfer the case to the district of Delaware.
(1) gf [For further detail see order attached to the original minute order.]
No notices required, advised in open court,
No notices required. number of notices
Notices mailed by judge's staff. APR 1 6 200
Notified counsel by telephone. date docketed
wv | Docketing to mail notices.
Y | Mail AO 450 form. add WV,
Copy to judge/magistrate judge.
date mailed notice
courtroom
WAH deputy’s
inkial ete
TM“ UDatditinte tebeived mt
central Clerk's Office sailing deputy initials



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

ROCKWELL TECHNOLOGIES, LLC, )
)
Plaintiff, y
)
vs. ) No, 00€ 7199
)
CORNING, INC. and CORNING ) DOCKETED
LASERTRON, INC., ) ApR
) 16 2002
Defendants. )

MEMORANDUM OPINION AND ORDER

Plaintiff Rockwell Technologies, LLC (Rockwell) sues Corning, Inc. and Corning
Lasertron, Inc. for patent infringement. Corning Lasertron, Inc. (Lasertron) now moves to
dismiss and Corning, Inc. (Corning) moves to transfer the case to the District of Delaware
pursuant to 28 U.S.C, §1404(a).

Lasertron is a wholly-owned subsidiary of Corning. It concedes that it purchased
epiwafers from IQE (Europe), Ltd. (QE). Plaintiff claims that the epiwafers were
manufactured by a process infringing its process patent. IQE has brought a declaratory
judgment against Rockwell in federal court in Delaware, attacking both the validity of the
patent and the claim of infringement. That case is scheduled for trial next January. Rockwell,
in turn, has, through its successor in interest, Rockwell Automation, Inc. (for convenience, also
Rockwell), sued nine other customers of IQE in Delaware for patent infringement. There is
also, apparently, another suit by Rockwell in Delaware against an IQE customer. It is
scheduled for trial in July 2002. Finally, Lasertron has filed a declaratory judgment action

against Rockwell in Delaware.


No, 00 C 7199 Page 2

The parties have engaged in extensive briefing, dealing with a number of issues.
Lasertron insists it is not subject to suit in Illinois, Rockwell disagrees. Corning argues that
it is but minimally involved and that, except possibly for some research, it is a customer and
it makes no sense to have this case proceed here when the suits involving the manufacturer and
the other customers are in Delaware. Rockwell contends that the suit cannot be transferred
there because Lasertron cannot be sued in Delaware and therefore that is not a place where
the suit might have been brought. Corning argues that it was the only defendant when the suit
was filed -- the suit as originally filed could have been filed in Delaware -- and that timing
controls. Rockwell complains that Corning wants to move this dispute to Delaware to create
attorney conflicts. Corning represents that it is willing to work out an agreement to waive any
conflicts,

Perhaps Lasertron cannot be sued here. Perhaps we cannot transfer the claims against
that defendant to Delaware. We do not believe, however, that the answers to those issues or
other issues raised by the parties control here, The simple fact is that the suit by Lasertron
against Rockwell remains pending in Delaware, although summons has not issued. That
means Rockwell can pursue its claims against Lasertron there. Indeed, they are compulsory
counterclaims, Lasertron has submitted to the jurisdiction of the Delaware district court. All
the ‘098 patent cases have been localized in Delaware except this case, and it would be a waste
of judicial resources (and the resources of the litigants as well) if what is essentially a customer
case were to proceed here when a more advanced case against the manufacturer and cases
against or by other customers, including Lasertron, and involving essentially the same issues,

were proceeding there. We stay the prosecution of the claims against Lasertron in this case