Solaia argues that application of a control point test here is “misguided” because it has

alleged infringement wholly inside the United States. In support of this contention, it cites a

Spanish-language publication Ductos, which states:

[t]he SCADA [supervisory control and data acquisition computer systems]

systems in the field control all the sub-systems. The field systems have direct

control of actives such as crude quality and transfer of custody and direct control

of the pumps and dynamic equipment.
Solaia contends that this publication establishes that there is infringing activity that
occurs inside the United States. Enbridge Energy Company, Inc. asserts that this
document constitutes double hearsay, and should not be considered. However, when
ruling on a motion to dismiss for lack of subject matter jurisdiction the court may
properly look beyond the jurisdictional allegations and view whatever evidence has been
submitted on the issue. Ezekiel v. Michel 66 F.3d 894 (7" Cir. 1995).

Solaia has alleged sufficient facts to indicate that an infringing act may be taking
place within the United States. Solaia has alleged that Enbridge Energy Company, Inc.
has used infringing programmable logic controllers wholly within the United States and
independent of any control point located in Canada. Thus, this case is distinguishable
from Freedom Wireless Inc. v. Boston Comm. Group Inc., 198 F. Supp.2d 11. That case
involved the transmission of cell phone calis from towers in Canada, then into the United
States, and then back into Canada. Jd. at 13-14, The allegedly infringing activity in the
United States could not be separated from the activity in Canada, for if no phone call was
initiated and transmitted to the towers in Canada, no infringing activity could take place
in the United States. Jd at 17-18. As a result, the court determined that the “control

point” for the infringing activity was located in Canada and granted a motion for

summary judgment of noninfringement. Jd. In contrast, in the instant case, infringing


Rather, it owns assets (a 99.999% limited partner interest in Enbridge Energy, L.P.), that
perform the activity, including operating the “Lakehead System.”

The activity of a partnership usually cannot be attributed to a limited partner owner of
that company for purposes of determining minimum contacts. IDS Life Ins. Co. v. SunAmerica
Life Ins. Co., 136 F.3d 537, $40 (7th Cir. 1998) (noting that parents of wholly owned
subsidiaries necessarily control, direct, and supervise subsidiaries, but parent is not subject to
jurisdiction unless there is basis for piercing the corporate veil); LaSalle Nat'l Bank v. Vitro,
Sociedad Anonima, 85 F. Supp. 2d 857, 864 (N.D. Ill. 2000). Therefore, the assets that Enbridge
Energy Partners, L.P. owns through its limited partner interest in Enbridge Energy L.P. cannot
be considered in the instant case. Because this ownership interest is the only contact established
by Solaia, it has failed to establish personal jurisdiction over Enbridge Energy Partners, LP.
Therefore, Enbridge Energy Partners, L.P. Motion to Dismiss for Lack of Personal Jurisdiction is
granted. Enbridge Energy Partners, L.P. is dismissed without prejudice. Because the Court
grants Enbridge Energy Partners’ Motion to Dismiss for Lack of Personal Jurisdiction, it does
not address Enbridge Energy Partners’ 12(b)(6) Motion to Dismiss for Failure to State a Claim.

3. Enbridge Energy Company, Inc.’s Motion to Dismiss for Lack of Subject Matter
Surisdiction.

Enbridge Energy Company, Inc. has alleged that this Court lacks subject matter
jurisdiction primarily because its alleged infringing activity occurs predominately in Canada. It
argues that because “[o]ur patent system makes no claim to extraterritorial effect,” its activities
in Canada are outside the reach of Solaia’s U.S. patent. In support of that contention, Enbridge
Energy Company, Inc. provides affidavit testimony, stating that the “Northern Pipeline is
controlled from the territory of Canada,” and argues that under a “control point test,” its alleged

infringement is extraterritorial.


activity allegedly takes place entirely within the United States. Although the control
point for the pipeline itself is indeed located in Canada (and is run by nonparty Enbridge
Pipelines, Inc.), Solaia has produced facts showing that Enbridge Energy Company, Inc.
infringes on its patents by using programmable logic controllers in valves in the pipeline
located in the United States and that some of the control computers for these controllers
are located within the United States. The infringement in this case is related to the
programmable logic controllers, not to the pipeline itself. Because some infringement is
taking place entirely within the United States, this Court has subject matter jurisdiction

pursuant to 28 U.S.C. § 1338(a) and Enbridge Energy Company Inc.’s motion is denied

with prejudice.
4. Solaia’s Motion to Enjoin Rockwell From Pursuing Collateral Proceeding
and For Other Relief

On December 10, 2002, Rockwell Automation, Inc. and Rockwell Software, Inc.
brought an action against Schneider Automation, Inc., Solaia Technology LLC and Niro,
Scavone, Haller & Niro Ltd. in the United States District Court for the Eastern District of
Wisconsin (“Milwaukee Action”). In the Milwaukee Action, plaintiffs allege violations
under the Sherman Antitrust Act, § 1, the Lanham Act, Unfair Competition, Conspiracy
to Injure Business, Tortious Interference with Advantageous Business Relationships, and
Tortious Interference with Contracts. Solaia has asked this Court to stay that proceeding,
arguing that a decision in this case will necessarily decide all issues to be decided in the
Milwaukee Action.

The plaintiffs in the Milwaukee Action have alleged causes of action that require

the determination of numerous issues not before this Court. The Milwaukee Action also


Minute Order Form (06/97)

United States District Court, Northern District of Dlinois

Name of Assigned Judge Ronald A, Guzman Sitting Judge if Other
or Magistrate Judge than Assigned Judge
CASE NUMBER 02 C 4704 DATE 9/29/2003
CASE Solaia Technology vs. Arvinmeritor Inc.,et al
TITLE

[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
of the motion being presented. ]

MOTION:

DOCKET ENTRY:

qd) QO Filed motion of [ use listing in “Motion” box above.]}

(2) Oo Brief in support of motion due

(3) o Answer brief to motion due___. Reply to answer brief due,

(4) oO Ruling/Hearingon___—setfor__—__at

(5) ia) Status hearing[held/continued to] [set for/re-set for]on__—set for___att

(6) oO Pretrial conference[held/continued to] [set for/re-set for]on__—setfor__—at__
7”) im Trial[set for/re-set for] on __at

(8) Qo [Bench/Jury trial] [Hearing] held/continued to___at

(9) a This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OFRCP4(m) CO Local Rule 41.1 OFRCP41(a)(1) OO FRCP41(a)(2).

ao) [Other docket entry) ENTER MEMORANDUM OPINION AND ORDER: Enbridge Inc’s motion
to dismiss for lack of personal jurisdiction is granted. Enbridge Inc. is hereby dismissed without prejudice.
Enbridge Energy Partners, L.P. motion to dismiss for lack of personal jurisdiction and failure to sate a claim is
granted for lack of personal jurisdiction. The motion for failure to state a claim is dismissed as moot. Enbridge
Energy Partners, L.P. is hereby dismissed without prejudice. Enbridge Energy Company’s motion to dismiss for
lack of subject matter jurisdiction is denied. Solaia’ s motion to enjoin Rockwell from collateral proceeding
for other relief is denied [203, 218-1].

(i) ff [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required.

number of notices

SEP 3.0 2003

dole dockeied

Notices mailed by judge’s staff.

Notified counsel by telephone.

wv | Docketing to mail notices.
Mail AO 450 form.

Copy to judge/magistrate judge.

date muiled notice
courtroom

TBK deputy's
initials

Date/time redeived'In ;
central Clerk's Office mailing deputy initials



includes several parties that are not before this Court. This is not a situation where a
defendant attempts to bring compulsory counterclaims in another venue, resulting in
duplicitous litigation. Indeed, Solaia has not brought an action against the plaintiffs in
the Milwaukee Action. The United States District Court for the Eastern District of
Wisconsin is in the best position to determine the course of its own case, so this Court
leaves that determination to its sound discretion. Therefore, Solaia’s Motion to Enjoin
Rockwell From Pursuing Collateral Proceeding and For Other Relief is denied.

CONCLUSION

For the foregoing reasons, this Court rules as follows. First, Enbridge Inc.’s Motion to
Dismiss for Lack of Personal Jurisdiction is granted. Enbridge Inc. is hereby dismissed without
prejudice. Second, Enbridge Energy Partners, L.P. Motion to Dismiss for Lack of Personal
Jurisdiction and Failure to State a Claim is granted for Lack of Personal Jurisdiction. The
Motion for Failure to State a Claim is dismissed as moot. Enbridge Energy Partners, L.P. is
hereby dismissed without prejudice. Third, Enbridge Energy Company’s Inc. motion to dismiss
for lack of subject matter jurisdiction is denied. Fourth, Solaia’s Motion to Enjoin Rockwell

From Collateral Proceeding and For Other Relief is denied. [## 203, 218-1].

SO ORDERED

United States Judge


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

DOCKETED

SOLAIA TECHNOLOGY LLC, SEP 30 2093

Plaintiff,
02 C 4704
ve.
Judge Ronald Guzman
ARVINMERITOR, INC.,

THE BOEING COMPANY,
CALLAWAY GOLF COMPANY,
CONOCO, INC.,

ENBRIDGE, INC.,

ENBRIDGE ENERGY COMPANY, INC.,
ENBRIDGE ENERGY PARTNERS, L.P.,
THE GILLETTE COMPANY,

SUN CHEMICAL CORPORATION, and
TYCO INTERNATIONAL (U.S.) INC.

Defendants.

Ne ee ewer

MEMORANDUM OPINION AND ORDER

Plaintiff Solaia Technology, LLC filed its complaint alleging infringement of Claims 11
and 12 of U.S. Patent No. 5,038,318 (“the ‘318 patent”) against the above named Defendants.
There are currently a number of motions before the court, including: (1) Enbridge Inc.’s Motion
to Dismiss for Lack of Personal Jurisdiction; (2) Enbridge Energy Partners, L.P. Motion to
Dismiss for Lack of Personal Jurisdiction and Failure to State a Claim; (3) Enbridge Energy
Company, Inc.’s Motion to Dismiss for Lack of Subject Matter Jurisdiction; and (4) Solaia’s
Motion to Enjoin Rockwell From Pursuing Collateral Proceeding and For Other Relief. The

Court will address each of these motions in turn.

400


FACTUAL BACKGROUND

On July 2, 2002, Plaintiff Solaia Technology L.L.C. filed suit against a number of
Defendants alleging infringement of Claims 11 and 12 of U.S. Patent No. 5,038,318. The United
States Patent and Trademark Office issued the '318 patent on August 6, 1991. The '318 patent
claims a particular type of PLC control system that moves messages directly between a
commercial spreadsheet on a PC and two or more PLC’s without using either the operating
system or any device drivers.

DISCUSSION
1 Enbridge Inc.’s Motion to Dismiss for Lack of Personal Jurisdiction

On November 14, 2002, Defendant Enbridge Inc. filed its motion to dismiss for lack of
personal jurisdiction. Plaintiff did not oppose this dismissal. This Court therefore grants
Enbridge Inc.’s Motion to Dismiss for Lack of Personal Jurisdiction, and dismisses Enbridge
Inc., without prejudice.

2. Enbridge Energy Partners, L.P. Motion to Dismiss for Lack of Personal Jurisdiction
and Failure to State a Claim

Defendant Enbridge Energy Partners, L.P., is a Delaware limited partnership publicly
traded on the New York Stock Exchange. Enbridge Energy Partners, L.P. does not own any
physical assets or conduct business in Illinois. However, a Prospectus produced by Enbridge
Energy Management, L.L.C., not a party in this case‘, states: “[Enbridge Energy Partners] owns
and operates crude oil and liquid petroleum transportation assets and natural gas gathering,
treating, processing, transmission and marketing assets in the United States.” Solaia has alleged
that this ownership and operation is sufficient to establish personal jurisdiction. However,
Enbridge Energy Partners, L.P. does not in and of itself perform the above-mentioned activity.

‘Because the Court grants Enbridge Energy Partner’s motion, it does not address the issue of whether this piece of
evidence is hearsay.