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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

STA GROUP LLC,

 Plaintiff,

v.

MOTOROLA SOLUTIONS, INC.,

 Defendant.

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CIVIL ACTION NO. 2:23-CV-00030-JRG-RSP

 

REPORT AND RECOMMENDATION

Before the Court is STA Group LLC’s Partial Motion to Dismiss Motorola Solutions, Inc.’s 

Counterclaims for Duplicative Claims and for Failure to State a Claim. Dkt. No. 52. In the motion, 

STA argues that Motorola’s counterclaims should be dismissed as duplicative of those brought in 

2:22-cv-0381 and for failing to state a claim. For the following reasons, the Motion should be

GRANTED.

I. BACKGROUND

STA’s complaint alleges that Motorola infringes U.S. Patent Nos. 8,014,324 (the “’324 

Patent”), 8,145,249 (the “’249 Patent”), 9,049,737 (the “’737 Patent”), and 9,319,852 (the “’852 

Patent”). Motorola’s counterclaims that STA engaged in a conspiracy with former Motorola 

employees to misappropriate trade secrets relating to the same products STA accuses of infringing its 

patents. (Opp. at 1.)

II. LEGAL STANDARD

Under Federal Rule of Civil Procedure 12(b)(6), a court can dismiss a complaint that fails to 

state a claim upon which relief can be granted. To survive dismissal at this early stage, a complaint

must state enough facts such that the claim to relief is plausible on its face. Thompson v. City of 

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Waco, 764 F.3d 500, 502 (5th Cir. 2014) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 

(2007)). A claim is facially plausible when the plaintiff pleads enough facts to allow the Court to

draw a reasonable inference that the defendant is liable for the misconduct alleged. Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009). The Court accepts well-pleaded facts as true and views all facts in the

light most favorable to the plaintiff but is not required to accept the plaintiff’s legal conclusions as 

true. Id.

The Court must limit its review “to the contents of the pleadings.” Collins v. Morgan Stanley 

Dean Witter, 224 F.3d 496, 498–99 (5th Cir. 2000). However, documents attached to a defendant’s 

motion to dismiss may be considered a part of the pleadings if they are referred to in the complaint 

and are central to the claim. Id.

III. ANALYSIS

STA argues that Motorola’s counterclaims should be dismissed in this case as they are duplicative of 

those in the pending 2:22-cv-00381 case. (Mot. at 3-4.) STA contends the prosecution of duplicative cases is 

disfavored and should be dismissed as inefficient use of judicial resources. (Id.) STA further argues that 

Motorola’s assertion of identical counterclaims in this case is gamesmanship to get around its late filing of the 

same claims in the -381 case. (Id. at 5.) STA argues this too counsels in favor of dismissal. (Id.)

Motorola contends that because its counterclaims are so intertwined in both cases as to be mandatory 

counterclaims the Court should not dismiss them as duplicative. (Opp. at 4.) Motorola further contends that the 

cases cited by STA are not applicable here where counterclaims are brought in two actions. (Id. at 5.) Motorola 

further contends that it will avoid unnecessary use of judicial resources by the parties’ cross-use agreement and 

coordination of motion practice. (Id. at 5-6.) Motorola further provides that it does not expect to pursue its 

identical claims in two trials, but as there is no way to know which case will reach trial first its claims should not 

be dismissed. (Id.)

The Court agrees with STA, Motorola is not entitled to maintain duplicative claims in multiple actions. 

The Court is not convinced that the nature of Motorola’s claims as counterclaims alters this conclusion nor do its 

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assurances to the Court that it will coordinate between the two cases. These do not address the fundamental rule 

that a party is only entitled to raise its cause of action in a single case. While the question remains open as to how 

the two actions will develop as they approach trial and what consolidation may later be appropriate, this also does 

not militate in favor of allowing Motorola to maintain identical claims in multiple actions before this Court. 

IV. CONCLUSION

For the reasons above, IT IS RECOMMENDED that the Motion to Dismiss in this second-filed 

action (Dkt. No. 52) be GRANTED.

A party’s failure to file written objections to the findings, conclusions, and recommendations 

contained in this report within 14 days bars that party from de novo review by the District Judge of

those findings, conclusions, and recommendations and, except on grounds of plain error, from

appellate review of unobjected-to factual findings and legal conclusions accepted and adopted by the 

district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto. Ass’n, 79 F.3d 1415, 1430 

(5th Cir. 1996) (en banc). Any objection to this Report and Recommendation must be filed in ECF 

under the event “Objection to Report and Recommendations [cv, respoth]” or it may not be 

considered by the District Judge.

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