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TransCore, L.P. v. Mark IV Industries Corp.

October 15, 2009

TRANSCORE, L.P. PLAINTIFF,
v.
MARK IV INDUSTRIES CORP. DEFENDANT.



The opinion of the court was delivered by: Genee.k. Pratter, J.

MEMORANDUM

I. INTRODUCTION

The parties to this suit compete in the vehicle toll and tracking business, but the present feature of their dispute calls upon the Court's traffic control duties to unsnarl the litigation backup caused by their respective races to different courthouses along Interstate 95.

TransCore, L.P. ("TransCore") seeks a declaration of non-infringement regarding four patents held by Mark IV Industries Corporation ("Mark IV"). In addition, TransCore hopes to persuade the Court to preliminarily enjoin Mark IV from proceeding with a related, earlier-filed action in the District of Delaware regarding three of the four patents at issue here. Mark IV has filed a cross-motion to dismiss this case for improper venue, or in the alternative, to transfer this case to the District of Delaware. The Court held a status conference and oral argument on these motions. For the following reasons, the Court denies TransCore's motion, and grants in part and denies in part Mark IV's motion. This case will be transferred to the District of Delaware for that court's consideration of the coordination or consolidation of this case with the related, earlier-filed action already pending there.

II. STATEMENT OF RELEVANT FACTS

The parties appear to be in agreement about all of the relevant facts concerning the motions before the Court.

TransCore and Mark IV are competitors in the vehicle toll and tracking business. TransCore is a Delaware corporation with its principal place of business in Pennsylvania, and Mark IV is a Canadian corporation with its principal place of business in Ontario, Canada.

A. The Settlement Agreement

In 2001, TransCore and Mark IV settled two civil lawsuits and entered into a Settlement Agreement, which sets forth a procedure for resolving any further disputes between them. The relevant language in the Settlement Agreement is set forth in Section 23, which states:

The parties agree that before the commencement of any litigation arising from this Agreement or from any other dispute between the parties, the parties will first provide written notice to the other party, and use their best efforts to have the key executives of each party meet within thirty (30) days following notice to seek to resolve the dispute. If they are unable to meet or reach an agreement, then the parties will use their best efforts to submit the dispute to Antonio Piazza, Esq. before commencing suit. Only if Mr. Piazza declines to serve or is unable to resolve the dispute within thirty (30) days following notice will the parties commence litigation.

B. The May 20, 2009 Letter from Mark IV to TransCore

On May 20, 2009, Mark IV's President sent a letter to TransCore's President. In this letter, Mark IV stated that it hereby gives notice to TransCore that TransCore's recent introduction of its Encompass 6 IAG Plug n Play multi-protocol reader, e.g., as installed on The Southern Connector toll road in Greenville, SC (TransCore press release, March 31, 2009), infringes one or more of Mark IV's U.S. patents covering such technology.

This letter did not specify any patent or patent claims. It did, however, invoke and restate the terms of Section 23 regarding the procedure for resolving disputes. It concluded, "[p]lease let me know when the key executive(s) of TransCore are available to discuss this matter. I propose having a telephone conference within the next week to try and resolve this matter."

C. The May 21, 2009 Letter from TransCore to Mark IV

After receiving the May 20, 2009 letter from Mark IV, TransCore identified four patents that it believed relate to the subject matter of the brewing dispute. On May 21, 2009, counsel for TransCore sent a letter to Mark IV's President and counsel. TransCore's letter stated, in pertinent part, "for TransCore to meaningfully respond to your letter and participate in the dispute resolution provisions of Section 23 of the 2001 Settlement Agreement, please provide me as soon as possible the identify [sic] of the Mark IV patents and the specific claims of each that you allege TransCore is infringing."

D. The May 29, 2009 Letter from Mark IV to TransCore

On May 29, 2009, Mark IV sent a letter to TransCore, stating in pertinent part: With respect to your request regarding the Mark IV patents which are infringed by TransCore, it is Mark IV's position that at least U.S. Patent Nos. 5,164,732; 5,196, 846; and 6,219,613 are infringed by the manufacture, use, sale, or offer for sale by TransCore of Encompass(r) 4, 5 or 6 Readers, Encompass(r) IAG PNP Reader System, eZGo AnywhereTM Standard On-Board Units and all similar products.

Pursuant to Section 23, of the 2001 Mark IV-TransCore Settlement Agreement which requires the parties to meet to seek to resolve the dispute, Mark IV management is available on Friday, June 5, 2009 for a telephone conference with TransCore management to try and resolve this ...


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