Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 1 of 34
`
`
`
`
`
`Exhibit C
`
`
`
`
`
`
`
`
`
`
`
`Exhibit C
`
`
`
`
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 1 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 2 of 34
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`|
`|
`|
`|
`
`||
`
`| Civil Action No. 1:15-cv-00319-AT
`|
`| JURY TRIAL DEMANDED
`|
`
`||
`
`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`Plaintiffs,
`
`v.
`
`SIPCO, LLC, and
`IP CO, LLC (d/b/a INTUS IQ),
`Defendants.
`
`DEFENDANTS SIPCO, LLC’S AND IP CO, LLC’S ANSWER,
`AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO PLAINTIFFS’
`COMPLAINT
`
`Defendants SIPCO, LLC (“SIPCO”) and IP CO, LLC (d/b/a INTUS IQ) (“IP
`
`CO”) (collectively “Defendants”), by and through their counsel Thompson Hine
`
`LLP and Nutter, McClennen & Fish LLP, hereby answer the Complaint For
`
`Declaratory Judgment of Patent Non-Infringement and Invalidity (“Complaint”) of
`
`Plaintiffs Emerson Electric Co., Fisher-Rosemount Systems, Inc. and Rosemount
`
`Inc. (“Plaintiffs” or “Emerson”), as follows, using the same headings and
`
`numberings as used in the Complaint:
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 2 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 3 of 34
`
`1.
`
`Defendants admit that Plaintiffs’ Complaint purports to state a claim
`
`for declaratory judgment that claim 1 of U.S. Patent No. 7,103,511 (“the ‘511
`
`Patent”) and claim 2 of U.S. Patent No. 6,044,062 (“the ‘062 Patent”) are invalid
`
`and not infringed by Plaintiffs. Defendants also admit that Plaintiffs purport to
`
`describe the ‘511 Patent as the “SIPCO Patent” and purport to describe the ‘062
`
`Patent as the “IPCO Patent.” Defendants deny that the ‘511 Patent and ‘062 Patent
`
`are invalid and not infringed by Plaintiffs.
`
`PARTIES
`
`2.
`
`3.
`
`Defendants admit the allegations of Paragraph 2.
`
`Defendants admit that Plaintiff Fisher-Rosemount Systems, Inc. is a
`
`corporation incorporated under the laws of the State of Delaware and has a place of
`
`business at 1100 W. Louis Henna Blvd., Bldg. 1, Round Rock, Texas 7868.
`
`Defendants lack knowledge or information sufficient to form a belief about the
`
`remaining factual allegations of Paragraph 3 and therefore deny them pursuant to
`
`Fed. R. Civ. P. 8(b).
`
`4.
`
`Defendants admit that Plaintiff Rosemount Inc. is a corporation
`
`incorporated under the laws of the State of Minnesota and has a place of business
`
`at 8200 Market Blvd., Chanhassen, Minnesota 55317. Defendants lack knowledge
`
`2
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 3 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 4 of 34
`
`or information sufficient to form a belief about the remaining factual allegations of
`
`Paragraph 4 and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`5.
`
`6.
`
`Defendants admit the allegations of Paragraph 5.
`
`Defendants admit the allegations of Paragraph 6.
`
`JURISDICTION AND VENUE
`
`7.
`
`Defendants admit that Paragraph 7 purports to state a claim under the
`
`Patent Laws of the United States and under the Declaratory Judgment Act.
`
`Defendants admit that the claim is purportedly brought for a declaration by this
`
`Court that claim 1 of the ‘511 Patent and claim 2 of the ‘062 Patent (collectively
`
`referred to as “the Patents-in-Suit” by Plaintiffs) are invalid and not infringed by
`
`Plaintiffs. Defendants deny that the ‘511 Patent and ‘062 Patent are invalid and not
`
`infringed by Plaintiffs.
`
`8.
`
`Defendants admit that Paragraph 8 purports to state that this Court has
`
`jurisdiction over the claims asserted in Plaintiffs’ Complaint under 28 U.S.C. §§
`
`1331, 1338(a), 2201 and 2202. Defendants admit that Paragraph 8 purports to state
`
`that there is a dispute between Defendants and Plaintiffs regarding infringement
`
`and validity of the ‘511 Patent and ‘062 Patent. Defendants lack knowledge or
`
`information sufficient to form a belief about the remaining allegations of Paragraph
`
`8 and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`3
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 4 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 5 of 34
`
`9.
`
`Defendants admit that SIPCO is Georgia corporation, maintains a
`
`place of business in Georgia and conducts business in Georgia. Defendants lack
`
`knowledge or information sufficient to form a belief about the remaining
`
`allegations of Paragraph 9 and therefore deny them pursuant to Fed. R. Civ. P.
`
`8(b).
`
`10. Defendants admit that IP CO is a Georgia corporation, maintains a
`
`place of business in Georgia and conducts business in Georgia. Defendants lack
`
`knowledge or information sufficient to form a belief about the remaining
`
`allegations of Paragraph 10 and therefore deny them pursuant to Fed. R. Civ. P.
`
`8(b).
`
`11. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 11 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`BACKGROUND
`
`12. Defendants admit that the ‘511 Patent, entitled “Wireless
`
`Communication Networks for Providing Remote Monitoring of Devices,” issued
`
`on September 5, 2006.
`
`13. Defendants admit that SIPCO is the owner of the ‘511 patent.
`
`Defendants lack knowledge or information sufficient to form a belief about the
`
`4
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 5 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 6 of 34
`
`remaining allegations of Paragraph 13 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`14. Defendants lack knowledge or information sufficient to form a belief
`
`regarding the allegations in Paragraph 14 that “the ‘692 Patent, the ‘893 Patent,
`
`and the ‘492 Patent are related to each other because they are part of the same
`
`patent family” and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`15. Defendants admit that the ‘062 Patent, entitled “Wireless Network
`
`System and Method for Providing Same,” issued on March 28, 2000.
`
`16. Defendants admit that IP CO is the owner of the ‘062 Patent.
`
`Defendants lack knowledge or information sufficient to form a belief about the
`
`remaining allegations of Paragraph 16 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`17. Defendants lack knowledge or information sufficient to form a belief
`
`regarding the allegations in Paragraph 17 the “‘062 Patent and the ‘516 Patent are
`
`related to each other because they are part of the same patent family” and therefore
`
`deny them pursuant to Fed. R. Civ. P. 8(b).
`
`18. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 18 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`5
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 6 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 7 of 34
`
`19. Defendants admit that IP CO and SIPCO share a place of business in
`
`Georgia and that T. David Petite is a member of each entity. Defendants lack
`
`knowledge or information sufficient to form a belief about the remaining
`
`allegations of Paragraph 19 and therefore deny them pursuant to Fed. R. Civ. P.
`
`8(b).
`
`20. Defendants admit that the letter identified in Paragraph 18 as the
`
`“IPCO Letter” contains the following text: “Emerson is currently manufacturing,
`
`using, selling and/or offering for sale a mesh network system.” Defendants admit
`
`that the “IPCO Letter” references four patents, including the ‘062 Patent and the
`
`‘511 Patent. Defendants admit that the “IPCO Letter” contains the following text:
`
`“to put your company on notice of IPCO’s intellectual property rights.” Defendants
`
`lack knowledge or information sufficient to form a belief about the remaining
`
`allegations of Paragraph 20 and therefore deny them pursuant to Fed. R. Civ. P.
`
`8(b).
`
`21. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 21 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`6
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 7 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 8 of 34
`
`22. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 22 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`23. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 23 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`24. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 24 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`25. Defendants admit that SIPCO served a subpoena to Rosemount Inc. in
`
`a lawsuit in the Northern District of Georgia having the following civil action
`
`number: 1:11-cv-00612-JEC. Defendants lack knowledge or information sufficient
`
`to form a belief about the remaining allegations of Paragraph 25 and therefore deny
`
`them pursuant to Fed. R. Civ. P. 8(b).
`
`26. Defendants admit that the subpoena referred to in Paragraph 25
`
`contained a section entitled “Requests.” Defendants admit that Paragraph 26
`
`includes the text of Request Nos. 1, 3 and 4 from the subpoena referred to in
`
`Paragraph 25. Defendants lack knowledge or information sufficient to form a
`
`7
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 8 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 9 of 34
`
`belief about the remaining allegations of Paragraph 26 and therefore deny them
`
`pursuant to Fed. R. Civ. P. 8(b).
`
`27. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations of Paragraph 27 and therefore deny them pursuant to Fed. R.
`
`Civ. P. 8(b).
`
`28. Defendants admit that Candida Petite sent a letter that is dated
`
`February 27, 2013 to Emerson Electric Co. Defendants lack knowledge or
`
`information sufficient to form a belief about the remaining allegations of Paragraph
`
`28 and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`29. Defendants admit that Plaintiffs refer to the letter identified in
`
`Paragraph 28 as “the “SIPCO Letter.” Defendants admit that the “SIPCO Letter”
`
`addresses licensing of a wireless mesh patent portfolio owned by SIPCO and IP
`
`CO. Defendants lack knowledge or information sufficient to form a belief about
`
`the remaining allegations of Paragraph 29 and therefore deny them pursuant to
`
`Fed. R. Civ. P. 8(b).
`
`30. Defendants admit that Emerson responded to the SIPCO Letter in
`
`writing on or about March 18, 2013. Defendants lack knowledge or information
`
`sufficient to form a belief about the remaining allegations of Paragraph 30 and
`
`therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`8
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 9 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 10 of 34
`
`31. Defendants admit that they communicated with Emerson subsequent
`
`to the SIPCO letter and that Defendants provided Emerson with a license
`
`agreement. Defendants lack knowledge or information sufficient to form a belief
`
`about the remaining allegations of Paragraph 31 and therefore deny them pursuant
`
`to Fed. R. Civ. P. 8(b).
`
`32. Defendants deny the allegations of Paragraph 32.
`
`33. Defendants deny the allegations of Paragraph 33.
`
`34. Defendants lack knowledge or information sufficient to form a belief
`
`about the allegations in the first main paragraph of Paragraph 34 and therefore
`
`deny them pursuant to Fed. R. Civ. P. 8(b). Regarding the individual sub-
`
`paragraphs (a – k) of Paragraph 34, Defendants responds as follows:
`
`Defendants admit that IP CO was a party to a lawsuit in the
`a.
`Northern District of Georgia having the following civil action
`number: 1:05-cv-01182-CC. Defendants lack knowledge or
`information sufficient to form a belief about the remaining allegations
`of this sub-paragraph and therefore deny them pursuant to Fed. R.
`Civ. P. 8(b).
`
`Defendants admit that IP CO was a party to a lawsuit in the
`b.
`Northern District of Georgia having the following civil action
`number: 1:05-cv-02658-CC. Defendants lack knowledge or
`information sufficient to form a belief about the remaining allegations
`of this sub-paragraph and therefore deny them pursuant to Fed. R.
`Civ. P. 8(b).
`
`Defendants admit that IP CO was a party to a lawsuit in the
`c.
`Northern District of Georgia having the following civil action
`
`9
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 10 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 11 of 34
`
`number1:06-cv-03048-JEC. Defendants lack knowledge or
`information sufficient to form a belief about the remaining allegations
`of this sub-paragraph and therefore deny them pursuant to Fed. R.
`Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`d.
`Eastern District of Texas having the following civil action number:
`2:08-cv-00359-DF. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations in this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`e.
`Eastern District of Pennsylvania having the following civil action
`number: 2:08-cv-00505-TJS. Defendants lack knowledge or
`information sufficient to form a belief about the remaining allegations
`of this sub-paragraph and therefore deny them pursuant to Fed. R.
`Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`f.
`Eastern District of Texas having the following civil action number:
`6:09-cv-00532-LED-JDL. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations of this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`g.
`Northern District of Georgia having the following civil action
`number: 1:11-cv-00612-JEC. Defendants lack knowledge or
`information sufficient to form a belief about the remaining allegations
`of this sub-paragraph and therefore deny them pursuant to Fed. R.
`Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`h.
`Eastern District of Texas having the following civil action number:
`6:10-cv-00533-LED. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations of this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`10
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 11 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 12 of 34
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`i.
`Eastern District of Texas having the following civil action number:
`6:11-cv-00048-LED. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations of this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`j.
`Southern District of Florida having the following civil action number:
`9:11-cv-80521-DMM. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations of this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`Defendants admit that SIPCO was a party to a lawsuit in the
`k.
`Southern District of Florida having the following civil action number:
`9:11-cv-80999-DMM. Defendants lack knowledge or information
`sufficient to form a belief about the remaining allegations of this sub-
`paragraph and therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`35. Defendants deny the allegations of Paragraph 35.
`
`36. Defendants deny the allegations of Paragraph 36.
`
`37. Defendants deny the allegations of Paragraph 37.
`
`38. Defendants admit that Paragraph 38 purports to allege that there is a
`
`dispute between Defendants and Plaintiffs regarding infringement and validity of
`
`the ‘511 Patent and ‘062 Patent. Defendants lack knowledge or information
`
`sufficient to form a belief about the remaining allegations of Paragraph 38 and
`
`therefore deny them pursuant to Fed. R. Civ. P. 8(b).
`
`11
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 12 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 13 of 34
`
`COUNT I
`
`(INVALIDITY OF THE ‘511 PATENT – CLAIM 1)
`
`39. Defendants hereby restate and re-allege the answers set forth in the
`
`preceding paragraphs and incorporate them herein by reference.
`
`40. Defendants deny the allegations of Paragraph 40.
`
`41. Defendants admit that, by virtue of filing the Complaint, Plaintiffs
`
`purport to seek a declaration from this Court that claim 1 of the ‘511 Patent is
`
`invalid. Defendants deny that the ‘511 patent is invalid and deny the remaining
`
`factual allegations of Paragraph 41.
`
`COUNT II
`
`(INVALIDITY OF THE ‘062 PATENT – CLAIM 2)
`
`42. Defendants hereby restate and re-allege the answers set forth in the
`
`preceding paragraphs and incorporate them herein by reference.
`
`43. Defendants deny the allegations of Paragraph 43.
`
`44. Defendants admit that, by virtue of filing the Complaint, Plaintiffs
`
`purport to seek a declaration from this Court that claim 2 of the ‘062 Patent is
`
`invalid. Defendants deny that the ‘062 patent is invalid and deny the remaining
`
`factual allegations of Paragraph 44.
`
`12
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 13 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 14 of 34
`
`COUNT III
`
`(NON-INFRINGEMENT OF THE ‘511 PATENT – CLAIM 1)
`
`45. Defendants hereby restate and re-allege the answers set forth in the
`
`preceding paragraphs and incorporate them herein by reference.
`
`46. Defendants deny the allegations of Paragraph 46.
`
`47. Defendants admit that, by virtue of filing the Complaint, Plaintiffs
`
`purport to seek a declaration from this Court that one or more of their products do
`
`not infringe claim 1 of the ‘511 Patent. Defendants deny that such products do not
`
`infringe the ‘511 Patent and deny the remaining factual allegations of Paragraph
`
`47.
`
`COUNT IV
`
`(NON-INFRINGEMENT OF THE ‘062 Patent – CLAIM 2)
`
`48. Defendants hereby restate and re-allege the answers set forth in the
`
`preceding paragraphs and incorporate them herein by reference.
`
`49. Defendants deny the allegations of Paragraph 49.
`
`50. Defendants admit that, by virtue of filing the Complaint, Plaintiffs
`
`purport to seek a declaration from this Court that one or more of their products do
`
`not infringe claim 2 of the ‘062 Patent. Defendants deny that such products do not
`
`13
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 14 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 15 of 34
`
`infringe the ‘062 Patent and deny the remaining factual allegations of Paragraph
`
`50.
`
`DEMAND FOR JURY TRIAL
`
`Defendants hereby demand a trial by jury of all issues so triable.
`
`PRAYER FOR RELIEF
`
`To the extent that a response is required, Defendants deny that Plaintiffs are
`
`entitled to any relief, including the relief requested in Paragraphs 1 – 50 of their
`
`Complaint, and the relief identified in sub-paragraphs a – e of their Prayer.
`
`AFFIRMATIVE DEFENSES
`
`Incorporating by reference the foregoing paragraphs in their entirety,
`
`Defendants hereby assert the following affirmative defenses to the causes of action
`
`set forth in Plaintiffs’ Complaint. By pleading these defenses, Defendants do not
`
`in any way agree or concede that they have the burden of proof or persuasion on
`
`any of these issues. Defendants expressly reserve the right to raise additional
`
`defenses and to amend their Answer as such defenses become known after a
`
`reasonable opportunity for further investigation and/or throughout the course of
`
`discovery.
`
`FIRST AFFIRMATIVE DEFENSE
`
`Plaintiffs’ Complaint fails to state a claim upon which relief may be granted.
`
`14
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 15 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 16 of 34
`
`SECOND AFFIRMATIVE DEFENSE
`
`Plaintiffs have infringed, literally or under the doctrine of equivalents, and
`
`are continuing to infringe, the ‘511 Patent and/or ‘062 Patent (“Patents-in-Suit”) by
`
`making, using, offering for sale, selling within the United States, or importing into
`
`the United States products covered by one or more of the claims of the Patents-in-
`
`Suit or by actively inducing infringement or contributing to the infringement of
`
`one or more of the claims of the Patents-in-Suit.
`
`THIRD AFFIRMATIVE DEFENSE
`
`The claims of the Patents-in-Suit are valid.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`Defendants’ investigation of their defenses to Plaintiffs’ causes of action is
`
`ongoing and Defendants reserve the right to supplement or amend their affirmative
`
`defenses.
`
`COUNTERCLAIMS
`
`Defendants and Counterclaim-Plaintiffs SIPCO, LLC and IP CO, LLC (d/b/a
`
`INTUS IQ) assert the following Counterclaims against Plaintiffs and
`
`Counterclaim-Defendants Emerson Electric Co., Fisher-Rosemount Systems, Inc.,
`
`and Rosemount Inc. (“Emerson” or “Counterclaim-Defendants”).
`
`15
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 16 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 17 of 34
`
`THE PARTIES
`
`1.
`
`Counterclaim-Plaintiff SIPCO, LLC (“SIPCO”) is a limited liability
`
`company organized and existing under the laws of the State of Georgia, having its
`
`principal office at 8215 Roswell Road, Building 900, Suite 950, Atlanta, Georgia
`
`30350.
`
`2.
`
`Counterclaim-Plaintiff IP CO, LLC (d/b/a INTUS IQ) (“IP CO”) is a
`
`limited liability company organized and existing under the laws of the State of
`
`Georgia, having its principal office at 8215 Roswell Road, Building 900, Suite
`
`950, Atlanta, Georgia 30350.
`
`3.
`
`Counterclaim-Defendant Emerson Electric Co. is a corporation
`
`organized and existing under the laws of the State of Missouri, having its principal
`
`place of business at 8000 W. Florissant Ave., St. Louis, Missouri 63136.
`
`4.
`
`Counterclaim-Defendant Fisher-Rosemount Systems, Inc. is a wholly-
`
`owned subsidiary of Emerson Electric Co., and is a corporation incorporated under
`
`the laws of the State of Delaware, having its principal place of business at 1100 W.
`
`Louis Henna Blvd., Bldg. 1, Round Rock, Texas 78681.
`
`5.
`
`Counterclaim-Defendant Rosemount, Inc. is a wholly-owned
`
`subsidiary of Emerson Electric Co., and is a corporation organized and existing
`
`16
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 17 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 18 of 34
`
`under the laws of the State of Minnesota, having its principal place of business at
`
`8200 Market Blvd., Chanhassen, Minnesota 55317.
`
`NATURE OF THE COUNTERCLAIMS, JURISDICTION, AND VENUE
`
`6.
`
`SIPCO, LLC’s and IP CO, LLC’s (d/b/a INTUS IQ) (together
`
`“Counterclaim-Plaintiffs”) Counterclaims are for patent infringement arising under
`
`the patent statutes, 35 U.S.C. § 101 et seq., in particular 35 U.S.C. § 271.
`
`7.
`
`This Court has subject matter jurisdiction over Counterclaim-
`
`Plaintiffs’ Counterclaims under 28 U.S.C. §§ 1331 and 1338(a).
`
`8.
`
`Counterclaim-Defendants, having brought this suit against
`
`Counterclaim-Plaintiffs, have submitted themselves to the jurisdiction of this
`
`Court.
`
`9.
`
`If venue is proper in this judicial district for Counterclaim-
`
`Defendants’ claims, then venue is also proper for this Counterclaim pursuant to 28
`
`U.S.C. § 1391 and 1400(b).
`
`SIPCO AND IP CO
`
`10.
`
`SIPCO and IP CO are small research and development companies
`
`based in Atlanta, Georgia. T. David Petite is a founding member of both SIPCO
`
`and IP CO.
`
`17
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 18 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 19 of 34
`
`11.
`
`In the early 1990’s, through research and development conducted in
`
`his basement, T. David Petite invented a large number of wireless control and
`
`distribution technology applications. The applications include integrating the
`
`internet as a derived channel for data back-haul and data aggregation points. The
`
`inventions resulting from his efforts include, but are not limited to, various ways of
`
`moving data as economically and seamlessly as possible. Further investment of
`
`tens of millions of dollars from investors led to the development of, amongst other
`
`applications, the smart grid technology purchased by Landis + Gyr. This
`
`technology developed by T. David Petite and SIPCO is now implemented in
`
`millions of devices around the world by Landis + Gyr.
`
`12.
`
`SIPCO maintains ownership of the software, firmware, hardware and
`
`patent portfolio that resulted from T. David Petite’s efforts
`
`(“core technology”). Together SIPCO and IP CO continue to develop technology
`
`and deploy wireless technology applications and wireless technology
`
`systems throughout the United States.
`
`13.
`
`SIPCO’s and IP CO’s applications, systems, and/or technology
`
`have been widely recognized as pioneering in various fields of use. As a
`
`result, numerous corporations have licensed patent portfolios owned by SIPCO and
`
`18
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 19 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 20 of 34
`
`IP CO. U.S. Patent No. 7,103,511 and U.S. Patent No. 6,044,062 are included in
`
`the patent portfolios respectively owned by SIPCO and IP CO.
`
`14.
`
`Licensees of the patent portfolio include companies operating in the
`
`vertical markets of Smart Grid, Building Automation, Industrial Controls, Network
`
`Backhaul, Home Appliance, Home Automation and Entertainment, Sensor
`
`Monitoring, and Internet Service Provisioning. Licensed products include products
`
`using standard wireless mesh protocols such as Zigbee, IEEE 802.15.4, Z-
`
`Wave, WirelessHART as well as proprietary wireless protocols.
`
`THE PATENTS-IN-SUIT
`
`15. U.S. Patent No. 7,103,511 (“the ‘511 Patent”) was duly and legally
`
`issued on September 5, 2006.
`
`16.
`
`The ’511 Patent is entitled “Wireless Communication Networks for
`
`Providing Remote Monitoring of Devices.”
`
`17.
`
`SIPCO owns the ’511 Patent.
`
`18. Counterclaim-Defendants had knowledge of the ’511 Patent and
`
`knowledge of their infringement of the ‘511 Patent before they filed their
`
`Complaint against Counterclaim-Plaintiffs.
`
`19. U.S. Patent No. 6,044,062 (“the ‘062 Patent) was duly and legally
`
`issued on March 28, 2000.
`
`19
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 20 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 21 of 34
`
`20.
`
`The ’062 Patent is entitled “Wireless Network System and Method for
`
`Providing Same.”
`
`21.
`
`IP CO owns the ’062 Patent.
`
`22. Counterclaim-Defendants had knowledge of the ’062 Patent and
`
`knowledge of their infringement of the ‘062 Patent before they filed their
`
`Complaint against Counterclaim-Plaintiffs.
`
`LICENSE AGREEMENT
`
`23. On or about October 25, 2011, SIPCO and IP CO entered into a
`
`license agreement with Emerson Electric Co. through its White-Rodgers Division
`
`(hereinafter referred to as the “License Agreement”).
`
`24.
`
`Through the License Agreement, the White-Rogers Division of
`
`Emerson Electric Co. received a license to certain patents owned by SIPCO and IP
`
`CO, including U.S. Patent No. 7,103,511 and U.S. Patent No. 6,044,062. The
`
`scope of the license granted to the White-Rogers Division of Emerson Electric Co.,
`
`including any licensed field of use and any licensed products identified therein, is
`
`governed by the specific terms of the License Agreement.
`
`25. Counterclaim-Defendant Emerson Electric Co. is not licensed under
`
`the License Agreement other than through the license granted to its White-Rodgers
`
`Division, as governed by the specific terms of the License Agreement.
`
`20
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 21 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 22 of 34
`
`26. Counterclaim-Defendant Emerson Electric Co. does not have a license
`
`to the ‘511 Patent and/or ‘062 Patent other than through the license granted to its
`
`White-Rodgers Division, as governed by the specific terms of the License
`
`Agreement.
`
`27. Counterclaim-Defendant Fisher-Rosemount Systems, Inc. is not a
`
`party to the License Agreement and is not licensed under the License Agreement.
`
`28. Counterclaim-Defendant Fisher-Rosemount Systems, Inc. does not
`
`have a license to the ‘511 Patent and/or ‘062 Patent.
`
`29. Counterclaim-Defendant Rosemount, Inc. is not a party to the License
`
`Agreement and is not licensed under the License Agreement.
`
`30. Counterclaim-Defendant Rosemount, Inc. does not have a license to
`
`the ‘511 Patent and/or ‘062 Patent.
`
`31. By virtue of entering into the License Agreement with SIPCO and IP
`
`CO on or about October 25, 2011, Counterclaim-Defendant Emerson Electric Co.
`
`had knowledge of the ‘511 Patent and ‘062 Patent and knowledge of its
`
`infringement thereof.
`
`32. Upon information and belief, Counterclaim-Defendant Fisher-
`
`Rosemount Systems, Inc. has had knowledge of the ‘511 Patent and ‘062 Patent
`
`21
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 22 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 23 of 34
`
`and knowledge of its infringement thereof since at least as early as October 25,
`
`2011.
`
`33. Upon information and belief, Counterclaim-Defendant Rosemount,
`
`Inc. has had knowledge of the ‘511 Patent and ‘062 Patent and knowledge of its
`
`infringement thereof since at least as early as January 27, 2011.
`
`COUNT I
`
`(INFRINGEMENT OF U.S. PATENT NO. 7,103,511)
`
`34. Counterclaim-Plaintiffs hereby restate and re-allege the allegations set
`
`forth in the preceding paragraphs and incorporate them by reference.
`
`35. On information and belief, Counterclaim-Defendants have been and
`
`now are directly infringing, literally or under the doctrine of equivalents, one or
`
`more claims of the ’511 Patent (including, but not limited to, claim numbers 1, 8,
`
`27, and 44) pursuant to 35 U.S.C. § 271(a) by making, using, offering for sale,
`
`selling within the United States, or importing into the United States their products,
`
`including but not limited to the following infringing lines of products:
`
`i.
`
`Gateways, including but not limited to the Rosemount 1420
`
`Smart Wireless Gateway and the Wireless I/O Card (WIOC)
`
`with Field Link lines of products;
`
`22
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 23 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 24 of 34
`
`ii.
`
`Field Devices, including, but not limited to, the Rosemount
`
`3308 Series, Rosemount 3051S, Rosemount 3051 Wireless
`
`Pressure Transmitter, Rosemount 2051 Wireless Pressure
`
`Transmitter, Rosemount 848T Wireless Temperature
`
`Transmitter, Rosemount 648 Single-Point Wireless
`
`Temperature Transmitter, Rosemount 248 basic temperature
`
`transmitter, Rosemount 2160 Wireless Level Switch,
`
`Rosemount 708 Wireless Acoustic Transmitter, Rosemount 702
`
`Wireless Discrete Transmitter, Rosemount 6081 Wireless
`
`Transmitter for pH and ORP and Conductivity, Fisher 4320
`
`wireless position monitor, TopWorx 4310 Wireless Position
`
`Monitor, Roxar Wireless sand/erosion monitoring transmitter,
`
`CSI 9420 Wireless Vibration Transmitter lines of products;
`
`iii.
`
`Adapters, including but not limited to, the Rosemount Smart
`
`Wireless THUM™ Adapter and Fisher 775 THUM™ lines of
`
`products; and
`
`iv.
`
`Monitoring and control software, including but not limited to,
`
`the AMS, Ovation, and DeltaV lines of products.
`
`23
`
`
`
`
`
`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 24 of 33Case 1:16-cv-02690-AT Document 10-4 Filed 12/10/15 Page 25 of 34
`
`36. Counterclaim-Defendants are liable for infringement of the ’511
`
`Patent pursuant to 35 U.S.C. § 271(a).
`
`37. On information and belief, Counterclaim-Defendants have been and
`
`now are indirectly infringing, literally or under the doctrine of equivalents, one or
`
`more claims of the ’511 Patent (including, but not limited to, claims 1, 8, 27, and
`
`44) pursuant to 35 U.S.C. § 271(b) or (c) by actively inducing infringement or
`
`contributing to the infringement of the ’511 Patent in the United States, by
`
`providing or selling at least the products identified above to customers or users of
`
`those products. Upon information and belief, Counterclaim-Defendants have been
`
`made aware of the asserted claims of the ‘511 patent and their direct and indirect
`
`infringement thereof through communications with Counterclaim-Plaintiffs, and
`
`continue to make, use, sell and offer to sell same to their directly infringing
`
`customers, despite their known direct and indirect infringement.
`
`38. Counterclaim-Defendants are liable for infringement of the ’511
`
`Patent pursuant to 35 U.S.C. § 271(b).
`
`39. Counterclaim-Defendants are liable for infringement of the ’511
`
`Patent purs
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
