Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`SIPCO, LLC, and IP CO, LLC (d/b/a INTUS IQ),
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`Plaintiffs,
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`v.
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`EMERSON ELECTRIC CO., EMERSON PROCESS
`MANAGEMENT LLLP, FISHER ROSEMOUNT
`SYSTEMS, INC., ROSEMOUNT INC., BP, p.l.c.,
`BP AMERICA, INC., and BP AMERICA
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`PRODUCTION COMPANY,
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`Defendants.
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`)
`)
`)
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`) Civil Action No.
`) 1:16-cv-02690-AT
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`
`PLAINTIFFS’ MEMORANDUM IN SUPPORT OF
`THEIR MOTION TO DISMISS AND STRIKE COUNTERCLAIMS AND
`AFFIRMATIVE DEFENSES OF INEQUITABLE CONDUCT
`Plaintiffs, SIPCO, LLC ("SIPCO") and IP CO, LLC (d/b/a INTUS IQ) ("IP
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`CO") (collectively, "SIPCO") respectfully move to dismiss and strike the
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`counterclaims and affirmative defenses of inequitable conduct asserted by
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`Defendants Emerson Electric Co., Emerson Process Management LLLP, and
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`Fisher- Rosemount Systems, Inc. (collectively, “Emerson”) pursuant to Fed. R. Civ.
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`P. 12(b)(6), 12(f) and 9(b). The charge of inequitable conduct in almost every patent
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`infringement case is an absolute plague on the courts and entire patent system, and
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`Emerson’s so-called inequitable conduct allegations are no different. Indeed, they
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`

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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 2 of 21
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`impugn the veracity and reputation of a prolific and pioneering inventor—T. David
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`Petite1—and indict the professionalism and ethics of numerous patent prosecution
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`attorneys and litigation counsel—officers of the court—representing SIPCO and IP
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`CO throughout the years. The Federal Circuit’s decisions in Therasense, Inc. v.
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`Becton, Dickinson & Co., 649 F.3d 1276, 1289 (Fed. Cir. 2011) (en banc) and
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`Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326-27 (Fed. Cir. 2009)
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`stand as a bulwark against Emerson’s verbose and scandalous allegations. Simply
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`put, the twisted tales that Emerson’s inequitable conduct allegations attempt to
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`weave do not meet the strict pleading standards set forth Exergen and Therasense.
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` 1
`
` In addition to his work developing wireless mesh technology, T. David Petite has
`dedicated his time to furthering inventorship and the development of new
`technologies. Petite, a registered member of the Fond Du Lac Chippewa tribe and
`the son of a former Chief of the Red Cliff Chippewa tribe in Wisconsin, is a founder
`of the Native American Intellectual Property Enterprise Council, which is an
`organization that provides patenting, copyright, and trademark assistance to help
`foster invention and innovation in the Native American community. Mr. Petite has
`volunteered his time with the United States Patent and Trademark Office (“PTO”)
`working on projects directed toward developing Native American intellectual
`property and as a speaker at patent-examiner training; he has also volunteered for a
`number of organizations geared toward developing and protecting entrepreneurship
`and innovation. A native of Atlanta, Petite was recognized by the Georgia State
`Senate for his innovations in wireless technology, job creation, and an “incredible
`career” in engineering and invention. He also was invited to and attended President
`Barack Obama’s signing of the America Invents Act and has been recognized as an
`influential inventor by the PTO—even having been added to the PTO’s 2014
`Inventor Collectible Card Series.
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`2
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 3 of 21
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`For these and other reasons set forth more fully below, SIPCO respectfully requests
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`the Court to grant this motion.
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`I.
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`
`PROCEDURAL BACKGROUND
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`SIPCO commenced this action in the Eastern District of Texas on October 16,
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`2015, alleging Emerson’s infringement of U.S. Patent Nos. 7,697,492 (“the ‘492
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`patent”), 6,437,692 (“the ‘692 patent”), 6,914,893 (“the ‘893 patent”), 6,249,516
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`(“the ‘516 patent”), 7,468,661 (“the ‘661 patent”), 8,000,314 (“the ‘314 patent”),
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`8,233,471 (“the ‘471 patent”), 8,625,496 (“the ‘496 patent”), 8,754,780 (“the ‘780
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`patent”) and 8,908,842 (“the ‘842 patent”) (hereinafter, the “Texas Action”). (TX
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`Dkt. No. 1).2 Emerson filed an Answer to the Complaint on December 10, 2015 (TX
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`Dkt. No. 11). SIPCO filed an Amended Complaint on December 30, 2015, alleging,
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`inter alia, infringement of an additional patent, U.S. Patent No. 8,013,732 (“the ‘732
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`patent”) and adding BP America, Inc., BP America Production Company and BP
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`p.l.c. as defendants (collectively, the “BP Defendants”). (TX Dkt. No. 19.) Emerson
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` 2
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` U.S. Patent No. 6,044,062 (“the ‘062 Patent”), although mentioned in Emerson’s
`Eleventh Affirmative Defense and Count I of its Counterclaims, is not at issue in the
`Texas Action. The same is true with respect to U.S. Patent No. 7,103,511 (“the ‘511
`Patent”): although it is identified in Emerson’s Twelfth Affirmative Defense, it is
`not at issue in the Texas Action. SIPCO moves to dismiss any and all affirmative
`defenses and counterclaims associated with the ‘062 and ‘511 patents as set forth in
`Section III.C., infra.
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`3
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`

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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 4 of 21
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`filed an Answer to the Amended Complaint on January 20, 2016 (TX Dkt. No. 30),
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`and BP America, Inc. and BP America Production Company filed answers on
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`February 29, 2016.3 (TX Dkt. Nos. 49 and 52.)
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`SIPCO filed a Second Amended Complaint on July 14, 2016, alleging BP’s
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`willful infringement. (TX Dkt. No. 105). That same day, Emerson filed an Amended
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`Answer, Affirmative Defenses and Counterclaims, alleging, inter alia, the
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`inequitable conduct affirmative defenses and counterclaims that are the subject of
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`this motion. (TX Dkt. No. 106).
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`Emerson’s inequitable conduct allegations are directed towards the IP CO
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`patents (hereinafter referred to as the “Brownrigg Patents”) and SIPCO patents
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`(hereinafter referred to as the “Petite Patents”) that are asserted in the Texas Action.4
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`More particularly, Emerson’s Eleventh Affirmative Defense, which purports to
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`allege inequitable conduct in association with the Brownrigg Patents, is set forth in
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` 3
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` BP p.l.c. did not file an answer. It moved to dismiss the Amended Complaint. (TX
`Dkt. No. 87). Briefing on BP p.l.c.’s motion to dismiss is not complete.
`4 Further to note 1, supra, Emerson’s affirmative defenses and/or counterclaims
`alleging inequitable conduct mention the ‘062 and ‘511 Patents, which are not
`asserted in the Texas Action. Instead, they are asserted in the Declaratory Judgment
`Action that Emerson filed in this Court on January 15, 2015, Civ. A. No.
`1:15-cv-00319-AT (hereinafter referred to as the “Georgia Action”) (GA Dkt. No.
`1). For the reasons set forth in Section III.C., infra, all affirmative defenses and
`counterclaims related to the ‘062 and ‘511 Patents should be dismissed.
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`4
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 5 of 21
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`paragraphs 312 to 375 of Emerson’s Amended Answer and Emerson’s counterclaim
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`is set forth in paragraphs 10 to 12 of Count I. (TX Dkt. No. 106). Emerson’s Twelfth
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`Affirmative Defense, which purports to allege inequitable conduct in connection
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`with the Petite Patents, is set forth in paragraphs 377 to 424 of Emerson’s Amended
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`Answer and Emerson’s counterclaim is set forth in paragraphs 13 and 14 of Count II.
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`(Id.)
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`II. LEGAL STANDARDS
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`A. Motion to Dismiss
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`Under Fed. R. Civ. P. 12(b)(6), a pleading may be dismissed for failure to
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`state a claim upon which relief may be granted if it fails to set forth "sufficient
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`factual matter, accepted as true, to 'state a claim to relief that is plausible on its
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`face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic v.
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`Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible on its face if it pleads
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`facts sufficient to “allow[] the court to draw the reasonable inference that the [party]
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`is liable for the misconduct alleged." Id.
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`In considering a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a court
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`construes the pleading in the non-movant's favor and accepts the well-pleaded
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`factual allegations therein as true. Williams v. Fulton County School District, No.
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`1:14-CV-0296-AT, 2016 WL 3055898, at *3 (N.D. Ga. Mar. 31, 2016) (citing Duke
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`5
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 6 of 21
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`v. Cleland, 5 F.3d 1399, 1402 (11th Cir.1993)). The pleading need not contain
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`detailed factual allegations to survive dismissal, but it must contain "‘more than
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`labels and conclusions, and a formulaic recitation of the elements of a cause of
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`action will not do.’” Id. (quoting Iqbal, 556 U.S. at 678).
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`B.
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`Inequitable Conduct
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`“[T]he habit of charging inequitable conduct in almost every major patent
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`case has become an absolute plague” on “not only the courts but also the entire
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`patent system.” Therasense, 649 F.3d at 1289. To curb that abuse, the Federal
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`Circuit has raised the bar not only for proving—but also for pleading—inequitable
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`conduct. See id. at 1290; Exergen Corp., 575 F.3d at 1326-27.
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`To prevail on the defense of inequitable conduct, the accused infringer must
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`prove that the applicant misrepresented or omitted material information with the
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`specific intent to deceive the U.S. Patent and Trademark Office (“PTO”).
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`Therasense, 649 F.3d at 1287. The accused
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`infringer must prove both
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`elements—intent and materiality—by clear and convincing evidence. Id. That is,
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`intent and materiality are separate requirements. Id. at 1290. If the accused
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`infringer meets its burden with respect to both elements, then the court must weigh
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`the equities to determine whether the applicant's conduct before the PTO warrants
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`rendering the entire patent unenforceable. Id. at 1287.
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`6
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 7 of 21
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`A district court should not use a “sliding scale” to judge inequitable conduct,
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`“where a weak showing of intent may be found sufficient based on a strong showing
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`of materiality, and vice versa.” Id. at 1290. Moreover, a court “may not infer intent
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`solely from materiality.” Id. “Instead, a court must weigh the evidence of intent to
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`deceive independent of its analysis of materiality.” Id. “Proving that the applicant
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`knew of a reference, should have known of its materiality, and decided not to submit
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`it to the PTO does not prove specific intent to deceive.” Id.
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`At the pleading stage, accused infringers cannot “simply aver[] the
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`substantive elements of inequitable conduct,” but, to satisfy Fed. R. Civ. P. 9(b),
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`must set forth the “particularized factual bases” for their allegations. Exergen, F.3d
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`at 1327. The accused infringer must allege facts showing the plausibility of “but-for
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`materiality” and “specific intent to deceive the PTO.” Therasense, 649 F.3d at
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`1290-91; Exergen, 575 F.3d at 1327 n. 3. To that end, the pleader must identify “the
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`specific who, what, when, where, and how of the material misrepresentation or
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`omission.” Exergen, 575 F.3d at 1327.
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`To satisfy the “who” and “when” standards, a pleading must name the person
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`who knew of the material information and deliberately withheld or misrepresented
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`it, and the pleading must indicate when the conduct took place. Id. at 1329. To
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`satisfy the “what” and “where” standards, the pleading must identify “which claims,
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`7
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 8 of 21
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`and which limitations in those claims, the withheld references are relevant to, and
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`where in those references the material information is found.” Id. A pleading must
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`also set forth “why” the withheld information was material and not merely
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`cumulative, and it must set forth “how” an examiner would have used the
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`information in assessing patentability. Id. at 1329-30. In regard to the “why” and
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`“how” standards, the pleading must indicate “the particular claim limitations, or
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`combination of claim limitations,” that are supposedly absent from the information
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`of record. Id. at 1329. A factual deficiency with respect to any of the foregoing is
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`“fatal under Rule 9(b)” of the Federal Rules of Civil Procedure. Id. at 1330.
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`As to pleading the "intent" element of inequitable conduct, the “relevant
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`‘conditions of mind’ . . . include: (1) knowledge of the withheld material information
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`or of the falsity of the material misrepresentation, and (2) specific intent to deceive
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`the [PTO].” Exergen, 575 F.3d at 1327. Although “knowledge” and “intent” may be
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`averred generally, the pleadings must allege sufficient underlying facts from which a
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`court may reasonably infer that a party acted with the requisite state of mind. Id.
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`Because Emerson’s affirmative defenses and counterclaims alleging inequitable
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`conduct fail to meet these legal standards, they should be dismissed and stricken.
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`8
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 9 of 21
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`III. ARGUMENT
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`
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`Emerson’s affirmative defenses and counterclaims alleging inequitable
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`conduct contain a mishmash of names, dates and events that are difficult to
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`understand and confusing to follow. Neither SIPCO, nor the Court, should have to
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`sift through Emerson’s allegations and piece together a case of so-called inequitable
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`conduct. Thompson v. BAC Home Loans Servicing LP, No. 1:12-CV-0221-AT, 2012
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`WL 12838456 at p. 2 (N.D. Ga. Jan. 26, 2012). This “shotgun” style of pleading is
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`disfavored and, for the reasons set forth below, warrants dismissal of Emerson’s
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`affirmative defenses and counterclaims alleging inequitable conduct. E.g. Frantz v.
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`Walled, 5163 Fed. Appx. 815, 820-21 (11th Cir. 2013) (holding that the Eleventh
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`Circuit has “repeatedly condemned” shotgun pleadings and that dismissal of such
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`pleadings is proper); see also id.
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`A.
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`The Brownrigg Patents
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`1.
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`
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`Count I, Alleging Inequitable Conduct Associated with the
`Brownrigg Patents, Fails to State a Claim upon which Relief
`Can Be Granted
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`Count I of Emerson’s Counterclaims fails to allege any facts associated with
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`inequitable conduct and should be summarily dismissed for failing to meet the
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`heightened pleading standard set forth in Therasense and Exergen. The entirety of
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`9
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 10 of 21
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`Count I (Paragraphs 10 to 12) with respect to the Brownrigg Patents is set forth
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`below:
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`COUNT I - DECLARATION OF UNENFORCEABILITY BROWNRIGG
`PATENTS
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`
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`10. Emerson Defendants re-allege and incorporate by reference its
`allegations as set forth herein in paragraphs 1 through 9 of the Emerson
`Defendants’ Counterclaims as set forth above.
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`11. The claims of the ‘062, ‘516, '314, '471 and ’496 patents are
`unenforceable because of the inequitable conduct IP CO committed
`while prosecuting the patents-in-suit or their related patents, as set forth
`in paragraphs 312 through 376 of Emerson Defendants’ Eleventh
`Defense, above.
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`12. The ‘062 and ‘516 patents are unenforceable under the doctrine
`of infectious unenforceability from inequitable conduct that occurred
`during the prosecution of the ‘314, ‘471, and ‘496 patents because each
`of these patents are related to the ‘062 and ‘516 patents.
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`(TX Dkt. No. 106).
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`Clearly, Emerson has not alleged any facts sufficient to meet the heightened
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`pleading standard for inequitable conduct in the text of Count I.5 Accordingly, the
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`entire count should be dismissed because it fails to state a claim upon which relief
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`can be granted. Therasense, 649 F.3d at 1290; Exergen Corp., 575 F.3d at 1326-27.
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` 5
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` Count I fails to incorporate the paragraphs of Emerson’s Eleventh Affirmative
`Defense regarding alleged inequitable conduct associated with the Brownrigg
`Patents. Paragraph 12 of Count I ignores Emerson’s Eleventh Affirmative Defense
`entirely. This is in sharp contrast to Count II, which incorporates the paragraphs of
`Emerson’s Twelfth Affirmative Defense by reference.
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`
`
`10
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`

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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 11 of 21
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`2.
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`
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`Even If Count I Properly Incorporates Emerson’s Eleventh
`Affirmative Defense, It Still Fails to State a Claim upon
`which Relief can be Granted
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`Even if Count I arguably incorporates Emerson’s Eleventh Affirmative
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`
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`Defense (which it does not), Emerson’s inequitable conduct allegations still fail to
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`state a claim upon which relief can be granted. More particularly, despite the fact
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`that Emerson’s Eleventh Affirmative Defense includes 64 paragraphs and spans 11
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`pages, it fails to allege, with requisite specificity, the who, what, when, where, why
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`and how of the material misrepresentations or omissions allegedly committed by IP
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`CO and/or its attorneys. Exergen, 575 F.3d at 1327-29. Those allegations, moreover,
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`do not give rise to a reasonable inference of both (1) knowledge of the alleged
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`misrepresentations or omissions, and (2) specific intent to deceive the PTO. Id. at
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`1330.
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`For example, nowhere in the entirety of the Eleventh Affirmative Defense
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`does Emerson allege with requisite specificity that any person involved with the IP
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`CO Patents knew and understood the purported materiality of the October 14, 2008,
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`Response and/or December 16, 2008, Advisory Action (hereinafter referred to as the
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`“Response / Advisory Documents”). Nor does the Eleventh Affirmative Defense
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`allege with specificity that the same person, at the relevant time, made a conscious
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`decision to withhold them from the PTO in connection with the patent applications
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`11
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 12 of 21
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`that issued as the asserted ‘314, ‘471 and ‘479 patents, with a specific intent to
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`deceive the PTO. Drew Techs., Inc. v. Robert Bosch, L.L.C., No. 12-15622, 2014
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`WL 562458, at *3 (E.D. Mich. Feb. 13, 2014) (alleging that one or more individuals
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`committed a particular act is improper because it fails to allege that any one
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`individual necessarily committed the particular act). In addition, Emerson’s failure
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`to explain with requisite specificity what the purported materiality of the Response /
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`Advisor Documents is, how it relates to the asserted ‘314, ‘471 and ‘479 patents (if
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`at all), and why it is not cumulative of information that is already before the PTO, is
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`fatal under Therasense and Exergen . Therasense, 649 F.3d at 1312; Exergen, 575
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`F.3d at 1329-30; see also BlackBerry Ltd. v. Typo Products LLC, No.
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`14-CV-00023-WHO, 2014 WL 1867009, at *4 (N.D. Cal. May 8, 2014) (pleading
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`must affirmatively identify the specific claims of the asserted patent to which the
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`withheld reference is relevant, the relevant limitations within those claims of the
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`asserted patent, and where in the withheld references the material information is
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`found); Cave Consulting Grp., Inc. v. Optuminsight, Inc., No. 15-CV-03424-JCS,
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`2016 WL 1611042, at *13 (N.D. Cal. Apr. 22, 2016) (pleading must identify the
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`specific claims that are implicated by the various prior art materials).
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`Emerson also fails to explain how the so-called “modified” abstract from the
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`‘314 patent is material to patentability of the ‘314 patent or any other asserted
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`12
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 13 of 21
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`Brownrigg patent (if at all). Emerson also fails to identify what the so-called changes
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`to the claims of the ‘314 patent are and how they are material to the patentability of
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`the ‘314 patent or any other asserted Brownrigg patent (if at all). The same is true
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`with respect to the so-called “new matter” added to the ‘314 Patent—Emerson fails
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`to identify the alleged “new matter” with requisite specificity and how it is material
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`to the patentability of the ‘314 patent or any other asserted Brownrigg patent (if at
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`all). BlackBerry Ltd., 2014 WL 1867009, at *4; Cave Consulting Grp., Inc. 2016
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`WL 1611042, at *13.
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`Instead, Emerson’s Eleventh Affirmative Defense contains a smattering of
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`patent applications, issued patents, names, dates and events; but none of
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`it—individually or collectively—equates to inequitable conduct under the Exergen
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`and Therasense heightened pleading standard. Stated differently, Emerson fails to
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`connect the dots in a manner that can withstand a challenge in the post-Exergen and
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`Therasense world. Because Emerson’s Eleventh Affirmative Defense and Count I of
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`Emerson’s Counterclaims fail to state a claim upon which relief can be granted, they
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`should be stricken and dismissed by the Court. Therasense, 649 F.3d at 1312;
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`Exergen, 575 F.3d at 1329-30.
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`
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`13
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 14 of 21
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`The Petite Patents
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`B.
`
`
`
`
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`Count II of Emerson’s Counterclaims, which alleges inequitable conduct
`
`1.
`
`
`
`Count II, Alleging Inequitable Conduct Associated with the
`Petite Patents, Fails to State a Claim upon which Relief can
`be Granted
`
`associated with the Petite Patents, also fails to meet the heightened pleading standard
`
`set forth in Therasense and Exergen. The entirety of Count II (Paragraphs 13 and 14)
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`with respect to the Petite Patents is set forth below:
`
`COUNT II - DECLARATION OF UNENFORCEABILITY
`PETITE PATENTS
`
`13. Emerson Defendants re-allege and incorporate by reference its
`allegations as set forth herein in paragraphs 1 through 9 of Emerson’s
`Counterclaims and paragraphs 377
`through 424 of Emerson
`Defendants’ Twelfth Defense, above.
`
`14. The claims of the ‘692, ‘661, ‘732, ‘780, ‘893, 492, and ‘842
`patents are unenforceable because of
`the
`inequitable conduct
`committed either while prosecuting those applications directly or by
`the doctrine of infectious unenforceability through inequitable conduct
`in procuring the ‘767, ‘661 and ‘059 patent applications.
`
`(TX Dkt. No. 106).
`
`Clearly, no facts sufficient to meet the heightened pleading standard for
`
`inequitable conduct have been alleged in the text of Count II; however, it (unlike
`
`Count I discussed above) incorporates allegations by reference—in this case the
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`paragraphs of Emerson’s Twelfth Affirmative Defense. (TX. Dkt. No. 106 ¶¶
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`
`
`14
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`

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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 15 of 21
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`377-424). Thus, SIPCO’s arguments above and below apply equally to Emerson’s
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`Twelfth Affirmative Defense and Count II of its counterclaims.
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`Although Emerson’s Twelfth Affirmative Defense includes 47 paragraphs
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`and spans 13 pages, it fails to allege with requisite specificity the who, what, when,
`
`where, why and how of the material misrepresentations or omissions allegedly
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`committed by SIPCO and/or its attorneys. Exergen, 575 F.3d at 1327-29. And the
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`facts it does allege do not give rise to a reasonable inference of scienter. Id. at 1330.
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`More particularly, nowhere in the entirety of the Twelfth Affirmative Defense
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`does Emerson recite with requisite specificity that any person involved with the
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`Petite Patents knew of the Kahn prior art reference, understood its purported
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`materiality at the relevant time, and withheld it from the PTO with a specific intent
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`to deceive. Nor does Emerson identify the specific claims, and which limitations in
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`those claims, the allegedly withheld Kahn reference is relevant to and where in Kahn
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`reference information that is material to inequitable conduct is found. BlackBerry
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`Ltd., 2014 WL 1867009, at *4; Cave Consulting Grp., Inc. 2016 WL 1611042, at
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`*13.
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`Significantly, Emerson fails to allege how, with requisite legal support and
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`factual specificity, a PTO inter partes review proceeding occurring in 2016 and
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`involving the Kahn prior art reference could somehow retroactively establish the
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`15
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`

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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 16 of 21
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`so-called materiality of that reference at the time the Petite Patents were being
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`prosecuted many years earlier. Exergen, 575 F.3d 1312, 1330 (improper to “assume
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`that an individual, who generally knew that a reference existed, also knew of the
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`specific material information contained in that reference”). Instead, Emerson
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`weaves a convoluted tale of disparate allegations amounting to nothing more than a
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`hodgepodge of patent applications, issued patents, names, dates and so-called
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`events—none of which are sufficiently explained or connected in a manner that
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`equates to inequitable conduct under the Exergen / Therasense standard.
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`Therasense, 649 F.3d at 1312; Exergen, 575 F.3d at 1329-30.
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`C.
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`The ‘062 and ‘511 Patents
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`1.
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`The ‘062 and ‘511 Patents are asserted in a separate case
`pending in this Court (Civ. A. No. 1:15-cv-00319-AT, Dkt.
`No. 1) and Leave of This Court is Required to Amend
`Emerson’s Declaratory Judgment Complaint and Add
`Inequitable Conduct Allegations with respect to the ‘062
`and ‘511 Patents
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`The Georgia Action (Civ. A. No. 1:15-cv-00319-AT) is a Declaratory
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`Judgment Action Emerson filed in this District on January 15, 2015. (GA Dkt. No.
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`1). The Georgia Action concerns two patents—IP CO’s ‘062 Patent (a Brownrigg
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`Patent) and SIPCO’s ‘511 Patent (a Petite Patent). Emerson has not requested and
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`thus has not obtained leave of this Court to amend its Declaratory Judgment
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`Complaint and assert unenforceability of the ‘062 and ‘511 Patents in the Georgia
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 17 of 21
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`Action. Absent requisite leave of this Court, Emerson’s affirmative defenses and
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`counterclaims alleging inequitable conduct with respect to the ‘062 and ‘511 patents
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`should be dismissed and stricken in this or any other action.6
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`2.
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`Emerson’s Eleventh and Twelfth Affirmative Defenses and
`Counts I and II of its Counterclaims Fail to State a Claim
`upon which Relief can be Granted with Respect to the ‘062
`and ‘511 Patents
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`Emerson has failed to allege any facts that support a finding of inequitable
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`conduct with respect to the ‘062 and ‘511 patents. Indeed, nothing set forth in the
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`Eleventh or Twelfth Affirmative Defenses remotely establishes inequitable conduct
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`in connection with those patents, and the ‘511 patent is not even mentioned in Count
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`II of Emerson’s Counterclaims (Count I identifies the ‘062 Patent). Having failed to
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`meet the Exergen and Therasense standard of pleading, any and all allegations
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` 6
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` Indeed, through a myriad of motions filed in the Georgia Action and Texas Action,
`Emerson protested at every conceivable opportunity to SIPCO’s claims proceeding
`in Texas under the first to file rule. (TX Dkt. Nos. 10, 13, 71) (GA Dkt. Nos. 51, 81).
`Having convinced the Eastern District of Texas that the Northern District of Georgia
`is the first-filed court, Emerson should be precluded from bringing any claims with
`respect to the ‘062 and ‘511 patents in the Texas Action. Furthermore, Emerson
`should be precluded from bringing any inequitable conduct claims (or asserting any
`inequitable conduct defenses) in the Texas Action because they are compulsory
`claims in the Georgia Action and, as set forth above, leave of Court has not been
`requested or granted. Finally, because the Georgia Action has been pending for 19
`months and Emerson has not sought leave to amend and add inequitable conduct, it
`should be precluded from doing so at this juncture in the litigation.
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 18 of 21
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`relating to so-called inequitable conduct committed in connection with the ‘062 and
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`‘511 Patents should be stricken and/or dismissed.
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`IV. CONCLUSION
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`For the reasons set forth above, SIPCO respectfully requests that this Court
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`dismiss Counts I and II of Emerson’s Counterclaims, strike Emerson’s Eleventh and
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`Twelfth Affirmative Defenses and dismiss and strike any and all reference to
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`inequitable conduct in association with the ‘062 and ‘511 Patents.
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 19 of 21
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`Respectfully submitted, this 28th day of July, 2016.
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`/s/ J. Christopher Fox II
`J. Christopher Fox, II
`Georgia Bar No. 272527
`Michael Coleman
`Georgia Bar No. 177635
`Thompson Hine LLP
`Two Alliance Center, Suite 1600
`3560 Lenox Road
`Atlanta, Georgia 30326
`Telephone: 404-541-2900
`Facsimile: 404-541-2905
`Chris.Fox@ThompsonHine.com
`Michael.Coleman@ThompsonHine.com
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`Paul J. Cronin, Pro hac vice
`James C. Hall, Pro hac vice
`Timothy J. Reppucci, Pro hac vice
`Nutter, McClennen & Fish LLP
`155 Seaport Boulevard
`Boston, Massachusetts 02210-2604
`Telephone: 617-439-2000
`Facsimile: 617-310-9000
`pcronin@nutter.com
`jhall@nutter.com
`treppucci@nutter.com
`Counsel for SIPCO, LLC and IP CO, LLC
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`CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1
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`The undersigned hereby certifies that this filing was prepared using one of the
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`font and point selections approved by this Court in Local Rule 5.1C. Specifically,
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`Times New Roman font was used in 14 point.
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`J. Christopher Fox, II
`J. Christopher Fox, II
`Georgia Bar No. 272527
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`Case 1:16-cv-02690-AT Document 116-1 Filed 07/28/16 Page 21 of 21
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`CERTIFICATE OF SERVICE
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`This is to certify that I have this day served all counsel of record with a copy
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`of the within and foregoing PLAINTIFFS’ MEMORANDUM IN SUPPORT OF
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`THEIR MOTION TO DISMISS AND STRIKE COUNTERCLAIMS AND
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`AFFIRMATIVE DEFENSES OF INEQUITABLE CONDUCT using the Court’s
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`ECF filing system, which will automatically send a copy to all counsel of record
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`registered to receive service thereby.
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`J. Christopher Fox, II
`J. Christopher Fox, II
`Georgia Bar No. 272527
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`21
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