IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
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`SIPCO, LLC, et al.,
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`Civil Action No. 6:15-cv-907
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` JURY TRIAL DEMANDED
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`PLAINTIFF SIPCO, LLC’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS AGAINST
`EMERSON ELECTRIC CO., EMERSON PROCESS MANAGEMENT, LLP,
`FISHER-ROSEMOUNT SYSTEMS, INC., AND ROSEMOUNT, INC.
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`Pursuant to P.R. 3-1 and 3-2 and the Court’s Order dated January 26, 2016, plaintiff
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`SIPCO, LLC hereby serves its Disclosure of Asserted Claims and Infringement Contentions on
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`Defendants Emerson Electric Co., Emerson Process Management, LLP, Fisher-Rosemount
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`Systems, Inc., and Rosemount Inc. (hereinafter, “Emerson” or “Defendants”). This disclosure is
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`made solely for the purpose of this action. Because the Court has not yet construed the asserted
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`claims, these contentions are based on Plaintiff’s current understanding of the meanings of claim
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`terms. In addition, discovery in this matter has not begun, and all evidence relied on by Plaintiff
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`is based on Plaintiff’s own investigation of publicly available information and product testing.
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`Plaintiff therefore reserves the right to seek leave to supplement this disclosure in light of the
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`Court’s constructions of the asserted claims and/or if its understanding of the accused products
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`changes as additional evidence (e.g., source code) is provided by the Defendants.
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`I.
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`L.R. 3-1(a): Asserted Claims and (b): Accused Instrumentalities
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`A.
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`Plaintiff asserts claims 1-4, 6, 8-11, 13-21, and 25 of U.S. Patent No. 7,697,492 (“the
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`‘492 patent”) against the products identified in Exhibit A, attached hereto.
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`Plaintiffs,
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` v.
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`EMERSON ELECTRIC CO., et al.,
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`Defendants.
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`Petitioner Emerson's Exhibit 1008
`Page 1 of 8
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`B.
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`Plaintiff asserts claims 1, 3-8, 11-14, 24-32, 34, 36-38, 42, 43, 46-49, 51-57, and 59-64 of
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`U.S. Patent No. 6,437,692 (“the ‘692 patent”) against the products identified in Exhibit B,
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`attached hereto.
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`C.
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`Plaintiff asserts claims 1, 5, 6, 8-12, and 14 of U.S. Patent No. 7,468,661 (“the ‘661
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`patent”) against the products identified in Exhibit C, attached hereto.
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`D.
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`Plaintiff asserts claims 1-3, 10, 17, 18, and 37 of U.S. Patent No. 6,914,893 (“the ‘893
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`patent”) against the products identified in Exhibit D, attached hereto.
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`E.
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`Plaintiff asserts claims 1, 2, and 4-8 of U.S. Patent No. 8,754,780 (“the ‘780 patent”)
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`against the products identified in Exhibit E, attached hereto.
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`F.
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`Plaintiff asserts claims 1, 7, 9, 16, and 17 of U.S. Patent No. 8,908,842 (“the ‘842
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`patent”) against the products identified in Exhibit F, attached hereto.
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`G.
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`Plaintiff asserts claims 1, 13, 14, 16-19, and 31-35 of U.S. Patent No. 8,013,732 (“the
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`‘732 patent”) against the products identified in Exhibit G, attached hereto.
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`The Asserted Claims and Accused Products of Exhibits A-G are identified based on information
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`that is publicly available and known to Plaintiff at this time. Plaintiff reserves all rights to assert
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`additional or alternative claims and/or accused products in light of information gained during
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`discovery and/or in light of the Court’s constructions of asserted claim terms.
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`2
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`Petitioner Emerson's Exhibit 1008
`Page 2 of 8
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`II.
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`L.R. 3-1(c): Claim Charts
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`A.
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`Attached hereto as Exhibit H is a chart setting forth, separately for each asserted claim of
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`the ‘492 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`B.
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`Attached hereto as Exhibit I is a chart setting forth, separately for each asserted claim of
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`the ‘692 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`C.
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`Attached hereto as Exhibit J is a chart setting forth, separately for each asserted claim of
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`the ‘661 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`D.
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`Attached hereto as Exhibit K is a chart setting forth, separately for each asserted claim of
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`the ‘893 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`E.
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`Attached hereto as Exhibit L is a chart setting forth, separately for each asserted claim of
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`the ‘780 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`F.
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`Attached hereto as Exhibit M is a chart setting forth, separately for each asserted claim of
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`the ‘842 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`3
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`Petitioner Emerson's Exhibit 1008
`Page 3 of 8
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`G.
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`Attached hereto as Exhibit N is a chart setting forth, separately for each asserted claim of
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`the ‘732 patent, each accused apparatus, method, composition or other instrumentality (“Accused
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`Products”).
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`III. L.R. 3-1(d): Literal Infringement/Doctrine of Equivalents
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`Based on current understanding of the claim language and publicly available information
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`regarding the Accused Products, and without notice of any non-infringement position from the
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`Defendants, Plaintiff currently asserts that each element of each asserted claim is literally
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`infringed, directly and/or indirectly, by Defendants’ manufacture, sale, and offers to sell the
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`Accused Products. Specifically, upon information and belief, Defendants directly infringe the
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`asserted claims by making, using, selling and offering to sell WirelessHART enabled products,
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`including those known to Plaintiff and listed on Exhibits A-G, in the United States. Also upon
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`information and belief, Defendants indirectly infringe the asserted claims because they have had
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`knowledge of the patents-in-suit and have induced their customers (including BP) to infringe the
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`asserted claims and have sold or offered to sell the Accused Products knowing them to be
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`especially made or especially adapted for use in infringement of the asserted claims and not a
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`staple article or commodity of commerce suitable for substantial noninfringing use. Any claim
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`element not literally present in the Accused Products as set forth in the Exhibits H-N is
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`nonetheless met under the doctrine of equivalents because any differences between such claim
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`element and the Accused Products are insubstantial and/or the Accused Products perform
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`substantially the same function, in substantially the same way to achieve substantially the same
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`result as the corresponding claim element. Plaintiff also specifically asserts that certain elements
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`of the asserted claims are also infringed (in addition, or alternatively) under the doctrine of
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`equivalents, as set forth in Exhibits H-N. In addition, Plaintiff reserves the right to request leave
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`4
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`Petitioner Emerson's Exhibit 1008
`Page 4 of 8
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`to amend these contentions to assert infringement solely under the doctrine of equivalents with
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`respect to any particular claim element(s) if warranted by discovery received from the plaintiffs,
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`or a claim construction ruling from the Court, or both.
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`IV.
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`L.R. 3-1(e): Priority
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`A.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘492 patent claim priority to U.S. Patent Application No. 09/102,178, filed on June 22, 1998.
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`B.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘692 patent claim priority to U.S. Patent Application No. 60/146,817, filed on June 22, 1998.
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`C.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘661 patent claim priority to U.S. Patent Application No. 09/102,178, filed on June 22, 1998.
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`D.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘893 patent claim priority to U.S. Patent Application No. 09/102,178, filed on June 22, 1998.
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`E.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘780 patent claim priority to U.S. Patent Application No. 09/102,178, filed on June 22, 1998.
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`F.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘842 patent claim priority to U.S. Patent Application No. 60/040,316, filed on February 14, 1997.
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`G.
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`Upon current information and belief, Plaintiff understands that the asserted claims of the
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`‘732 patent claim priority to U.S. Patent Application No. 09/172,554, filed on June 22, 1998.
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`5
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`Petitioner Emerson's Exhibit 1008
`Page 5 of 8
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`V.
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`L.R. 3-2: Document Production Accompanying Disclosure
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`Pursuant to Patent L.R. 3-2, Plaintiff will produce the following documents to Defendants
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`contemporaneously herewith on the below date. 1
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`A.
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`B.
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`Plaintiff is not aware of any documents responsive to P.R. 3-2(a).
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`Plaintiff’s documents evidencing conception, reduction to practice, design, and
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`development of the invention in the asserted patents, created on or before the priority date
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`identified pursuant to P.R. 3-1(e), will be produced with the following Bates numbers: SITX
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`00000001 – 00001463.2
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`C.
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`Plaintiff’s documents responsive to P.R. 3-2(c) will be produced with the following Bates
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`numbers: SITX 00001464 – 00031916.
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`1. File History of U.S. Patent No. 6,437,692 – SITX 00001464 – 00001905
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`2. File History of U.S. Patent No. 6,914,893 – SITX 00001906 – 00002158
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`3. File History of U.S. Patent No. 7,468,661 – SITX 00002159 – 00002360
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`4. File History of U.S. Patent No. 7,697,492 – SITX 00002361 – 00002669
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`5. File History of U.S. Patent No. 8,013,732 – SITX 00002670 – 00031550
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`1 Plaintiff will also produce copies of U.S. Patent No. 6,437,692; U.S. Patent No. 6,914,893; U.S.
`Patent No. 7,468,661; U.S. Patent No. 7,697,492; U.S. Patent No. 8,013,732; U.S. Patent No.
`8,754,780; and U.S. Patent No. 8,908,842 with the following Bates numbers: SITX 00109344 –
`00109544.
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` A protective order has not been issued yet in this case. Until the Court enters a
`protective order in this case and pursuant to P.R. 2.2, documents identified by production number
`SITX 00000001– 00001463, have been marked “ATTORNEYS’ EYES ONLY.”
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` 2
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`6
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`Petitioner Emerson's Exhibit 1008
`Page 6 of 8
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`6. File History of U.S. Patent No. 8,754,780 – SITX 00031551 – 00031709
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`7. File History of U.S. Patent No. 8,908,842 – SITX 00031710 – 00031916
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`Dated: February 29, 2016
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`/s/ James C. Hall
`T. John Ward, State Bar No. 00794818
`Claire Henry, State Bar No. 24053063
`Ward, Smith & Hill, PLLC
`1127 Judson Rd., Ste. 220
`Longview, Texas 75601
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`Email: jw@wsfirm.com
`Email: ch@wsfirm.com
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`Paul J. Cronin, Admitted July 16, 2012
`(MA Bar No. 641230)
`James C. Hall, Admitted April 9, 2012
`(MA Bar No. 656019)
`Nutter, McClennen & Fish LLP
`155 Seaport Boulevard
`Boston, MA 02210-2604
`Telephone: (617) 439-2000
`Facsimile: (617) 310-9000
`Email: pcronin@nutter.com
`Email: jhall@nutter.com
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`ATTORNEYS FOR PLAINTIFFS
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`Petitioner Emerson's Exhibit 1008
`Page 7 of 8
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`CERTIFICATE OF SERVICE
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`I, James C. Hall, hereby certify that the foregoing document and accompanying exhibits
`have been served upon all counsel of record via electronic mail and conventional mail, pursuant
`to the Federal Rules of Civil Procedure and the Local Rules for the Eastern District of Texas.
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`/s/ James C. Hall
`James C. Hall
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`8
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`Petitioner Emerson's Exhibit 1008
`Page 8 of 8
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