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`Exhibit C
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 1 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 2 of 34 PageID #: 113
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`|
`|
`|
`|
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`||
`
`| Civil Action No. 1:15-cv-00319-AT
`|
`| JURY TRIAL DEMANDED
`|
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`||
`
`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:
`
`
`
`
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`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
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`
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`or information sufficient to form a belief about the remaining factual allegations of
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`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.
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`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.
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`Defendants admit that the claim is purportedly brought for a declaration by this
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`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
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`infringed by Plaintiffs.
`
`8.
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`Defendants admit that Paragraph 8 purports to state that this Court has
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`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
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`9.
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`Defendants admit that SIPCO is Georgia corporation, maintains a
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`place of business in Georgia and conducts business in Georgia. Defendants lack
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`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
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`place of business in Georgia and conducts business in Georgia. Defendants lack
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`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).
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`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.
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`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
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`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
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`19. Defendants admit that IP CO and SIPCO share a place of business in
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`Georgia and that T. David Petite is a member of each entity. Defendants lack
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`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).
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`6
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`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
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`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
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`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
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`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
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`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
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`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
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`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
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`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
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`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
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`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
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`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
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 18 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 19 of 34 PageID #: 130
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`11.
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`In the early 1990’s, through research and development conducted in
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`his basement, T. David Petite invented a large number of wireless control and
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`distribution technology applications. The applications include integrating the
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`internet as a derived channel for data back-haul and data aggregation points. The
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`inventions resulting from his efforts include, but are not limited to, various ways of
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`moving data as economically and seamlessly as possible. Further investment of
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`tens of millions of dollars from investors led to the development of, amongst other
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`applications, the smart grid technology purchased by Landis + Gyr. This
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`technology developed by T. David Petite and SIPCO is now implemented in
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`millions of devices around the world by Landis + Gyr.
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`12.
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`SIPCO maintains ownership of the software, firmware, hardware and
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`patent portfolio that resulted from T. David Petite’s efforts
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`(“core technology”). Together SIPCO and IP CO continue to develop technology
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`and deploy wireless technology applications and wireless technology
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`systems throughout the United States.
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`13.
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`SIPCO’s and IP CO’s applications, systems, and/or technology
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`have been widely recognized as pioneering in various fields of use. As a
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`result, numerous corporations have licensed patent portfolios owned by SIPCO and
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`18
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 19 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 20 of 34 PageID #: 131
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`IP CO. U.S. Patent No. 7,103,511 and U.S. Patent No. 6,044,062 are included in
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`the patent portfolios respectively owned by SIPCO and IP CO.
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`14.
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`Licensees of the patent portfolio include companies operating in the
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`vertical markets of Smart Grid, Building Automation, Industrial Controls, Network
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`Backhaul, Home Appliance, Home Automation and Entertainment, Sensor
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`Monitoring, and Internet Service Provisioning. Licensed products include products
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`using standard wireless mesh protocols such as Zigbee, IEEE 802.15.4, Z-
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`Wave, WirelessHART as well as proprietary wireless protocols.
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`THE PATENTS-IN-SUIT
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`15. U.S. Patent No. 7,103,511 (“the ‘511 Patent”) was duly and legally
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`issued on September 5, 2006.
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`16.
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`The ’511 Patent is entitled “Wireless Communication Networks for
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`Providing Remote Monitoring of Devices.”
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`17.
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`SIPCO owns the ’511 Patent.
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`18. Counterclaim-Defendants had knowledge of the ’511 Patent and
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`knowledge of their infringement of the ‘511 Patent before they filed their
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`Complaint against Counterclaim-Plaintiffs.
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`19. U.S. Patent No. 6,044,062 (“the ‘062 Patent) was duly and legally
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`issued on March 28, 2000.
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`19
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 20 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 21 of 34 PageID #: 132
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`20.
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`The ’062 Patent is entitled “Wireless Network System and Method for
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`Providing Same.”
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`21.
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`IP CO owns the ’062 Patent.
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`22. Counterclaim-Defendants had knowledge of the ’062 Patent and
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`knowledge of their infringement of the ‘062 Patent before they filed their
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`Complaint against Counterclaim-Plaintiffs.
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`LICENSE AGREEMENT
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`23. On or about October 25, 2011, SIPCO and IP CO entered into a
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`license agreement with Emerson Electric Co. through its White-Rodgers Division
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`(hereinafter referred to as the “License Agreement”).
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`24.
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`Through the License Agreement, the White-Rogers Division of
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`Emerson Electric Co. received a license to certain patents owned by SIPCO and IP
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`CO, including U.S. Patent No. 7,103,511 and U.S. Patent No. 6,044,062. The
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`scope of the license granted to the White-Rogers Division of Emerson Electric Co.,
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`including any licensed field of use and any licensed products identified therein, is
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`governed by the specific terms of the License Agreement.
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`25. Counterclaim-Defendant Emerson Electric Co. is not licensed under
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`the License Agreement other than through the license granted to its White-Rodgers
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`Division, as governed by the specific terms of the License Agreement.
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`20
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 21 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 22 of 34 PageID #: 133
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`26. Counterclaim-Defendant Emerson Electric Co. does not have a license
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`to the ‘511 Patent and/or ‘062 Patent other than through the license granted to its
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`White-Rodgers Division, as governed by the specific terms of the License
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`Agreement.
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`27. Counterclaim-Defendant Fisher-Rosemount Systems, Inc. is not a
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`party to the License Agreement and is not licensed under the License Agreement.
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`28. Counterclaim-Defendant Fisher-Rosemount Systems, Inc. does not
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`have a license to the ‘511 Patent and/or ‘062 Patent.
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`29. Counterclaim-Defendant Rosemount, Inc. is not a party to the License
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`Agreement and is not licensed under the License Agreement.
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`30. Counterclaim-Defendant Rosemount, Inc. does not have a license to
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`the ‘511 Patent and/or ‘062 Patent.
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`31. By virtue of entering into the License Agreement with SIPCO and IP
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`CO on or about October 25, 2011, Counterclaim-Defendant Emerson Electric Co.
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`had knowledge of the ‘511 Patent and ‘062 Patent and knowledge of its
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`infringement thereof.
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`32. Upon information and belief, Counterclaim-Defendant Fisher-
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`Rosemount Systems, Inc. has had knowledge of the ‘511 Patent and ‘062 Patent
`
`21
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 22 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 23 of 34 PageID #: 134
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`and knowledge of its infringement thereof since at least as early as October 25,
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`2011.
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`33. Upon information and belief, Counterclaim-Defendant Rosemount,
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`Inc. has had knowledge of the ‘511 Patent and ‘062 Patent and knowledge of its
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`infringement thereof since at least as early as January 27, 2011.
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`COUNT I
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`(INFRINGEMENT OF U.S. PATENT NO. 7,103,511)
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`34. Counterclaim-Plaintiffs hereby restate and re-allege the allegations set
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`forth in the preceding paragraphs and incorporate them by reference.
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`35. On information and belief, Counterclaim-Defendants have been and
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`now are directly infringing, literally or under the doctrine of equivalents, one or
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`more claims of the ’511 Patent (including, but not limited to, claim numbers 1, 8,
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`27, and 44) pursuant to 35 U.S.C. § 271(a) by making, using, offering for sale,
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`selling within the United States, or importing into the United States their products,
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`including but not limited to the following infringing lines of products:
`
`i.
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`Gateways, including but not limited to the Rosemount 1420
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`Smart Wireless Gateway and the Wireless I/O Card (WIOC)
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`with Field Link lines of products;
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`22
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 23 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 24 of 34 PageID #: 135
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`ii.
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`Field Devices, including, but not limited to, the Rosemount
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`3308 Series, Rosemount 3051S, Rosemount 3051 Wireless
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`Pressure Transmitter, Rosemount 2051 Wireless Pressure
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`Transmitter, Rosemount 848T Wireless Temperature
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`Transmitter, Rosemount 648 Single-Point Wireless
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`Temperature Transmitter, Rosemount 248 basic temperature
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`transmitter, Rosemount 2160 Wireless Level Switch,
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`Rosemount 708 Wireless Acoustic Transmitter, Rosemount 702
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`Wireless Discrete Transmitter, Rosemount 6081 Wireless
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`Transmitter for pH and ORP and Conductivity, Fisher 4320
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`wireless position monitor, TopWorx 4310 Wireless Position
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`Monitor, Roxar Wireless sand/erosion monitoring transmitter,
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`CSI 9420 Wireless Vibration Transmitter lines of products;
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`iii.
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`Adapters, including but not limited to, the Rosemount Smart
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`Wireless THUM™ Adapter and Fisher 775 THUM™ lines of
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`products; and
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`iv.
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`Monitoring and control software, including but not limited to,
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`the AMS, Ovation, and DeltaV lines of products.
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`23
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`Case 1:15-cv-00319-AT Document 10 Filed 07/27/15 Page 24 of 33Case 6:15-cv-00907-RWS-KNM Document 10-4 Filed 12/10/15 Page 25 of 34 PageID #: 136
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`36. Counterclaim-Defendants are liable for infringement of the ’511
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`Patent pursuant to 35 U.S.C. § 271(a).
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`37. On information and belief, Counterclaim-Defendants have been and
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`now are indirectly infringing, literally or under the doctrine of equivalents, one or
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`more claims of the ’511 Patent (including, but not limited to, claims 1, 8, 27, and
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`44) pursuant to 35 U.S.C. § 271(b) or (c) by actively inducing infringement or
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`contributing to the infringement of the ’511 Patent in the United States, by
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`providing or selling at least the products identified above to customers or users of
`
`those products. Upon information and belief, Counterclaim-Defendants have been
`