Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 1 of 18 PageID #: 410
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
`
`Plaintiffs,
`
`
`
`
`
`
`
`v.
`
`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`
`
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`Civil Action No. 6:15-CV-907-JRG-KNM
`
`
`EMERSON ELECTRIC CO., FISHER-ROSEMOUNT SYSTEMS, INC., AND
`ROSEMOUNT INC.’S ANSWER
`
`Defendants Emerson Electric Co., Fisher-Rosemount Systems, Inc., and Rosemount Inc.,
`
`(collectively, “Defendants”), answer the Counterclaims of Plaintiffs SIPCO, LLC (“SIPCO”) and
`
`IP CO, LLC (d/b/a/INTUS IQ) (“IP CO”) (collectively, “Plaintiffs”), as follows in the
`
`correspondingly numbered paragraphs:
`
`1.
`
`2.
`
`3.
`
`Admitted.
`
`Admitted.
`
`Defendants admit that Emerson Electric Co. is a corporation organized and
`
`existing under the laws of the State of Missouri and deny the remaining allegations of this
`
`Paragraph.
`
`4.
`
`5.
`
`Admitted.
`
`Admitted.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`SIPCO LLC, and
`IP CO., LLC (d/b/a INTUS IQ)
`
`Plaintiffs,
`
`
`
`
`
`
`
`v.
`
`EMERSON ELECTRIC CO., FISHER-
`ROSEMOUNT SYSTEMS, INC., and
`ROSEMOUNT INC.,
`
`
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`Civil Action No. 6:15-CV-907-JRG-KNM
`
`
`EMERSON ELECTRIC CO., FISHER-ROSEMOUNT SYSTEMS, INC., AND
`ROSEMOUNT INC.’S ANSWER
`
`Defendants Emerson Electric Co., Fisher-Rosemount Systems, Inc., and Rosemount Inc.,
`
`(collectively, “Defendants”), answer the Counterclaims of Plaintiffs SIPCO, LLC (“SIPCO”) and
`
`IP CO, LLC (d/b/a/INTUS IQ) (“IP CO”) (collectively, “Plaintiffs”), as follows in the
`
`correspondingly numbered paragraphs:
`
`1.
`
`2.
`
`3.
`
`Admitted.
`
`Admitted.
`
`Defendants admit that Emerson Electric Co. is a corporation organized and
`
`existing under the laws of the State of Missouri and deny the remaining allegations of this
`
`Paragraph.
`
`4.
`
`5.
`
`Admitted.
`
`Admitted.
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 2 of 18 PageID #: 411
`
`6.
`
`Admitted that, in general, claims for patent infringement arise under the cited
`
`statutes; denied that the Complaint actually asserts a claim for patent infringement under the
`
`cited statutes.
`
`7.
`
`8.
`
`9.
`
`Admitted.
`
`Denied.
`
`Denied.
`
`10. Denied.
`
`11. Admitted.
`
`12. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`13. Defendants admit knowledge of the ‘492 patent before the filing of the Complaint
`
`and deny the remaining allegations of this Paragraph.
`
`14. Denied.
`
`15. Admitted.
`
`16. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`17. Defendants admit knowledge of the ‘692 patent before the filing of the Complaint
`
`and deny the remaining allegations of this Paragraph.
`
`18. Denied.
`
`19. Admitted.
`
`- 2 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 3 of 18 PageID #: 412
`
`20. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`21. Defendants admit knowledge of the existence of the ‘893 patent before the filing
`
`of the Complaint and deny the remaining allegations of this Paragraph.
`
`22. Denied.
`
`23. Admitted.
`
`24. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`25. Defendants admit knowledge of the existence of the ‘516 patent before the filing
`
`of the Complaint and deny the remaining allegations of this Paragraph.
`
`26. Denied.
`
`27. Admitted.
`
`28. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`29. Defendants admit knowledge of the ‘661 patent before the filing of the Complaint
`
`and deny the remaining allegations of this Paragraph.
`
`30. Denied.
`
`31. Admitted.
`
`32. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`- 3 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 4 of 18 PageID #: 413
`
`33. Defendants admit knowledge of the ‘314 patent before the filing of the Complaint
`
`and deny the remaining allegations of this Paragraph.
`
`34. Denied.
`
`35. Admitted.
`
`36. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`37. Defendants admit knowledge of the existence of the ‘471 patent and deny the
`
`remaining allegations of this Paragraph.
`
`38. Denied.
`
`39. Admitted.
`
`40. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`41. Defendants admit knowledge of the existence of the ‘496 patent and deny the
`
`remaining allegations of this Paragraph.
`
`42. Denied.
`
`43. Admitted.
`
`44. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`45. Defendants admit knowledge of the existence of the ‘780 patent and deny the
`
`remaining allegations of this Paragraph.
`
`46. Denied.
`
`- 4 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 5 of 18 PageID #: 414
`
`47. Admitted.
`
`48. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`49. Denied.
`
`50. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`51. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`52. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`53. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`54. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`55. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this Paragraph, and therefore deny them.
`
`56. Defendants admit that they sell and offer for sale products under the brand name
`
`“Smart Wireless Solutions.” Defendants lack knowledge or information sufficient to form a
`
`belief as to the truth of the remaining allegations of this Paragraph, and therefore deny them.
`
`57. Defendants admit that they sell and offer for sale products under the brand name
`
`“Smart Wireless Solutions” and that the branded products may include gateways, devices,
`
`- 5 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 6 of 18 PageID #: 415
`
`sensors, and software that support some aspects of the WirelessHART standard. Defendants lack
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
`
`of this Paragraph, and therefore deny them.
`
`58. Defendants admit that gateways may receive wireless messages according to
`
`some aspects of the WirelessHART standard. Defendants lack knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations of this Paragraph, and
`
`therefore deny them
`
`59. Denied.
`
`60. Admitted.
`
`61. Admitted that Emerson Electric Co. received a license to certain patents owned by
`
`SIPCO and IP CO, including the ‘511, ‘062, ‘516, ‘492, ‘692, ‘661, ‘893, ‘314, ‘471, and other
`
`patents, and that the license had specific terms including field of use and licensed products; the
`
`remaining contentions of this Paragraph are denied.
`
`62. Denied.
`
`63. Denied.
`
`64. Denied.
`
`65. Denied.
`
`66. Denied.
`
`67. Denied.
`
`- 6 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 7 of 18 PageID #: 416
`
`68. Admitted that Emerson Electric Co. had knowledge of the existence of the ‘511,
`
`‘062, ‘516, ‘492, ‘692, ‘661, ‘893, and 314 patents before October 25, 2011 and denied as to the
`
`remaining allegations of this Paragraph.
`
`69. Admitted that Fisher-Rosemount Systems, Inc. had knowledge of the existence of
`
`the ‘511, ‘062, ‘516, ‘492, ‘692, ‘661, ‘893, and 314 patents before October 25, 2011 and denied
`
`as to the remaining allegations of this Paragraph.
`
`70. Admitted that Rosemount, Inc. had knowledge of the existence of the ‘511, ‘062,
`
`‘516, ‘492, ‘692, ‘661, ‘893, and 314 patents before October 25, 2011 and denied as to the
`
`remaining allegations of this Paragraph.
`
`71. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`72. Denied.
`
`73. Denied.
`
`74. Denied.
`
`75. Denied.
`
`76. Denied.
`
`77. Denied.
`
`78. Denied.
`
`79. Denied.
`
`80. Denied.
`
`81. Denied.
`
`- 7 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 8 of 18 PageID #: 417
`
`82. Denied.
`
`83. Denied.
`
`84. Denied.
`
`85. Denied.
`
`86. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`87. Denied.
`
`88. Denied.
`
`89. Denied.
`
`90. Denied.
`
`91. Denied.
`
`92. Denied.
`
`93. Denied.
`
`94. Denied.
`
`95. Denied.
`
`96. Denied.
`
`97. Denied.
`
`98. Denied.
`
`99. Denied.
`
`100. Denied.
`
`- 8 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 9 of 18 PageID #: 418
`
`101. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`102. Denied.
`
`103. Denied.
`
`104. Denied.
`
`105. Denied.
`
`106. Denied.
`
`107. Denied.
`
`108. Denied.
`
`109. Denied.
`
`110. Denied.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`114. Denied.
`
`115. Denied.
`
`116. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`117. Denied.
`
`118. Denied.
`
`119. Denied.
`
`- 9 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 10 of 18 PageID #: 419
`
`120. Denied.
`
`121. Denied.
`
`122. Denied.
`
`123. Denied.
`
`124. Denied.
`
`125. Denied.
`
`126. Denied.
`
`127. Denied.
`
`128. Denied.
`
`129. Denied.
`
`130. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`131. Denied.
`
`132. Denied.
`
`133. Denied.
`
`134. Denied.
`
`135. Denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Denied.
`
`139. Defendants restate and incorporate the answer set forth in paragraph 138.
`
`- 10 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 11 of 18 PageID #: 420
`
`140. Denied.
`
`141. Denied.
`
`142. Denied.
`
`143. Denied.
`
`144. Denied.
`
`145. Denied.
`
`146. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`147. Denied.
`
`148. Denied.
`
`149. Denied.
`
`150. Denied.
`
`151. Denied.
`
`152. Denied.
`
`153. Denied.
`
`154. Denied.
`
`155. Denied.
`
`156. Denied.
`
`157. Denied.
`
`158. Denied.
`
`159. Denied.
`
`- 11 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 12 of 18 PageID #: 421
`
`160. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`161. Denied.
`
`162. Denied.
`
`163. Denied.
`
`164. Denied.
`
`165. Denied.
`
`166. Denied.
`
`167. Denied.
`
`168. Denied.
`
`169. Denied.
`
`170. Denied.
`
`171. Denied.
`
`172. Denied.
`
`173. Denied.
`
`174. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`175. Denied.
`
`176. Denied.
`
`177. Denied.
`
`178. Denied.
`
`- 12 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 13 of 18 PageID #: 422
`
`179. Denied.
`
`180. Denied.
`
`181. Denied.
`
`182. Denied.
`
`183. Denied.
`
`184. Denied.
`
`185. Denied.
`
`186. Denied.
`
`187. Denied.
`
`188. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`189. Denied.
`
`190. Denied.
`
`191. Denied.
`
`192. Denied.
`
`193. Denied.
`
`194. Denied.
`
`195. Denied.
`
`196. Denied.
`
`197. Denied.
`
`198. Denied.
`
`- 13 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 14 of 18 PageID #: 423
`
`199. Denied.
`
`200. Denied.
`
`201. Denied.
`
`202. Defendants restate and incorporate the answers set forth in the preceding
`
`paragraphs.
`
`203. Denied.
`
`204. Denied.
`
`205. Denied.
`
`206. Denied.
`
`207. Denied.
`
`208. Denied.
`
`209. Denied.
`
`210. Denied.
`
`211. Denied.
`
`212. Denied.
`
`213. Denied.
`
`214. Denied.
`
`215. Denied.
`
`216. Denied.
`
`DEFENDANTS’ RESPONSE TO PLAINTIFFS’ PRAYER FOR RELIEF
`
`- 14 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 15 of 18 PageID #: 424
`
`Defendants deny that Plaintiffs are entitled to any of the relief sought in their prayer for
`
`relief.
`
`DEFENDANTS’ JURY DEMAND
`
`Defendants demand a trial by jury.
`
`DEFENDANTS’ DEFENSES
`
`Defendants assert the following additional defenses to the Complaint, without altering the
`
`burden of proof. Defendants do not assume the burden of proof on any issue that is Plaintiffs’
`
`burden as a matter of law. Defendants reserve the right to amend or supplement these defenses
`
`upon discovery and further investigation.
`
`FIRST DEFENSE
`FAILURE TO STATE A CLAIM
`
`Plaintiffs’ Complaint fails to state a claim upon which relief may be granted and/or fails
`
`to plead the allegations with sufficient particularity.
`
`SECOND DEFENSE
`NONINFRINGEMENT
`
`Defendants do not infringe and have not infringed any valid and enforceable claim of the
`
`Patents-In-Suit, either literally, or under the doctrine of equivalents, directly, by active
`
`inducement, or by contributing to infringement by others.
`
`THIRD DEFENSE
`INVALIDITY
`
`One or more of the claims of the Patents-In-Suit is invalid for failure to satisfy one or
`
`more conditions for patentability set forth in Title 35 of the United States Code, including
`
`without limitation, for example, 35 U.S.C. §§ 101, 102, 103, and/or 112 and the rules,
`
`regulations and laws associated with them.
`
`- 15 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 16 of 18 PageID #: 425
`
`FOURTH DEFENSE
`LIMITATIONS ON DAMAGES
`
`Plaintiffs’ claim for damages for infringement of the Patents-In-Suit is limited by 35
`
`U.S.C. §§ 286 and 287.
`
`FIFTH DEFENSE
`LACK OF STANDING
`
`Plaintiffs lack standing to maintain the Complaint.
`
`SIXTH DEFENSE PROSECUTION
`LACHES AND UNCLEAN HANDS
`
`One or more of the claims of the Patents-In-Suit is unenforceable as asserted, in whole or
`
`in part, by prosecution laches, and/or unclean hands.
`
`SEVENTH DEFENSE
`PATENT EXHAUSTION/LICENSE/FULL COMPENSATION
`
`Upon information and belief, Plaintiffs’ claims are precluded, in whole or in part, by
`
`patent exhaustion and/or license.
`
`EIGHTH DEFENSE
`WAIVER, LACHES, ACQUIESCENCE AND ESTOPPEL
`
`Plaintiffs’ claims for enforcement of the Patents-In-Suit against Defendants are barred by
`
`waiver, laches, acquiescence and/or estoppel.
`
`NINTH DEFENSE
`INTERVENING RIGHTS
`
`Plaintiffs’ claim for damages for infringement of the Patents-In-Suit is limited by the
`
`doctrine of intervening rights.
`
`TENTH DEFENSE
`NO INJUNCTIIVE RELIEF
`
`Plaintiffs are not entitled to injunctive relief.
`
`- 16 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 17 of 18 PageID #: 426
`
`
`WHEREFORE, Defendants respectfully request that the Court enter judgment:
`
`1.
`
`2.
`
`3.
`
`denying Plaintiffs the relief they seek;
`
`dismissing Plaintiffs’ claims with prejudice;
`
`declaring that each of the asserted claims of the Patents-in-Suit is invalid under 35
`
`U.S.C. § 101 et seq. and unenforceable in equity;
`
`4.
`
`declaring that the accused products have not infringed, and will not infringe, any
`
`of the asserted claims of the Patents-In-Suit, either directly, by active inducement, or by
`
`contributing to infringement by others, either literally or under the doctrine of equivalents;
`
`5.
`
`enjoining the Plaintiffs and/or any affiliates, agents, successors and attorneys, and
`
`all persons in active concert or participation with any of them, from directly or indirectly
`
`asserting infringement against, or instituting any further action for infringement of the asserted
`
`claims of the Patents-in-Suit against Defendants, or any of their customers, affiliates, successors,
`
`assigns, representatives, agents, subsidiaries, and vendors;
`
`6.
`
`finding that this is an exceptional case under 35 U.S.C. § 285 and awarding
`
`Defendants the costs and expenses of this litigation, including reasonable attorneys’ fees and
`
`disbursements;
`
`7.
`
`awarding to Defendants such other and further relief as the Court may deem just
`
`and proper under the circumstances.
`
`
`
`
`
`
`
`- 17 -
`
`
`
`Case 6:15-cv-00907-RWS-KNM Document 11 Filed 12/10/15 Page 18 of 18 PageID #: 427
`
`Dated: December 10, 2015
`
`Respectfully submitted,
`
` /s/ Melissa R. Smith
`Melissa R. Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`Donald L. Jackson
`James D. Berquist
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`
`Attorneys for Defendants Emerson Electric
`Co., Fisher-Rosemount Systems, Inc., and
`Rosemount Inc.
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this 10th day of December, 2015, a true and
`
`correct copy of the foregoing document has been served via the Court’s ECF system to all
`
`counsel of record.
`
`/s/ Melissa R. Smith______________
`Melissa R. Smith
`
`- 18 -
`
`
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