Thursday, August 22, 2013, 2:02 PM

Emerson Electric Brings Declaratory Judgment Action Against SIPCO

On July 31, 2013, Emerson Electric Co. ("Emerson") of St. Louis, Missouri, Fisher-Rosemount Systems, Inc. ("Fisher-Rosemount"), a wholly-owned subsidiary of Emerson based in Round Rock, Texas, and Rosemount, Inc. ("Rosemount"), a wholly-owned Emerson subsidiary based in Chanhassen, Minnesota (collectively, "Plaintiffs"), filed a complaint in the Northern District of Georgia against SIPCO LLC ("SIPCO") and IP Co., LLC d/b/a Intus IQ ("IPCO"), both of Atlanta, Georgia, seeking a declaratory judgment that certain claims of U.S. Patent Nos. 6,437,692 ("the '692 patent"), 6,914,893 ("the '893 patent"), 7,103,511 ("the '511 patent"), 7,697,492 ("the '492 patent"), 8,013,732 ("the '732 patent")(collectively, "the SIPCO patents"), 6,044,062 ("the '062 patent"), 6,249,516 ("the '516 patent"), and 8,000,314 ("the '314 patent")(collectively, "the IPCO Patents") are invalid and not infringed by the Plaintiffs.  All of the patents relate to wireless mesh technology.

As noted in the complaint, SIPCO and IPCO have a short but extensive history of filing patent infringement lawsuits over the subject patents, both in the Northern District of Georgia and in other districts.  The complaint lists 11 lawsuits filed by the SIPCO or IPCO against more than 50 defendants -- a diverse array of companies including Amazon, Siemens, Trane, Comcast, and ADT Security -- since 2005.  Plaintiffs allege that in 2007 Emerson received a letter from counsel for IPCO concerning (but not asserting) the '516 patent, the '062 patent, and the '511 patent.  Emerson responded by asking for clarification as to exactly which Emerson "mesh network system" products IPCO was referring to and asking which claims of each patent were relevant.  According to the complaint, Emerson never received a response.

In 2011, Emerson's subsidiary, Rosemount, received a letter from Siemens AG alleging that certain products accused of infringement by SIPCO were subject to indemnification from Rosemount.  SIPCO soon thereafter subpoenaed Rosemount seeking a wide spectrum of documents relating to the accused products.  Rosemount produced a number of confidential documents subject to the protective order in place in the litigation (SIPCO, LLC v. Control4 Corp. et al., No. 1:11-cv-00612-JEC).

Finally, in March 2013, Emerson received a letter from SIPCO demanding that Emerson license its "Wireless Mesh Patent Porfolio."  Emerson fired back several weeks later noting that SIPCO had failed to follow up on these matters for over six years and further insisted that none of Emerson's products infringed any patent in the portfolio.  After some back and forth, SIPCO and IPCO sent Emerson "Illustrative Claim Charts" asserting infringement of various claims of SIPCO's and IPCO's patents.  Specifically, SIPCO and IPCO asserted infringement of claim 18 of the ’692 patent; claim 1 of the ’893 patent; claim 1 of the ’511 patent; claim 14 of the ’492 patent; claim 13 of the ‘732 patent; claim 2 of the ‘062 patent; claim 1 of the ’516 patent; and claim 10 of the ‘314 patent.  The Plaintiffs seek declaratory judgment of invalidity and non-infringement of only those claims asserted in the SIPCO/IPCO claim charts.

During an August 16th telephone call, counsel for Emerson notified the Court that the Defendants had not been served and that the parties are in the midst of settlement discussions.

The case is Emerson Electric Co. et al. v. SIPCO LLC et al., No. 1:13-cv-02528-AT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Amy Totenberg.

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