SIPCO, LLC et al. v. Emerson Electric Co. et al.

I'll research this case across multiple sources to build a verified overview.

Case Overview: SIPCO, LLC v. Emerson Electric Co., No. 6:15-cv-00907 (E.D. Tex., Tyler Div., filed Oct. 16, 2015)

Parties and what they do. The plaintiffs are SIPCO, LLC (Atlanta, GA) and IP Co., LLC, which did business as "Intus IQ." Both are non-practicing patent-assertion entities holding the "Essential Wireless Mesh" portfolio of inventor Thomas David Petite — a Native American inventor recognized by the USPTO who holds dozens of patents on wireless ad-hoc/mesh networking for remote sensor and control systems. The defendants split into two groups: (1) the Emerson industrial defendants — Emerson Electric Co. (St. Louis), Emerson Process Management LLLP, Fisher-Rosemount Systems, Inc. (Round Rock, TX), and Rosemount, Inc. (Shakopee, MN), the entities behind Emerson's process-automation "Smart Wireless" business; and (2) the BP defendants — BP p.l.c., BP America, Inc., and BP America Production Company — added as end users because BP deployed the accused Emerson gear at its East Texas oil-and-gas wells (SIPCO's infringement contentions describe the parties' history, including an October 25, 2011 patent license that SIPCO granted only to Emerson's White-Rodgers Division, not to the Emerson process-automation entities; ECF 24, 42, 74-1). Emerson is indemnifying and defending BP (Declaration of Robert Karschnia, ECF 71-2, ¶ 9). Ownership details are worth flagging: the 2015 E.D. Tex. corporate-disclosure statements listed General Electric Co. as a parent of both plaintiffs (per the Unified Patents docket mirror), while SIPCO's later Federal Circuit briefs list Glocom, Inc. as a 10%-plus owner and NPE trackers describe SIPCO as Glocom-financed — the record does not fully reconcile those entries.

Accused technology. The case targets Emerson's WirelessHART (IEC 62591) industrial wireless mesh product line: Smart Wireless Gateways (models 1410, 1420, 1552WU), Wireless I/O Cards with Field Link, and Rosemount wireless field devices (e.g., 3051/3051S pressure transmitters, 648 and 248 temperature transmitters, 702 discrete transmitters, 3308 guided-wave radar), plus network-manager software, the AMS Trex communicator, and third-party mesh radio components (Analog Devices' DN2510/LTC5800 mote chips). SIPCO's theory was predominantly indirect infringement — that Emerson induces and contributes to its customers' (including BP's) creation and operation of infringing WirelessHART mesh networks, an indefiniteness/indirect-infringement framing that carried over into the later ITC case.

Patents at issue. The case metadata identifies U.S. Patent No. 8,754,780 ("Systems and Methods for Monitoring and Controlling Remote Devices," issued June 17, 2014, App. No. 13/855,452, inventor Thomas David Petite with Richard M. Huff, assigned to SIPCO). In one line: a wireless sensor/control device whose transceiver has a unique ID, receives and re-transmits sensor data and identification information from another transceiver in a predetermined signal type, with a controller that formats a data packet containing sensor data — i.e., the repeater/mesh node architecture. SIPCO's Feb. 29, 2016 infringement contentions asserted claims 1, 2, and 4–8 of the '780 against the identified Emerson products. Note that the docket shows a broader asserted set than the metadata: SIPCO's own filings state the original complaint covered ten SIPCO/IP CO patents — the '492, '692, '893, '516, '661, '314, '471, '496, '780, and '842 — with the '732 added by the First Amended Complaint (ECF 24 at 3 n.1). Most are continuations of the same 1998–2001 Petite priority chain ('178/'822/'692/'516/'842 family); the '842 claims a low-power transceiver plus an interface circuit linking a remote device to a central location (the patent later held CBM-eligible in Emerson's parallel CBM2016-00095), while '492/'893/'708 are directed to remote monitoring/control with preformatted messages and scalable addresses, the '692 to mesh relaying to a site controller/WAN, and the '661 to transmitting pollution data over an integrated wireless network.

Posture and why it matters. Filed October 16, 2015 in the Tyler Division of the Eastern District of Texas (docket initially captioned before Judge Robert W. Schroeder III with Magistrate Judge K. Nicole Mitchell; some later filings carry the initials "JRG," so the judge assignment should be treated as not fully verified). Venue was the whole ballgame. E.D. Tex. was then the nation's preeminent plaintiff-friendly patent venue, and SIPCO chose it in part because district judges there had already construed four of the asserted patents (e.g., SIPCO, LLC v. [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.), No. 2:08-cv-359-JRG, 2012 WL 5195942 (E.D. Tex. Oct. 19, 2012)). The case became a textbook first-to-file fight: Emerson had preemptively filed a Georgia declaratory-judgment action on eight SIPCO patents, then dropped all but two ('511, '062), yet moved to dismiss or transfer the Texas case on first-to-file/comity grounds (ECF 10, 13; SIPCO's opposition at ECF 24, 42). The court ultimately sided with Emerson — the docket was closed in July 2016 and the case was transferred to the Northern District of Georgia, opened as SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690-AT, and consolidated with the earlier Georgia action, Emerson v. SIPCO, No. 1:15-cv-319-AT (see Emerson's updated mandatory notices in IPR2017-00216; Unified Patents docket entry: "Interdistrict transfer to the Northern District of Georgia," entered July 22, 2016). The transfer is a useful marker of the era's forum wars and the shift away from E.D. Tex. that accelerated with TC Heartland in 2017. The dispute's most lasting significance is its PTAB/IPR linkage: Emerson challenged the portfolio in parallel, including IPR2016-00984 on the '780 (instituted Nov. 2, 2016; final written decision Oct. 25, 2017 holding claims 1–15 unpatentable, largely over the '732 patent), plus IPR2016-01895 ('492), IPR2017-00001 ('661), IPR2017-00359 ('692), IPR2017-00216 ('732), and CBM2016-00095 ('842). The '780 appeal (No. 2018-1364) produced a notable § 255 certificate-of-correction issue — SIPCO's post-decision correction removed the '732 as prior art, and the Federal Circuit remanded (June 27, 2018) for the Board to address the correction, with the Board issuing a decision on remand January 24, 2020. The litigation continued in other fora as well: SIPCO filed a Section 337 complaint against Emerson and its component suppliers (Analog Devices, Linear Technology, Dust Networks, Tadiran) on August 6, 2018, leading to Inv. No. 337-TA-1131, where ALJ Dee Lord's January 10, 2020 initial determination found no violation on the '893 and '708 patents (USITC Pub. 5256), and a related 2018 district action was filed in the Southern District of Texas (SIPCO, LLC v. Emerson Electric Co., No. 4:18-cv-02689).

Verification notes / open items. (1) The metadata's single-patent framing ('780) is narrower than the docket record, which shows an eleven-patent assertion — I have reported both and flagged the discrepancy rather than reconciling them silently. (2) The metadata lists termination as July 1, 2016; Unified Patents shows July 21, 2016, with the transfer docketed July 22, 2016 — the discrepancy appears to reflect a closing order versus the physical transfer docketing. (3) The final disposition of the '780 Federal Circuit appeal (No. 2018-1364) after the January 24, 2020 remand decision could not be confirmed from the sources retrieved and should be checked on PACER/CAFC. (4) The Emerson/Bartlett assignment of the E.D. Tex. case (Schroeder "RWS" versus "JRG" in later captions) is inconsistent across mirrors and is flagged, not asserted.

I'll research this case thoroughly using web searches across the key sources.

Let me dig deeper into the transfer ruling, the PTAB proceedings, and the ultimate disposition.

I have strong material. Let me pin down the transfer order, the N.D. Ga. disposition, and the ITC/PTAB outcomes.

SIPCO, LLC et al. v. Emerson Electric Co. et al., No. 6:15-cv-00907 (E.D. Tex.) — Key Legal Developments and Outcome

Bottom line: This was one phase of a long-running multi-forum campaign over the SIPCO/IP CO "wireless mesh networking" (Trost and Petite) patent families. U.S. Pat. No. 8,754,780 ("the '780 patent") was one of eleven patents-in-suit. The E.D. Tex. action never reached Markman or trial: on Emerson's motion it was transferred to the N.D. Ga. (where Emerson's first-filed DJ action was pending) by mid-2016. There, and in parallel PTAB proceedings, the case was stayed pending IPR, and the '780 patent was ultimately held wholly unpatentable by the PTAB — a ruling the Federal Circuit affirmed on 2021-01-21. No damages verdict or injunction ever issued on the '780 patent.

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1. Pre-suit context (2013–2015)

• 2013-07-31 — Emerson Electric Co., Fisher-Rosemount Systems, Inc. and Rosemount Inc. filed a preemptive declaratory judgment action in N.D. Ga. against SIPCO LLC and IP CO, LLC d/b/a Intus IQ, seeking invalidity/non-infringement as to eight asserted claims across eight patents (the '692, '893, '511, '492, '732, '062, '516 and '314 patents). Emerson Elec. Co. v. SIPCO LLC, No. 1:13-cv-02528-AT (N.D. Ga.) (Judge Amy Totenberg). That action was dismissed without prejudice. (National Law Review summary)
• 2015-01-30 — Emerson filed a second DJ action, No. 1:15-cv-319-AT (N.D. Ga.) ("the Georgia action"), this time asserting only the '062 patent (IP CO family) and the '511 patent (SIPCO family). (Doc. 98, E.D. Tex.; see docketalarm Doc. 98)

2. Filing and initial pleadings (E.D. Tex.)

• 2015-10-16 — SIPCO, LLC and IP CO, LLC (d/b/a Intus IQ) filed suit in E.D. Tex., Tyler Division, against Emerson Electric Co., Fisher-Rosemount Systems, Inc. and Rosemount Inc. The Original Complaint asserted ten patents: the '492, '692, '893, '661, '780, '842, '516, '314, '471 and '496 patents. (Doc. 1; Doc. 98 at 1–2) The PTO § 290 Report on Filing (Doc. 5, filed 2015-10-16) listed a subset (the '492, '692, '893, '516 and '661 patents). (Doc. 5)
• Assignment: Initially captioned 6:15-cv-00907-JRG-KNM (Judge Rodney Gilstrap), the case was reassigned to Judge Robert W. Schroeder III, with Magistrate Judge K. Nicole Mitchell (hence "RWS-KNM" in later filings). (RPX Insight; dockets.justia)
• Accused products were Emerson's WirelessHART "Smart Wireless" line — gateways (1410/1420/1552WU), Wireless I/O Cards, Rosemount wireless transmitters, THUM adapters, and AMS/DeltaV/Ovation software. (Amended Complaint, Doc. 19)
• Answer/counterclaims: Emerson answered and sought declaratory relief of invalidity/non-infringement; Emerson also maintained its N.D. Ga. DJ action, which functioned as the mirror-image "counterclaim" track. (Counterclaim details are only partially visible in free dockets — treat this item as not fully verified.)
• 2015-12-30 — SIPCO filed its First Amended Complaint (Doc. 19), adding BP America, Inc., BP America Production Company and BP p.l.c. as defendants (BP as users of the accused Emerson systems at East Texas wells) and adding an eleventh patent, the '732 patent. (Doc. 19)

3. Pre-trial motions of substance (Dec. 2015 – Jul. 2016)

Discovery milestones: The E.D. Tex. phase was consumed by the transfer fight. Beyond the agreed discovery/protective/e-discovery orders and some document production, no substantive merits discovery milestone (e.g., close of fact discovery, expert reports) was reached before transfer — likely a deliberate consequence of the pending dispositive motions. No Markman hearing or claim-construction order issued in E.D. Tex.; SIPCO's "Claim Construction and Prehearing Statement" appears on the docket, but the case transferred before any construction ruling. (Unified Patents docket)

4. The transfer ruling and closure of the Texas action

• Late June / early July 2016 — Judge Schroeder issued a Memorandum Opinion and Order (Doc. 98) GRANTING-IN-PART Emerson's Motion to Dismiss or Transfer. Applying the first-to-file rule and comity principles (In re Google Inc., 588 F. App'x 988 (Fed. Cir. 2014); Colo. River Water Conservation Dist. v. United States, 424 U.S. 800), the court ordered the case transferred to the N.D. Ga. (Doc. 98) — Note: the exact entry date of Doc. 98 is not confirmed in the free sources I could reach; the docket shows the E.D. Tex. case administratively closed 2016-07-01 (case metadata) with physical transfer on 2016-07-22.
• 2016-07-22 — The case was transferred to N.D. Ga. and closed in E.D. Tex. as of that date (per SIPCO's own recitation in its N.D. Ga. motion, filed 2016-08-09). (Doc. 127, N.D. Ga.; RPX lists the E.D. Tex. case as closed 2016-07-22, while other databases show 2016-07-01.)

5. The N.D. Ga. phase — SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690-AT

• 2016-07-26 — Opened before Judge Amy Totenberg, and consolidated with the first-filed DJ action, No. 1:15-cv-319-AT. (UNICOURT docket)
• 2016-08 — Briefing continued on BP p.l.c.'s motion to dismiss for failure to state a claim/misjoinder (Docs. 127, 138, 140); SIPCO sought leave to file a sur-reply (motion dated 2016-08-09).
• Stay: Consistent with its own prior rulings, the N.D. Ga. court stayed the case pending PTAB final written decisions on the asserted patents. Emerson later characterized the court's position as requiring a stay "pending all PTAB final written decisions," and a continuation of that stay through the last appeal. (See Emerson brief excerpt at PTAB Exhibit)
• 2018 forum-shopping fight: After TC Heartland, SIPCO opened new suits in S.D. Tex. and D. Del. and a § 337 action at the ITC; Emerson attacked these as violating the claim-splitting doctrine and the N.D. Ga./E.D. Tex. courts' directives, seeking an emergency injunction and attorneys' fees, invoking the 30-day stay deadline of 35 U.S.C. § 1659 triggered by ITC institution. (Id.)
• Present disposition: My sources confirm the case was stayed and that SIPCO's newer duplicative suits were contested, but I was not able to verify a formal N.D. Ga. judgment or dismissal on the '780 patent claim. Given the PTAB outcome (below), the practical result was that the '780 (and most other asserted) claims ceased to exist as enforceable rights.

6. Parallel PTAB proceedings and their effect

The '780 patent (the patent at issue here):

• 2016-04-29 — Emerson petitioned for IPR. IPR2016-00984, instituted 2016-11-02. (RPX PTAB record)
• 2017-10-25 — Final Written Decision: claims 1–15 all unpatentable — (i) claims 1–15 obvious over the '732 patent; (ii) claims 1, 2, 7 obvious over Kahn + Applicant-Admitted Prior Art (AAPA); (iii) claims 4, 6, 8 obvious over Kahn + AAPA + Burchfiel. (SIPCO's Fed. Cir. motion for remand, Ex. C summary)
• Nov. 2017–May 2018 — The '732-based ground turned on a clerical priority-claim error on the face of the '780 patent. SIPCO made three attempts under 35 U.S.C. § 255 to correct it; the Board stayed the third request until the FWD, then lifted the stay; the Certificate of Correction ultimately issued. SIPCO noticed its appeal 2017-12-21 (Fed. Cir. No. 2018-1364).
• 2018-06-27 — The Federal Circuit granted SIPCO's motion to remand, directing the Board to address the certificate's impact; jurisdiction retained.
• 2020-01-24 — Board Decision on Remand: § 255 certificates of correction do not have retroactive effect; the certificate "has no impact on the Final Written Decision." (Decision on Remand, Paper 52)
• 2021-01-21 — Federal Circuit AFFIRMED (nonprecedential, Fed. Cir. R. 36; Prost, C.J., Mayer and Moore, JJ.). (Judgment)

Other asserted-family patents (context for the same campaign):

• IPR2015-01973 ('732 patent) — PTAB found claims 13, 14, 16–21, 23–35 not unpatentable; Fed. Cir. No. 2017-1866 vacated and remanded (2018-08-29), because the result was inconsistent with the '780 FWD on nearly identical facts. Emerson Elec. Co. v. SIPCO, LLC, 2018 WL 4145081 (Fed. Cir. Aug. 29, 2018).
• IPR2015-01901 ('314 patent) — PTAB found claims 10, 12–19 unpatentable; Fed. Cir. No. 2017-1896 affirmed (2018-08-29). IP Co. v. [SIPCO], 2018 WL 4147611.
• CBM2016-00095 ('842 patent) — Board found the claims obvious over Tymes (and addressed § 101 and CBM-eligibility under AIA § 18(d)(1)). On appeal (Fed. Cir. No. 18-1635, SIPCO v. Emerson), the Supreme Court granted cert, vacated and remanded in light of Thryv, Inc. v. Click-to-Call; on 2020-11-17 the Federal Circuit held the CBM-eligibility threshold determination is non-appealable under 35 U.S.C. § 324(e) and affirmed the obviousness holding. (Fed. Cir. 18-1635 opinion; Supreme Court No. 19-966 appendix)
• Additional family reviews referenced in SIPCO's mandatory notices: IPR2016-01895, IPR2017-00001 ('661 patent), IPR2017-00216 ('732 patent), IPR2017-00359. (PTAB mandatory notice)

7. Parallel ITC investigation

• 2018-09-05 — The ITC instituted a § 337 investigation brought by SIPCO involving the accused Emerson WirelessHART products (instituted after TC Heartland drove SIPCO out of E.D. Tex. for certain defendants). Emerson invoked the resulting § 1659 30-day stay deadline (expiring 2018-10-05). (Emerson filing excerpt)
• The ITC final initial determination (USITC Pub. 5256) found no infringement of claim 1 of the '893 patent (SIPCO failed to prove the "scalable address" limitation) while finding certain other limitations met — a mixed infringement outcome. (USITC Pub. 5256) Caveat: the '780 patent was not among the ITC-asserted patents, so this bears on the family dispute as a whole rather than on the '780 specifically.

8. Outcome / final posture

• For the '780 patent itself: the patent was invalidated by the PTAB in IPR2016-00984 (FWD 2017-10-25, all claims 1–15 unpatentable), the remand decision (2020-01-24) refused to disturb that on the certificate-of-correction theory, and the Federal Circuit affirmed 2021-01-21. No district-court judgment of infringement, no damages award, no injunction, and no attorneys' fees award on the '780 patent.
• For the litigation: the E.D. Tex. action (6:15-cv-00907) was transferred to N.D. Ga. on 2016-07-22 and consolidated with the first-filed DJ action; the consolidated action was stayed pending PTAB, and was then overtaken by the PTAB's wholesale invalidation of the asserted SIPCO claims, plus SIPCO's attempt to re-file in S.D. Tex./D. Del. and at the ITC (which Emerson contested as claim-splitting).
• The broader SIPCO v. Emerson dispute continued for years in multiple fora (N.D. Ga., ITC, and several Federal Circuit appeals, including the Supreme Court's Thryv-driven vacatur in the '842 CBM appeal).

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Sourcing caveats / open items

• I did not find a Markman order or trial date; the case appears to have never reached claim construction or trial.
• The exact entry date of the E.D. Tex. transfer opinion (Doc. 98) and the precise date of final disposition in N.D. Ga. 1:16-cv-02690 are not confirmed in the free sources I could access; the docket reflects the Texas case as closed 2016-07-01 (metadata, and one database) or 2016-07-22 (RPX; matched by SIPCO's own filing).
• Counterclaim specifics and the full docket of the consolidated N.D. Ga. case would need PACER (or a paid docket service) for definitive confirmation; I could not verify any N.D. Ga. judgment, fee award, or appeal as to the '780 claim.
• Party/business distinctions (SIPCO LLC vs. IP CO, LLC d/b/a Intus IQ; the Emerson subsidiaries; the BP entities) are as recited in the pleadings and PTAB filings.

Primary sources: E.D. Tex. transfer opinion, Doc. 98; First Amended Complaint, Doc. 19; Unified Patents E.D. Tex. docket; RPX E.D. Tex. record; RPX IPR2016-00984 record; Fed. Cir. 18-1364 judgment; Fed. Cir. 18-1635 opinion; USITC Pub. 5256.

I'll verify each of the listed articles and search for additional coverage.

Press and analysis coverage — SIPCO v. Emerson

The threshold finding: almost no press coverage exists of the Texas case itself. I searched the caption, party names, and patent numbers, and located no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, or mainstream coverage of SIPCO, LLC v. Emerson Electric Co., No. 6:15-cv-00907 (E.D. Tex.). Nothing in the press reports a damages figure, settlement, injunction, or market impact, because — consistent with the docket record — none occurred; the case transferred to N.D. Ga. and was overtaken by the PTAB. Every article in the news index supplied with this assignment is in fact about the parallel appellate track captioned "SIPCO v. Emerson": principally the CBM2016-00095 appeal on U.S. Pat. No. 8,908,842 ('842), Fed. Cir. No. 2018-1635, and not about the '780 patent or the E.D. Tex. litigation. That is worth flagging explicitly, since the shared caption makes the two easy to conflate.

The 2019 Federal Circuit decision on the '842 CBM. IPWatchdog reported on 2019-09-26 that the Federal Circuit issued a precedential decision the prior day reversing-in-part, vacating and remanding the PTAB, which had found claims of the '842 patent subject to CBM review, patent ineligible under § 101, and obvious; the piece quotes the court distinguishing Chamberlain ("Unlike in Chamberlain, SIPCO's claimed invention does not simply use 'well understood,' off-the-shelf wireless technology for its intended purpose of communicating information") and explains the court reversed the Board's construction of "low-power transceiver" and its part-two "technological invention" finding under 37 C.F.R. § 42.301(b). Patently-O covered the same ruling the same day, framing it as "continued tricks in defining what [qualifies] as a covered business method patent," summarizing the two-step technological-invention test and noting the CBM program's September 16, 2020 sunset. The two accounts differ in detail: Patently-O says the challenged claims were 1, 7, 9, 16 and 17 and that dependent claims 3–4 (vending machine/ATM) "were disclaimed during prosecution," whereas the record and IPWatchdog reflect the disclaimer came after institution — a point the court expressly addressed. A&O Shearman's IP blog and Harness IP's HDP Patents Blog give cleaner technical recitations of the same holding. Separately, IPWatchdog's headline attributes a partial disagreement to "O'Malley and Chen," while its own body reports that Judge Chen authored the opinion and Judge Reyna dissented in part — a discrepancy in the reporting itself.

The 2020 Thryv remand — the most heavily covered moment. IPWatchdog reported on 2020-11-19 that the Federal Circuit, on remand from the Supreme Court, held that "§ 324(e) prohibits judicial review of SIPCO's challenge because it is nothing more than a contention that the agency should have refused to institute [CBM] review," quoting the court's conclusion that the CBM-eligibility determination "is expressly and exclusively tied to the decision to institute," and that the court nonetheless affirmed the Board's obviousness finding over Tymes. IPWatchdog's weekly roundup noted on 2020-11-20 that the November 17 decision was precedential and non-appealable under § 324(e). Schwabe, Williamson & Wyatt's "Case of the Week" supplied the fullest procedural narrative: Emerson had sought en banc review of the earlier panel disposition (denied), then certiorari (granted, vacated, remanded in light of Thryv), and the panel on remand declined to reach CBM eligibility while affirming obviousness on the merits. IPWatchdog followed on 2020-12-06 with a longer analysis arguing that although the CBM program expired September 16, 2020, the decision's reach is "likely to be much more far-reaching" because CBM procedures were borrowed from post-grant review — tracing the reasoning back to the Alito/Sotomayor dissents in Cuozzo.

Advocacy, industry reaction, and gaps. The December 10, 2020 IPWatchdog piece (also republished by US Inventor) is openly an opinion piece, going well beyond the court record: it frames inventor Thomas David Petite as the originator of foundational IoT technology, asserts the PTAB "has invalidated a whopping 84% of the 3,000 patents they have reviewed," notes the CBM program's September 16, 2020 sunset, and reports "buzz that attempts are being made to reinstate the program via the fiscal 2021 spending bill this week" — an unverified legislative rumor, not a court finding. I could not verify the two IPWatchdog "Patent Filings Roundup" items (2020-04-15 and 2020-09-02) or the Patently-O "Supreme Court Roundup June 2020" within my search budget, so I do not summarize them. Finally, no article I found reports on the '780 patent specifically — i.e., IPR2016-00984, the January 24, 2020 Board decision on remand addressing the § 255 certificate of correction, or the Federal Circuit's January 21, 2021 Rule 36 affirmance in No. 2018-1364. That affirmance, which extinguished the only patent named in this case's metadata, appears to have gone unreported in the patent press.

Sources

• covered business method review Archives - Posts Tagged: "covered business method review"
• SIPCO v. Emerson Archives
• Litigation Archives - Posts in Litigation
• Articles Archives - Page 5 of 19 - US Inventor
• Josh, Author at US Inventor - Page 5 of 12
• December 2020 - US Inventor
• United States Court of Appeals for the Federal Circuit
• UNITED STATES PATENT AND TRADEMARK OFFICE
• 訴訟
• NOTE: This disposition is nonprecedential
• Federal Circuit Archives - Posts Tagged: "Federal Circuit"
• Are There Really Any ‘Statutory Limits’ to Institution of Post-Grant Examination following SIPCO v. Emerson Electric Co.? - Are There Really Any ‘Statutory Limits’ to Institution of Post-Grant Examination following SIPCO v. Emerson Electric Co.?

I'll research the docket and counsel appearances for this case.

Now let me dig into individual attorney appearances and firms.

Counsel of Record for Plaintiffs — SIPCO, LLC & IP CO, LLC (d/b/a INTUS IQ)

Sipco, LLC et al. v. Emerson Electric Co. et al., No. 6:15-cv-00907-RWS-KNM (E.D. Tex., Tyler Div.)

Per the docket and the "represented by" designations on the E.D. Tex. docket sheet (JRG/RWS-KNM), plaintiffs were represented by a two-firm team: Nutter McClennen & Fish LLP (Boston) as lead/outside patent counsel, and Ward, Smith & Hill, PLLC (Longview, Texas) as Texas local counsel. The same two firms continued for plaintiffs in the transferee case, SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690-AT (N.D. Ga.).

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Lead counsel (Nutter McClennen & Fish LLP — Seaport West, 155 Seaport Blvd., Boston, MA 02210)

Local counsel (Ward, Smith & Hill, PLLC — Longview, Texas)

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Important qualifications and caveats

• No sealed counsel. All plaintiff-side appearances in this case are on the public docket; nothing suggests sealed or undisclosed counsel. The docket is small (≈110 entries).
• "Lead" vs. "of counsel" labels are inferential in part. The only attorney expressly designated "Lead Attorney" in a filing is Paul J. Cronin (see the Nutter signature block on Dkt. 91 and the corporate-disclosure/jury-demand filings signed by Cronin). Messrs. Hall and Reppucci are confirmed plaintiffs' counsel of record but are not labeled "lead" or "of counsel" in the documents I could verify.
• Thomas John Ward, Jr.'s appearance form: I could confirm he is listed on the case docket sheets as plaintiffs' counsel, but I did not locate the text of a separate Notice of Appearance bearing his name in this specific case (unlike Dkts. 8 and 91 for Henry and Reppucci). Treat his entry as docket-listed representation rather than a document I quoted.
• Do not confuse with PTAB/Federal Circuit counsel. Dr. Gregory J. Gonsalves (Gonsalves Law Firm, Falls Church, VA) represented SIPCO in the PTAB proceedings and Federal Circuit appeal concerning the '780 patent (IPR2016-00984; Fed. Cir. No. 2018-1364), and Finnegan Henderson (Jason Stach, Cory Bell, Benjamin Saidman) took over as SIPCO's IPR counsel in the later Emerson IPRs (e.g., IPR2019-00547). None of these attorneys entered an appearance in this district court case — the appeal brief in 2018-1364 lists Nutter's work in this action separately. I flag this because the IPR/appeal filings are frequently conflated with district court counsel.
• Case posture: Judge Rodney Gilstrap was initially assigned; the case was reassigned to Judge Robert W. Schroeder III with Magistrate Judge K. Nicole Mitchell. Emerson's motion to dismiss or transfer was granted in part, and the docket shows the action closed in mid-2016 (the Eastern District docket sheet reflects termination July 22, 2016; your metadata lists July 1, 2016) with the dispute continuing in the Northern District of Georgia (Nos. 1:15-cv-00319-AT and 1:16-cv-02690-AT), where Cronin, Hall, Reppucci and Ward Smith & Hill again appeared for SIPCO/IP CO.

If you need the exact admission dates or pro hac vice orders for the Nutter attorneys in the Eastern District, the docket entries around Dkts. 8 and 91 are the place to pull the primary documents.

I'll research the docket and counsel appearances for this case. Let me run several searches.

Let me dig into the docket sheet and defense-side appearances.

Let me pull the docket sheet details and BP-specific counsel.

I hit my research tool limit before I could retrieve every signature block, so I'll report what the records I did pull establish, and flag what remains unconfirmed. I did not invent any names.

Counsel of Record — Defendants

SIPCO, LLC et al. v. Emerson Electric Co. et al., No. 6:15-cv-00907-JRG/KNM (E.D. Tex., Tyler Div.)

Important framing

Two distinct defendant groups with separate representation:

1. Emerson group — Emerson Electric Co.; Emerson Process Management LLLP; Fisher-Rosemount Systems, Inc.; Rosemount Inc.
2. BP group — BP America Inc.; BP America Production Company; BP p.l.c. (added by the First Amended Complaint, Doc. 19, filed 12/30/2015).

Emerson defendants

Also of note (but not district-court counsel of record in this case): Ropes & Gray LLP attorneys (James L. Davis, Jr.; Daniel Richards; Carolyn Redding; Matthew R. Shapiro) represented Emerson Electric Co. as petitioner in the parallel PTAB proceedings against SIPCO (e.g., IPR2015-01579, IPR2019-00547/00548). James R. Batchelder (Ropes & Gray, East Palo Alto) appeared on Emerson's later Georgia emergency motion. Their E.D. Tex. district-court appearances in 6:15-cv-00907 were not confirmed in my search.

BP defendants — NOT CONFIRMED

I could not verify BP's specific counsel of record from the sources I retrieved. What the docket does show:

• BP America Inc. filed its own Answer (Doc. 52, filed 02/29/2016, "BP America's Response to Plaintiffs' Prayer for Relief" with its own jury demand), which implies separate BP counsel, but I did not capture that signature block.
• The BP entities joined the Emerson entities in the combined Opposed Motion to Sever and Stay (Dkt. 71) — a joint filing, so its signature block does not isolate BP-only counsel.
• Ryan T. Pumpian (Bloom Sugarman LLP, Atlanta, GA) is listed as a defendant/counterclaimant attorney in the related N.D. Ga. case (1:16-cv-02690), which included the BP entities; his E.D. Tex. appearance was not confirmed.

I cannot name BP's E.D. Tex. counsel without fabricating. The record entry to check is the Answer at Doc. 52 and any notice of appearance filed in early 2016 after BP was added.

Other points

• No counsel is identified in-house in the records I retrieved; Emerson/BP in-house attorneys, if involved, did not appear on the E.D. Tex. docket as of the entries I saw.
• Sealed filings: Several 2016 filings were sealed (e.g., the sealed Response re Doc. 76 and a sealed patent sur-reply re Doc. 71), so any counsel signatures in those are not visible.
• David Folsom (Jackson Walker LLP, Texarkana, TX) appears on the docket as court-appointed mediator (order dated 03/09/2016), not as counsel.
• Procedural context: On 07/01/2016, Magistrate Judge K. Nicole Mitchell granted Emerson's motion to transfer to the N.D. Ga. and denied the motion to dismiss (Memorandum Opinion and Order, Doc. 100); the case was docketed as N.D. Ga. 1:16-cv-02690-AT, where the Emerson/BP defense counsel list mirrors the above (Melissa Richards Smith; William V. Custer IV; J. Scott Davidson; Donald L. Jackson; James D. Berquist; Ryan T. Pumpian). Plaintiff-side counsel in E.D. Tex. were Ward, Smith & Hill (T. John Ward Jr.; Claire Abernathy Henry; Andrea Leigh Fair), Nutter McClennen & Fish (James C. Hall; Timothy J. Reppucci; Paul J. Cronin), and Meagher Emanuel (Thomas F. Meagher) — noted here only to avoid confusing them with defense counsel.

Confidence summary

• High confidence: Melissa Richards Smith (Gillam & Smith) as local defense counsel; Donald L. Jackson (Davidson Berquist Jackson & Gowdey) as Emerson counsel — both appear on the E.D. Tex. docket sheet.
• Medium–high confidence: Berquist, Davidson (same firm) and Custer, Whitaker (Bryan Cave) as Emerson-side counsel, based on joint/parallel filings and case-profile listings.
• Unresolved: BP-side counsel, and whether Ropes & Gray formally appeared for Emerson in E.D. Tex. (as opposed to the PTAB and Georgia proceedings).

If you can pull PACER Doc. 52 and the early-2016 notice-of-appearance entries, the BP gap can be closed quickly.