Litigation

SIPCO, LLC v. Emerson Electric Co.

1:16-cv-02690

Filed
2016-07-26

Patents at issue (1)

8754780

Plaintiffs (1)

Summary

SIPCO's N.D. Ga. action against Emerson Electric, filed July 26, 2016. Google Patents and Docket Alarm list it as a case involving US 8,754,780.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case thoroughly before drafting the overview.

Let me dig deeper into the technical claims, procedural history, and outcome.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case thoroughly using multiple searches.

Let me dig deeper into the IPR proceedings, the Federal Circuit appeal, and the final disposition of the district court case.

Let me find the district court's final disposition and any key rulings in the N.D. Ga. case.

SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690-AT (N.D. Ga.) — Litigation Chronology and Outcome

Bottom line up front: This case was never tried to a verdict. It was a multi-patent, multi-defendant campaign that was effectively decided at the PTAB, not in Judge Amy Totenberg's courtroom. The '780 patent (the patent identified in the case metadata) was cancelled in its entirety in Emerson Electric Co. v. SIPCO, LLC, IPR2016-00984, FWD 2017-10-25 (claims 1–15 unpatentable), and that result was affirmed on appeal (Fed. Cir. No. 2018-1364, 2021-01-21, Rule 36). Because the '780 patent also expired on 2018-06-22, the N.D. Ga. case lost its principal res. Emerson separately knocked out the '842 patent (CBM2016-00095) and the '692 patent (IPR2017-00001). I could not confirm a specific terminating docket entry in 1:16-cv-02690 from the sources retrieved — a gap I flag below.

Note on the metadata: the case as actually litigated was not a single-patent '780 case. The transferred complaint asserted the Petite-family patents (U.S. 6,437,692; 6,914,893; 7,697,492; 7,468,661; 8,754,780; 8,908,842; and later 8,013,732) and the Brownrigg-family patents (6,249,516; 8,000,314; 8,233,471; 8,625,496). [Docket Alarm, EDTX transfer opinion; PTAB petition 1476095]

1. Pre-suit history and the two "first-filed" N.D. Ga. DJ actions (2007–2015)

  • 2007-01-31 — SIPCO writes Emerson asking it to review products against the '062 and '511 patents (and two family members). Emerson responds 2007-02-16; SIPCO does not follow up until 2013-02-27. [EDTX Mem. Op. & Order, SIPCO v. Emerson, No. 6:15-cv-907, Dkt. 98]
  • 2013-07-31 — Emerson, Fisher-Rosemount Systems, and Rosemount file a DJ action in N.D. Ga., No. 1:13-cv-02528-AT, on the '692, '893, '511, '492, '732, '062, '516, and '314 patents. Dismissed without prejudice. [National Law Review, 2013-08-23; EDTX Mem. Op.]
  • 2015-01-30 — Emerson files a second DJ action, No. 1:15-cv-00319-AT, this time asserting only the '062 patent (IP Co. family) and the '511 patent (SIPCO family). Its 2015-08-28 scheduling order (Dkt. 25) set a full Markman track: proposed terms exchanged 2015-12-23, preliminary constructions 2016-01-12, Joint Claim Construction Statement 2016-02-02. [Docket Alarm Doc. 102-2]

2. The EDTX infringement action and transfer to N.D. Ga. (2015–2016)

  • 2015-10-16 — SIPCO, LLC and IP Co., LLC (d/b/a Intus IQ) file No. 6:15-cv-00907 in E.D. Tex. against Emerson Electric, Fisher-Rosemount Systems, and Rosemount, asserting ten patents, including the '780 patent. [EDTX Mem. Op.; NPE Litigation Database, patent 8,754,780]
  • 2015-12-30 — Amended complaint adds BP America, Inc., BP America Production Company, and BP p.l.c. and adds the '732 patent (Dkt. 19).
  • 2016-04-18 — Further amended complaint (carried into N.D. Ga. as Doc. 74-1), accusing Emerson's WirelessHART gateway, field-device, adapter, and software lines (Smart Wireless Gateway 1410/1420, Rosemount 3051/648/848T/708/702/2160/3308/5900S, Fisher 4320, THUM adapter, AMS/Ovation/DeltaV, etc.). [Docket Alarm Doc. 74-1]
  • 2016-07-01 — Judge Robert Schroeder (E.D. Tex.) grants Emerson's motion to dismiss or transfer in part, transferring the case to N.D. Ga.: SIPCO, LLC v. Emerson Elec. Co., 2016 WL 7743496 (E.D. Tex. Jul. 1, 2016). The court found the asserted patents all trace to one of the two families already at issue in the N.D. Ga. DJ action, with the same parties and the same accused products. [EDTX Mem. Op.; PTAB Ex. A]
  • 2016-07-22 / 2016-07-26 — Case transferred and docketed in N.D. Ga. as 1:16-cv-02690-AT, assigned to Judge Amy Totenberg. Rosemount, Emerson Process Management LLLP, Emerson Electric, and Fisher-Rosemount filed counterclaims (invalidity/non-infringement); David Folsom (former E.D. Tex. Chief Judge) is listed as mediator. [Justia Docket 229342; Docket Alarm]

3. Initial pleadings and the August 2016 omnibus hearing

  • BP's motion to dismiss for failure to state a claim and misjoinder (E.D. Tex. Dkts. 87, 97, 104) carried into N.D. Ga.; SIPCO moved for leave to file a sur-reply on 2016-08-09 (Doc. 127), citing E.D. Tex. Local Rule CV-7(F) and arguing BP raised new matter in reply. [Docket Alarm Doc. 127]
  • 2016-08-10 hearing (Minute Sheet, Doc. 138): the court dismissed as moot Emerson's motion to enjoin prosecution of the second-filed action (1:15-cv-319, Dkt. 51); heard argument on SIPCO's transfer motion and BP joinder/necessary-party issues; and discussed severance, mediation, scheduling, and possible appointment of a special master. Briefing was stayed through 2016-08-15; a telephone conference set for 2016-08-15. On the companion DJ docket, the motion to de-designate Defendants' infringement contentions (1:15-cv-319, Dkt. 50) was deferred for party discussions to 2016-08-31. [Docket Alarm Doc. 138]

4. Pre-trial motions of substance

Motion Outcome
Emerson's motion to dismiss or transfer (E.D. Tex. Dkt. 10) Granted-in-part — transferred to N.D. Ga., 2016-07-01
Emerson's motion to enjoin the second-filed Texas action (1:15-cv-319, Dkt. 51) Dismissed as moot, 2016-08-10
BP p.l.c. motion to dismiss (Rule 12(b)(6) + misjoinder) Briefed (Dkts. 87/97/104); sur-reply sought 2016-08-09; disposition not confirmed in retrieved sources
SIPCO motion to de-designate infringement contentions (1:15-cv-319, Dkt. 50) Mooted/deferred after transfer; the '319 DJ action was overtaken by events
Motion to stay pending PTAB review Emerson repeatedly pressed this (e.g., its 2018 briefing: "This case should also be stayed pending final determination (including appeals) of all PTAB review of the asserted patents, and/or pending final determination (including appeal) of the requested ITC investigation"). [PTAB Ex., petition 1476095]
Motion for fees/sanctions After SIPCO filed two new suits on 2018-08-03, Emerson sought "any and all fees related to these additional, duplicative actions," alleging bad faith. [PTAB Ex., petition 1476095]

I could not confirm a dispositive motion ruling (e.g., a formal stay order or a dismissal order) in 1:16-cv-02690 from the sources retrieved.

5. Claim construction (Markman)

The case was on a Markman track in its 2015 incarnation (1:15-cv-319 scheduling order above), and SIPCO served Markman briefing that is quoted in the parallel ITC record (specifically on the '893 patent's "actuated transceiver"/"actual actuator" dispute). However, I found no Markman opinion or claim-construction order in 1:16-cv-02690. The case appears to have been overtaken by the PTAB proceedings before claim construction was decided. Treat any suggestion of a district-court Markman ruling as unverified.

6. Discovery milestones of strategic significance

  • 2015-08-28 scheduling order in 1:15-cv-319 set the infringement/invalidity-contentions and claim-construction exchange deadlines (infringement contentions due 2015-11-25 in that docket).
  • Intersection of the two dockets: the infringement-contentions de-designation fight (1:15-cv-319, Dkt. 50) shows Emerson using the DJ action's protective order to attack SIPCO's contentions.
  • 2016-08-10: the court required SIPCO to provide interrogatory answers and directed the parties to resolve the de-designation dispute by 2016-08-31 — the last concrete discovery-management milestone I can confirm.
  • ITC overlay: a parallel USITC investigation reached a Final Initial Determination on the '893 patent's application to Emerson WirelessHART field devices, with the ALJ expressly faulting respondents for citing "legal arguments from SIPCO's Markman brief ... taken out of context." [USITC Pub. 5256] (I could not verify the investigation number.)

7. Parallel PTAB proceedings and their effect — the decisive front

Proceeding Patent Key dates Result
IPR2016-00984 (Emerson v. SIPCO) '780 Filed 2016-04-29; instituted 2016-11-02; FWD 2017-10-25 Claims 1–15 all unpatentable — (i) §103 over the '732 patent (all challenged claims); (ii) §103 over Kahn + Applicant-Admitted Prior Art (claims 1, 2, 7); (iii) §103 over Kahn + AAPA + Burchfiel (claims 4, 6, 8)
CBM2016-00095 (Emerson v. SIPCO) '842 Filed July 2016; FWD 2018-01-16 Claims unpatentable under §101 and §103 over Tymes
IPR2017-00001 (Emerson v. SIPCO) '692 Petition Nov. 2016; FWD (partly unpatentable over Cunningham) Fed. Cir. affirmed 2019-06-10 (No. 2018-1986, Rule 36)

The '780 priority-claim saga (uniquely important here):

  • The '780 patent's priority claim to the '732 patent was defective due to a clerical error identifying the wrong parent application, making the '732 patent prior art.
  • SIPCO made four attempts to correct under 35 U.S.C. §255. The first two were dismissed as defective; the Board denied leave for a third and stayed further attempts.
  • 2018-02-08 — Petitions Branch granted SIPCO's fourth request; 2018-03-27 — certificate of correction issued.
  • 2018-06-22 — the '780 patent expired.
  • 2018-05-03 — SIPCO moved for remand; 2018-06-27 — Fed. Cir. partially remanded as to claims 3, 5, and 9–15 to address the certificate's effect (No. 2018-1364).
  • 2020-01-24 — PTAB Decision on Remand: the certificate of correction has no impact on the FWD (construing §255's "trial of actions thereafter arising" as prospective only).
  • 2021-01-21 — Fed. Cir. affirmed under Rule 36 (nonprecedential). [SIPCO, LLC v. Emerson Elec. Co., No. 2018-1364 (Fed. Cir. Jan. 21, 2021); PTAB Paper 52; Docket Alarm Exhibits 2039/2042]

Parallel ITC track: Emerson's briefing references "the requested ITC investigation," and a USITC Final Initial Determination (Pub. 5256) adjudicated the '893 patent against Emerson WirelessHART field devices — SIPCO proved some limitations but failed on the "scalable address" limitation, defeating claim 1 (and dependent claims 2 and 10).

8. Federal Circuit appeals

  • No. 2018-1364 ('780 IPR2016-00984): SIPCO appealed 2017-12-21; partial remand 2018-06-27; affirmed 2021-01-21 (Rule 36).
  • No. 2018-1635 ('842 CBM2016-00095): Panel (O'Malley, Reyna, Chen; authored by Chen) issued a precedential opinion 2019-09-25 reversing the Board's "low-power transceiver" construction and vacating the unpatentability findings, remanding on CBM eligibility. Emerson petitioned for cert (No. 19-966); the Supreme Court granted, vacated, and remanded in light of Thryv, Inc. v. Click-to-Call Technologies, LP (2020). On remand, the Fed. Cir. held 2020-11-17 that §324(e) makes the CBM-qualification determination non-appealable, affirmed the Board's obviousness holding over Tymes, and did not reach §101. Mandate issued 2021-01-11. [Finnegan case page; CAFC opinion 18-1635; Mondaq summary]
  • No. 2018-1986 ('692 IPR2017-00001): affirmed 2019-06-10 (Rule 36). A further panel decision in Emerson Elec. Co. v. SIPCO, LLC (Fed. Cir. Sept. 30, 2020) affirmed the Board's "low-power radio frequency signal" construction and its substantial-evidence findings on Cunningham, and upheld the Board's refusal to let Emerson submit new evidence. [Finnegan; A&O Shearman IP Blog, 2020-10-08]

9. Dilatory 2018 suits, dismissal, and fees fight

  • 2018-08-03 — SIPCO filed two new infringement suits against the same Emerson entities: S.D. Tex. (against Emerson Electric and Rosemount) and D. Del. No. 1:18-cv-01170 (against Emerson Process Management LLLP, Emerson Process Management Asia Pacific, Emerson Process Management Manufacturing (M) Sdn. Bhd., and Fisher-Rosemount Systems; asserting the '893, '511, '126, and '708 patents). [D. Del. AO 120; PTAB petition 1522795]
  • 2018-10-09 — the D. Del. case was dismissed without prejudice (AO 120 notation: "Dismissed – see attached").
  • Emerson moved in the N.D. Ga. case to stay pending PTAB appeals and for fees covering the duplicative filings, characterizing SIPCO's conduct as "bad faith, vexatious, wanton, and oppressive."

10. Final disposition / present posture

  • No trial, no jury verdict, no JMOL/new-trial practice, and no damages award occurred in 1:16-cv-02690.
  • The asserted rights were extinguished at the PTAB: the '780 patent's claims 1–15 were cancelled (FWD 2017-10-25, affirmed 2021-01-21), the '842 claims were held unpatentable, and the '692 claims were held unpatentable. The '780 patent also expired 2018-06-22.
  • The case is reported as closed/terminated; publicly indexed status pages show no post-2018 activity (UniCourt's last update is 2018-04-02). Caveat: I was unable to retrieve the actual terminating docket entry (dismissal order or stipulation) for 1:16-cv-02690, so I cannot state with confidence whether it closed by stipulated dismissal, voluntary dismissal, or an order granting a stay that was never lifted. Any statement that the parties "settled" would be speculation.

Confidence and sourcing notes

  • High confidence: the E.D. Tex. transfer (2016 WL 7743496) and its reasoning; the '780 IPR2016-00984 petition/institution/FWD and grounds; the four §255 correction attempts and the 2018-03-27 certificate; the '780 expiry on 2018-06-22; the partial remand, the 2020-01-24 remand decision, and the 2021-01-21 Rule 36 affirmance; the '842 CBM2016-00095 FWD and the Thryv remand outcome (2020-11-17); the 2018-08-03 duplicative suits and 2018-10-09 D. Del. dismissal.
  • Medium confidence: the exact set of patents in each successive amended complaint in the transferred action (the April 2016 amendment's contents are not fully clear from the retrieved excerpts); counsel rosters (compiled from Docket Alarm/Justia: SIPCO — Paul J. Cronin, James C. Fox II, James C. Hall, Thomas F. Meagher, Timothy J. Reppucci, and on appeal Gregory J. Gonsalves; Emerson — William V. Custer IV, James D. Berquist, Donald L. Jackson, Melissa Richards Smith, Ryan T. Pumpian, J. Scott Davidson; on appeal James L. Davis Jr., James R. Batchelder, Douglas Hallward-Driemeier, all of Ropes & Gray).
  • Low confidence / unresolved: any N.D. Ga. Markman order (none found); the terminating docket entry; the ITC investigation number and its specific disposition; whether Emerson's fees motion was ever decided; and whether the BP motion to dismiss was granted or denied.

Key sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

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

Let me dig deeper into the N.D. Ga. docket and the specific counsel entries.

Let me verify the N.D. Ga. appearance entries and attorney backgrounds.

Counsel of Record for the Plaintiff(s) — SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690-AT (N.D. Ga.)

Important threshold point on the case itself

Before listing counsel, one structural fact that bears directly on "counsel of record": this N.D. Ga. case is a transferred case, not an originally-filed one. N.D. Ga. No. 1:16-cv-02690-AT is the case that began as SIPCO, LLC & IP Co., LLC v. Emerson Electric Co., et al., No. 6:15-cv-00907-JRG-KNM (E.D. Tex., Tyler Div.), filed 10/16/2015. On 7/1/2016, Magistrate Judge K. Nicole Mitchell granted Emerson's motion to transfer, and the case was docketed in N.D. Ga. on 7/26/2016 (see N.D. Ga. Dkt. 110, which reproduces the E.D. Tex. docket sheet; Dkt. 127 at ¶ 2 states: "On July 22, 2016, the above-captioned case was transferred to this Court from the U.S. District Court for the Eastern District of Texas, Civil Action No. 15-907"). The caption given in your metadata ("SIPCO, LLC v. Emerson Electric Co.") is the Docket Alarm/Google Patents short form; the full N.D. Ga. caption is SIPCO, LLC and IP Co., LLC (d/b/a Intus IQ) v. Emerson Electric Co., Emerson Process Management LLLP, Fisher-Rosemount Systems, Inc., Rosemount Inc., BP p.l.c., BP America Inc., and BP America Production Co. The 768-family patent noted in the metadata ('780) was also the subject of parallel PTAB proceedings (IPR2016-00984), which is relevant to which firms stayed on the case.

Because plaintiff's counsel entered appearances in the E.D. Tex. case and then continued in N.D. Ga., I list both the N.D. Ga. of-record attorneys and the Texas-side appearances that remained on the docket after transfer.

A. Lead / primary plaintiffs' counsel — Nutter, McClennen & Fish LLP (Boston, MA)

Attorney Role Firm / Office Note
Paul J. Cronin Principal/lead plaintiffs' counsel (Nutter team) Nutter, McClennen & Fish LLP, Seaport West, 155 Seaport Blvd., Boston, MA Named as plaintiffs' counsel of record throughout the case (see N.D. Ga. Dkt. 130 certificate of service listing "Paul J. Cronin, James C. Hall — NUTTER, MCCLENNEN & FISH LLP" as plaintiffs' counsel). Long-time patent litigator and former chair of Nutter's IP litigation group.
James C. Hall Plaintiffs' counsel (Nutter team) Nutter, McClennen & Fish LLP, Boston, MA On the E.D. Tex. docket sheet carried into N.D. Ga. (Dkt. 110) as "ATTORNEY TO BE NOTICED"; also served in the related N.D. Ga. DJ action 1:15-cv-00319-AT.
Timothy J. Reppucci Plaintiffs' counsel (Nutter team) Nutter, McClennen & Fish LLP, Boston, MA Noticed an appearance in the E.D. Tex. action (6:15-cv-00907) and is listed as a plaintiff/counter-defendant attorney of record on the N.D. Ga. docket (UniCourt docket extract). Author of the declaration challenged by defendants in the sever/stay briefing.

Sourcing note: Nutter's Boston office appears consistently in certificates of service and the transferred docket sheet. I could not retrieve an N.D. Ga. docket entry expressly designating a single "lead trial counsel," so the "lead" characterization above rests on which attorneys signed and were served as plaintiffs' counsel, not on a formal Rule 83/7.1 designation.

B. Plaintiffs' counsel of record — local counsel in N.D. Ga. — Thompson Hine LLP (Atlanta, GA)

Attorney Role Firm / Office Note
J. Christopher Fox, II Local counsel (N.D. Ga.) Thompson Hine LLP, Two Alliance Center, Ste. 1600, 3560 Lenox Rd., Atlanta, GA 30326 Filed the Notice of Appearance as counsel for SIPCO, LLC and IP Co., LLC on 7/28/2016 (N.D. Ga. Dkt. 111). Ga. Bar No. 272527.
Michael Coleman Local counsel (N.D. Ga.) Thompson Hine LLP, Atlanta Appears as plaintiffs' counsel on the N.D. Ga. service certificates (Dkt. 130); Ga. Bar No. 177635.
Peter D. Coffman Local counsel (N.D. Ga.) Thompson Hine LLP, Atlanta Signed the 12/9/2016 service certificate in the related 1:15-cv-00319-AT action alongside Nutter; Ga. Bar No. 173120.
Alexandra Nelson Local counsel (N.D. Ga.) Thompson Hine LLP, Atlanta Same 12/9/2016 certificate of service; Ga. Bar No. 241352.

Caveat: Coleman, Coffman, and Nelson appear on service papers in the companion declaratory-judgment case (1:15-cv-00319-AT) and in papers filed after transfer; Fox's notice of appearance is docketed in 1:16-cv-02690 itself. Treat the Thompson Hine team as the Atlanta local-counsel group.

C. Plaintiffs' counsel of record — Texas trial counsel — Ward, Smith & Hill, PLLC (Longview, TX)

Attorney Role Firm / Office Note
Thomas John Ward, Jr. Texas trial counsel Ward, Smith & Hill, PLLC, 1507 Bill Owens Pkwy., Longview, TX On the E.D. Tex. docket sheet carried into N.D. Ga. (Dkt. 110) as counsel for SIPCO, LLC and IP Co., LLC. Son of retired E.D. Tex. Judge T. John Ward; experienced E.D. Tex. patent trial lawyer.
Claire Abernathy Henry Texas trial counsel Ward, Smith & Hill, PLLC, Longview, TX Same docket sheet (Dkt. 110); filed plaintiff's PR 4-1/4-2 disclosures and privilege-log notices in the Texas action; well-known E.D. Tex. patent litigator.
Andrea Leigh Fair Texas trial counsel Ward, Smith & Hill, PLLC, Longview, TX Noticed appearance on behalf of SIPCO, LLC and IP Co., LLC in the Texas action (7/7/2016), carried into the transferred case.

D. Plaintiffs' counsel of record — of counsel (patent-specific) — Meagher Emanuel Laks Goldberg & Liao LLP (Princeton, NJ)

Attorney Role Firm / Office Note
Thomas F. Meagher Of counsel / patent counsel to plaintiffs (also IPR and appellate counsel) Meagher Emanuel Laks Goldberg & Liao LLP (later Meagher Emanuel Laks Goldberg & Bovino LLP), One Palmer Square, Ste. 325, Princeton, NJ 08542 Filed a Notice of Appearance for plaintiffs in E.D. Tex. (6:15-cv-00907, Dkt. 26) and is listed as a plaintiffs' attorney of record in the N.D. Ga. case. Registered patent attorney (Reg. No. 29,831). Also represented SIPCO before the PTAB and on the Federal Circuit in SIPCO, LLC v. Emerson Elec. Co., No. 18-1364 (Fed. Cir. Jan. 21, 2021) (nonprecedential).

E. Related PTAB / appellate counsel (NOT district-court counsel of record in 1:16-cv-02690)

These attorneys represented SIPCO in the inter partes reviews and appeals that ran parallel to this case. They are not shown as counsel of record on the N.D. Ga. district docket, but they are part of the same client team and are commonly asked about:

  • Dr. Gregory J. Gonsalves — Gonsalves Law Firm, 2216 Beacon Lane, Falls Church, VA (Reg. No. 43,639). SIPCO's lead counsel in the IPRs against Emerson (e.g., IPR2019-00548, IPR2019-00547, IPR2017-00216) and principal counsel/arguer for SIPCO on the Federal Circuit appeals (18-1364 argued by Gonsalves; also 18-1986, 21-1039/21-1040 with Finnegan).
  • James E. Schutz and Dustin B. Weeks — Troutman Sanders LLP, Bank of America Plaza, 600 Peachtree St., Atlanta, GA. Listed as Patent Owner's counsel in certain SIPCO IPRs (e.g., IPR2015-01579 certificate of service; IPR2017-00216).
  • In-house: Eric Yoon, General Counsel, SIPCO, LLC — signed a power of attorney appointing PTAB counsel in IPR2019-00547.

Summary of who to serve / who is on the pleadings

  • Atlanta local counsel of record on the 1:16-cv-02690 docket: J. Christopher Fox, II (and the Thompson Hine team — Coleman, Coffman, Nelson), Atlanta.
  • Primary/originating counsel: Nutter, McClennen & Fish LLP (Cronin, Hall, Reppucci), Boston.
  • Texas trial counsel: Ward, Smith & Hill, PLLC (T. John Ward, Jr., Claire Abernathy Henry, Andrea Leigh Fair), Longview.
  • Patent/of-counsel: Thomas F. Meagher, Meagher Emanuel Laks Goldberg & Liao, Princeton.
  • PTAB/appellate: Dr. Gregory J. Gonsalves (Gonsalves Law Firm) and Troutman Sanders attorneys.

Limitations / things I could not verify

  • I found no formal "lead counsel" designation order or entry in the 1:16-cv-02690 docket; the N.D. Ga. docket extracts (UniCourt) simply list five plaintiffs'/counter-defendants' attorneys (Reppucci, Fox, Meagher, Cronin, Hall). The Texas docket sheet (Dkt. 110) tags counsel as "ATTORNEY TO BE NOTICED" without a lead designation for plaintiffs.
  • The metadata in your prompt lists only U.S. Patent 8,754,780 as at issue; the complaints reproduced in this docket asserted a broader group (e.g., the '692, '893, '511, '492, '732, '516 patents), and the '780 was litigated primarily in IPR2016-00984. I did not locate a source confirming which patent(s) remained live in the N.D. Ga. case at dismissal.
  • Some filings in the 1:15-cv-00319-AT companion action were filed under seal (the Texas docket notes "[SEALED] Response to Motion" and "[SEALED] PATENT SUR‑REPLY"); I could not review sealed material, so any additional counsel appearing only in sealed papers would not be captured here.
  • Firm-name and office details reflect the 2016–2017 record; Meagher Emanuel has since been renamed (…Goldberg & Bovino LLP), and individual attorneys may have moved.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for Emerson Electric in this case. Let me start with several searches.

Let me dig deeper into the docket and the specific attorneys listed.

Scope note before the list

The case as docketed is broader than the single-defendant caption in the case metadata. The N.D. Ga. docket for SIPCO, LLC et al. v. Emerson Electric Co. et al., No. 1:16-cv-02690-AT (Judge Amy Totenberg) names these defendants: Emerson Electric Co., Emerson Process Management LLLP, Fisher-Rosemount Systems, Inc., Rosemount Inc., BP p.l.c., BP America, Inc., and BP America Production Company (Dockets.Justia docket sheet; Docket Alarm Doc. 135 caption). The Emerson entities and the BP entities have different counsel, so I separate them below. I focus on Emerson Electric Co. per your instruction, then flag the BP group for completeness.

Caveat on sourcing: I could not pull the live PACER docket in this session. Everything below comes from reproduced docket documents (Docket Alarm PDFs of Docs. 130, 135, 138), the Dockets.Justia/UniCourt docket summaries, and PTAB/Federal Circuit filings. Where I could not verify something, I say so.

Emerson Electric Co. (and the affiliated Emerson defendants)

Davidson Berquist Jackson & Gowdey, LLP — McLean, Virginia (lead / national patent counsel)

Attorney Role Notes
Donald L. Jackson (Reg. No. 41,090) Attorney of record for Emerson Electric Co., Fisher-Rosemount Systems, Rosemount, and Emerson Process Management; effectively lead counsel Founding partner of DBJG; named on the Doc. 130 certificate of compliance (Aug. 10, 2016) as counsel "[for] Defendants Emerson Electric Co., Fisher-Rosemont Systems, Inc., Rosemount Inc., and Emerson Process Management LLLP." Listed as lead counsel on Emerson's 2017 IPR petitions against SIPCO (e.g., IPR2017-00260, IPR2017-00308).
James D. Berquist (Reg. No. 34,776) Attorney of record; IPR counsel DBJG partner; appears in the Aug. 10, 2016 hearing minute sheet (Doc. 138) as "representing Emerson Electric Co." and Fisher-Rosemount; named on Emerson's 2017 IPR powers of attorney.
J. Scott Davidson Attorney of record DBJG; listed in the 2013–2015 Emerson-side filings and in the UniCourt attorney roster for this case.

Bryan Cave LLP (now Bryan Cave Leighton Paisner) — Atlanta, Georgia (local counsel)

Attorney Role Notes
William V. Custer IV ("William Vance Custer, IV") Local counsel Bryan Cave Atlanta; appeared for Emerson in the related N.D. Ga. declaratory-judgment action (Doc. 4 in 1:13-cv-02528) and is listed as a defendant/counterclaimant attorney on this docket.
Damon J. Whitaker Local counsel Bryan Cave Atlanta; the Aug. 10, 2016 minute sheet (Doc. 138) records "Damon Whitaker representing Emerson Electric Co." and Fisher-Rosemount at the hearing on SIPCO's motion to transfer.

BP defendants (separate counsel — not Emerson's)

  • Ryan T. Pumpian — Bloom Sugarman LLP, Atlanta (Ga. Bar No. 589822), local counsel for BP p.l.c., BP America, Inc., and BP America Production Company. The Doc. 138 minute sheet expressly records him appearing for the three BP entities, and the Doc. 135 standing-order certification is signed by him. He is an Atlanta IP litigator (former S.D. Fla. law clerk; later at Pogo Law). UniCourt's aggregate "defendant/counterclaimant attorney" list lumps him in with the Emerson-side attorneys, which can be misleading — the minute sheet is the better source on who represented whom.

Uncertain: Melissa Richards Smith (Gillam & Smith LLP, Marshall, Texas) appears in UniCourt's list of "Defendant and Counter Claimant Attorneys" for this case. Gillam & Smith is an E.D. Tex. firm with a deep patent-litigation practice, which would be consistent with local counsel for the Texas-based BP entities (BP America is Houston-based) during the E.D. Tex. phase of this dispute (the case originated as SIPCO v. Emerson, No. 6:15-cv-00907, E.D. Tex., and was transferred into N.D. Ga. as 1:16-cv-02690). I could not verify from the documents I retrieved which defendant she appeared for, so treat her role as unconfirmed.

Adjacent counsel (not district-court counsel of record, but relevant to the same dispute)

  • Ropes & Gray LLP — Emerson's PTAB and appellate counsel in later phases: James L. Davis, Jr. and Carolyn Redding (IPR2019-00547/-00548 powers of attorney); Matthew R. Shapiro (back-up, New York). On the Federal Circuit appeal (SIPCO, LLC v. Emerson Electric Co., No. 18-1635), Emerson's appearances were Douglas H. Hallward-Driemeier (principal) with James R. Batchelder and James L. Davis, Jr. as of counsel (all Ropes & Gray). Note the modest but real shift: Emerson's 2017 IPRs were handled by Davidson Berquist; its 2019 IPRs and the Federal Circuit appeal by Ropes & Gray.
  • David Folsom (Jackson Walker LLP) appears on the docket as mediator — not counsel for any party.
  • In-house counsel: I found no Emerson in-house attorney entering an appearance on this docket. If one exists, it is not reflected in the documents I could access.

Gaps and caveats

  1. Docket entry numbers for pro hac vice admissions and formal appearances are not documented here. My firm/location data rests on Doc. 130 (Aug. 10, 2016 certificate of compliance), Doc. 135 (standing-order certification), Doc. 138 (Aug. 10, 2016 minute sheet), and the reconstructed E.D. Tex.→N.D. Ga. transfer record. Doc. 130's list of Emerson-side attorneys is truncated in the Docket Alarm rendering ("Donald L. …"), which I read as Donald L. Jackson but could not see in full.
  2. The '780 patent. The case metadata lists only U.S. Patent No. 8,754,780, but the complaint excerpts and IPR record in this dispute center on SIPCO's '692, '893, '492, '511, '732, '062, '516, and '314 patents. I could not verify from the snippets I retrieved how (or whether) the '780 patent was pleaded in 1:16-cv-02690; it may have been added by amendment or belong to the parallel SIPCO v. Emerson/BP thread. Flagging rather than asserting.
  3. Sealed/withdrawn appearances. I have no evidence of sealed filings affecting counsel, but I also cannot affirmatively rule them out.
  4. Counsel current status. Several counsel have since moved firms (e.g., Bryan Cave → BCLP; Pumpian's practice has since been associated with Pogo Law), so firm affiliations above reflect the period of the litigation plus present-day successors where confirmed.

If you need the definitive appearance list, the next step is a direct PACER pull of the 1:16-cv-02690 docket (all entries under "Attorney Appearance," "PHV," and the Doc. 130/135/138 filings), which I was not able to do in this session.