DCT
1:18-cv-01170
Sipco LLC v. Emerson Process Management
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sipco LLC (Georgia)
- Defendant: Emerson Process Management LLLP (Delaware); Emerson Process Management Asia Pacific Private Limited (Singapore); Emerson Process Management Manufacturing (M) Sdn. Bhd. (Malaysia); and Fisher-Rosemount Systems, Inc. (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP
- Case Identification: 1:18-cv-01170, D. Del., 08/03/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants Emerson Process Management and Fisher-Rosemount are incorporated in Delaware, and the other foreign-domiciled defendants may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s wireless mesh networking products, which utilize the WirelessHART communication protocol for industrial automation, infringe four patents related to systems for monitoring and controlling remote devices.
- Technical Context: The technology concerns wireless mesh networks, where individual nodes (transceivers) can communicate with each other to relay data, creating robust and flexible communication paths for monitoring and controlling sensors and actuators in industrial or residential settings.
- Key Procedural History: The complaint notes that U.S. Patent No. 7,103,511 was the subject of an ex parte reexamination, resulting in the issuance of a reexamination certificate. The complaint also alleges that Defendant had knowledge of the ’511 patent as early as January 2011, of the ’893 and ’511 patents around July 2013, and of the patent applications that led to the ’708 and ’126 patents as of October 2011.
Case Timeline
| Date | Event |
|---|---|
| 1998-06-22 | Earliest Priority Date for ’893 Patent |
| 1999-10-05 | Earliest Priority Date for ’511 Patent |
| 2001-03-19 | Earliest Priority Date for ’708 Patent |
| 2005-01-25 | Earliest Priority Date for ’126 Patent |
| 2005-07-05 | ’893 Patent Issued |
| 2006-09-05 | ’511 Patent Issued |
| 2011-01-XX | Alleged Knowledge of ’511 Patent |
| 2011-10-25 | ’511 Patent Reexamination Certificate Issued |
| 2011-10-25 | Alleged Knowledge of Applications for ’708 & ’126 Patents |
| 2013-07-XX | Alleged Knowledge of ’893 and ’511 Patents |
| 2015-02-24 | ’708 Patent Issued |
| 2016-09-06 | ’126 Patent Issued |
| 2018-08-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,914,893 - "System and Method for Monitoring and Controlling Remote Devices"
The Invention Explained
- Problem Addressed: The patent’s background describes prior art control systems as being costly and risky due to their reliance on hard-wired connections between remote sensors/actuators and a local controller, creating a single point of failure and making installation in existing facilities expensive and dangerous (’893 Patent, col. 1:56–col. 2:25).
- The Patented Solution: The invention proposes a computerized system where remote devices communicate wirelessly through a network of transceivers (’893 Patent, col. 2:31-46). These transceivers, some integrated with sensors and others acting as stand-alone repeaters, relay information via a packet message protocol to a gateway interface, which then connects to a wider network like the Internet (’893 Patent, Abstract; Fig. 2). This distributed architecture is intended to be more robust, scalable, and less expensive to deploy than traditional hard-wired systems (’893 Patent, col. 2:56-65).
- Technical Importance: This approach enabled the cost-effective deployment of large-scale monitoring and control systems in environments where extensive wiring was impractical (’893 Patent, col. 5:1-12).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 19 (Compl. ¶49).
- Essential Elements of Independent Claim 1:
- A system for communicating commands and sensed data between remote devices.
- A plurality of transceivers, each in communication with at least one other transceiver, and each having a unique address.
- A controller connected to one of the transceivers.
- Communication occurs via preformatted messages comprising at least one packet.
- The packet comprises a receiver address, a sender address, a command indicator, at least one data value, and an error detector.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent but does so for others, suggesting a focus on the independent claims.
U.S. Patent No. 7,103,511 - "Wireless Communication Networks for Providing Remote Monitoring of Devices"
The Invention Explained
- Problem Addressed: The patent addresses the challenge of managing communications between a host computer on a wide area network (WAN) and a distributed collection of remote wireless devices, a problem that arises when scaling up remote monitoring systems (’511 Patent, col. 1:40-44).
- The Patented Solution: The invention describes a wireless communication network architecture comprising a plurality of wireless transceivers and a "site controller" (’511 Patent, Abstract). Remote transceivers transmit "original data messages," and other transceivers in the network can receive and re-transmit these as "repeated data messages," creating a mesh network (’511 Patent, col. 2:40-51). The site controller acts as a bridge, receiving these messages and providing the information to a host computer on a WAN, as illustrated in the patent’s Figure 1 (’511 Patent, Abstract).
- Technical Importance: The claimed architecture provides a structured way to connect a local, self-organizing wireless sensor network to a centralized monitoring and control platform over a standard wide area network, facilitating large-scale deployments (’511 Patent, col. 2:30-39).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, and 44 (Compl. ¶68).
- Essential Elements of Independent Claim 1:
- A wireless communication network with a plurality of wireless transceivers, each with a unique identifier.
- Each transceiver is configured to receive a sensor data signal and transmit an "original data message" containing the unique identifier and sensor data.
- Each transceiver is further configured to receive an original data message from another transceiver and transmit a "repeated data message."
- A site controller in communication with at least one transceiver, configured to receive the original and repeated messages and provide information to a wide area network.
- The complaint explicitly reserves the right to assert dependent claims (Compl. ¶¶70-72).
U.S. Patent No. 8,964,708 - "Systems and Methods for monitoring and Controlling Remote Devices"
Technology Synopsis
This patent, which is a continuation of the family that includes the ’893 patent, further describes systems for monitoring and controlling geographically diverse remote devices from a central location. The invention addresses the technical challenge of reliably communicating commands and sensed data in such a distributed wireless system using transceivers that employ a preformatted message protocol.
Asserted Claims
Independent claims 1 and 16 (Compl. ¶88).
Accused Features
Emerson's wireless mesh networks, including gateways, I/O cards, and remote sensor devices, which are alleged to form systems for controlling geographically diverse devices from a central location (Compl. ¶¶90-91).
U.S. Patent No. 9,439,126 - "Wireless Network Protocol System and Methods"
Technology Synopsis
This patent discloses a wireless network protocol where a "site controller" communicates with a plurality of remote devices. The technology addresses the problem of optimizing data transmission paths in such a network by enabling remote devices to collect and store information about other devices and available communication paths, allowing them to independently select routing for data transmissions.
Asserted Claims
Independent claims 1, 7, and 12 (Compl. ¶107).
Accused Features
Emerson's wireless communication networks that include a site controller (accused of being the gateway) wirelessly coupled to a plurality of wireless remote devices (Compl. ¶¶109-111).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Emerson’s wireless mesh networking products, including but not limited to Smart Wireless Gateways (e.g., 1410A, 1410D, 1420), DeltaV Wireless I/O Cards, and various wireless remote devices such as temperature and pressure transmitters (e.g., Rosemount 248, Rosemount 702) (Compl. ¶¶36-37). The complaint states these products operate using the WirelessHART communication protocol (Compl. ¶34).
Functionality and Market Context
- The complaint alleges that the accused products form a wireless mesh network where remote devices with sensors communicate data via packets through other remote devices to a gateway (Compl. ¶34). The gateway allegedly includes a network manager that maintains information on the remote devices and communication paths (Compl. ¶34). Each remote device is alleged to have a unique identifier and to collect network statistics used for routing data packets (Compl. ¶34).
- The complaint alleges these products are part of an "extensive wireless product portfolio" with "billions of operating hours and thousands of networks installed worldwide" (Compl. ¶18). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,914,893 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of transceivers, each transceiver being in communication with at least one other of the plurality of transceivers | The accused systems include multiple gateways and remote devices that are transceivers and communicate with each other to form a wireless mesh network. | ¶51 | col. 12:23-26 |
| wherein each transceiver has a unique address | Each accused remote device has a unique identifier. | ¶34 | col. 13:41-44 |
| a controller, connected to one of the plurality of transceivers | Emerson’s gateways act as a controller and are connected to the network of remote device transceivers. | ¶34, ¶51 | col. 12:3-13 |
| wherein each transceiver communicates with each of the other transceivers via preformatted messages; wherein the preformatted messages comprises at least one packet | Sensor data and command codes are communicated via data packets that follow the WirelessHART protocol. | ¶34 | col. 14:23-26 |
| wherein the packet comprises: a receiver address...; a sender address...; a command indicator...; at least one data value...; and an error detector | The complaint incorporates by reference Exhibit ZZ, a claim chart which allegedly maps the elements of the WirelessHART protocol to these claimed packet components. | ¶51, ¶53 | col. 15:23-34 |
Identified Points of Contention
- Scope Questions: Claim 1 recites a "controller, connected to one of the plurality of transceivers." A potential issue is whether the accused gateway, which manages the network, fits the description of the "controller" as described in the patent, which appears to be a more general-purpose computing device like a server or workstation that hosts applications (’893 Patent, Fig. 2, items 240, 250, 260).
- Technical Questions: The complaint alleges infringement through the use of the WirelessHART protocol (Compl. ¶34). A central technical question will be whether the specific packet structure and fields of the WirelessHART protocol map onto the claimed packet elements (receiver address, sender address, command indicator, data value, error detector) as defined by the patent's specification (’893 Patent, Fig. 7).
U.S. Patent No. 7,103,511 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of wireless transceivers having unique identifiers | The accused systems include multiple wireless remote devices, each alleged to have a unique identifier. | ¶34, ¶70 | col. 2:54-56 |
| each of the plurality of wireless transceivers configured to...transmit an original data message | The complaint alleges remote devices transmit sensor data. | ¶34 | col. 2:59-62 |
| each of the plurality of wireless transceivers...further configured to...transmit a repeated data message | The accused remote devices are alleged to communicate "indirectly through other remote devices," implying message repetition. | ¶34 | col. 2:62-65 |
| a site controller in communication with at least one of the plurality of wireless transceivers | Emerson’s gateways are alleged to function as the claimed site controller, communicating with the wireless remote devices. | ¶34, ¶70 | col. 2:42-44 |
| the site controller configured to: receive the original data messages and the repeated data messages; and provide information related to the sensor data signal to a wide area network | The gateway is alleged to receive data packets from the remote devices and provides a connection to a wider network. | ¶34 | col. 2:65-col. 3:5 |
Identified Points of Contention
- Scope Questions: The case may turn on whether Emerson's gateway products meet the definition of a "site controller" as claimed. The patent describes the site controller as managing communications and relaying information to a host computer on a WAN (’511 Patent, Abstract). The defense may argue that the accused gateways are functionally different from the "site controller" contemplated by the patent.
- Technical Questions: A key evidentiary question will be how the WirelessHART protocol distinguishes between an "original data message" and a "repeated data message." The complaint's allegations are based on the general mesh functionality (Compl. ¶34), but proof of infringement will require a technical showing that the accused system's messages meet these specific claim limitations.
V. Key Claim Terms for Construction
The Term: "site controller" (’511 Patent, Claim 1)
- Context and Importance: The infringement analysis for the ’511 Patent hinges on whether Emerson's "Smart Wireless Gateway" products embody the claimed "site controller." Practitioners may focus on this term because the patent's specification provides functional descriptions that could be used to argue for either a broad or narrow construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself defines the term functionally as something that is "in communication with at least one of the plurality of wireless transceivers" and is configured to "receive the original data messages and the repeated data messages" and "provide information...to a wide area network" (’511 Patent, Claim 1). This functional language may support a broad reading covering any device that bridges the local wireless network to a WAN.
- Evidence for a Narrower Interpretation: The detailed description suggests a site controller may serve as a "back-up" to another site controller or "function as a primary site controller to expand the potential size of coverage area" (’511 Patent, col. 6:4-7). A defendant could argue that this language implies a more complex management and redundancy role than that performed by the accused gateways.
The Term: "preformatted messages" (’893 Patent, Claim 1)
- Context and Importance: The infringement finding for the ’893 Patent depends on whether the data packets used in the accused WirelessHART systems constitute the "preformatted messages" of the claims. The patent details a specific message structure, raising the question of how closely the accused protocol must match it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 provides a functional definition, requiring the message's packet to comprise five elements: a receiver address, sender address, a command indicator, data value, and error detector. An argument could be made that any protocol containing these five functional components meets the limitation, regardless of other structural differences.
- Evidence for a Narrower Interpretation: The specification provides a highly detailed embodiment of the message structure, including specific byte lengths and field orders for elements like "Pkt. No.," "Pkt. Max.," and "Msg. Num." (’893 Patent, Fig. 7, col. 15:23-34). A defendant might argue that "preformatted messages" should be construed to be limited to messages that include these specific structural details, not just the five high-level components recited in the claim.
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement based on Defendant marketing, selling, and providing technical support and documentation (such as product manuals, data sheets, and case studies) that instruct and encourage customers to install and operate the Accused Products in an infringing manner (Compl. ¶¶55-56, 75-76). Contributory infringement is alleged on the basis that the accused gateways, I/O cards, and remote devices are material components especially made and adapted for use in infringing wireless mesh networks and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶57, 77).
Willful Infringement
Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the patents. The complaint claims Defendant knew of the ’511 patent as early as January 2011, of both the ’893 and ’511 patents by July 2013, and of the patent applications for the ’708 and ’126 patents by October 2011 (Compl. ¶¶42-43). The allegation is that Defendant continued its infringing conduct despite this knowledge (Compl. ¶62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and construction: can the terms "controller" (’893 Patent) and "site controller" (’511 Patent), which are described with specific roles in the patent specifications, be construed broadly enough to read on the functionality of Defendant’s accused Smart Wireless Gateway products?
- A key evidentiary question will be one of protocol mapping: does the specific structure and operation of the accused WirelessHART communication protocol meet the functional and structural requirements of the "preformatted messages" and the distinction between "original" and "repeated" messages as claimed in the patents-in-suit?
- A significant question for damages will be willfulness: does the evidence support the complaint's allegations of pre-suit knowledge dating back to 2011, and if so, was Defendant's continued conduct objectively reckless, potentially justifying enhanced damages?