Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 1 of 7 PageID #: 2629
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`§
`INVENSYS SYSTEMS, INC.,
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`§
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`Plaintiff,
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`v.
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`§
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`§
`EMERSON ELECTRIC CO. and
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`MICRO MOTION INC., USA,
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`§
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`Defendants,
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`and
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`§
`MICRO MOTION INC., USA,
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`§
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`Counterclaim-Plaintiff,
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`v.
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`§
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`§
`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant. §
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`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
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`Pursuant to Local Patent Rule 4-3 and the Court’s Fourth Amended Docket Control
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`Order dated January 22, 2014 (Dkt. 103), Plaintiff and Counterclaim-Defendant Invensys
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`Systems, Inc. (“Invensys”) and Defendant Emerson Electric Co. (“Emerson”) and Defendant and
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`Counterclaim Plaintiff Micro Motion, Inc. (“Micro Motion”) hereby submit the following Joint
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`Claim Construction and Prehearing Statement. The parties expressly reserve the right to modify
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`this Joint Statement should the Court issue any relevant rulings, including, but not limited to,
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`rulings on claim construction or adjustment of case management deadlines and any related
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`additional disclosures or discovery, between now and the Markman hearing scheduled for May
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`1, 2014.
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 2 of 7 PageID #: 2630
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`The Invensys Patents-in-Suit are U.S. Patent Nos. 7,124,646 entitled “Correcting for
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`Two-Phase Flow in a Digital Flowmeter” and issued on October 24, 2006 (“the ‘646 Patent”);
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`7,136,761 entitled “Digital Flowmeter” and issued on November 14, 2006 (“the ‘761 Patent);
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`6,311,136 entitled “Digital Flowmeter” and issued on October 30, 2001 (“the ‘136 Patent”);
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`7,505,854 entitled “Startup Techniques for a Digital Flowmeter” and issued on March 17, 2009
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`(“the ‘854 Patent”); 6,754,594 entitled “Digital Flowmeter and issued on June 22, 2004 (“the
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`‘594 Patent”); 7,571,062 entitled “Digital Flowmeter” and issued on August 4, 2009 (“the ‘062
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`Patent”); and 8,000,906 entitled “Digital Flowmeter” and issued on August 16, 2011 (“the ‘906
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`Patent”) (collectively, the “Invensys Patents”).
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`The Micro Motion Patents-in-Suit are U.S. Patent Nos. 5,555,190 entitled “Method and
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`Apparatus for Adaptive Line Enhancement in Coriolis Mass Flow Meter Measurement” and
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`issued on September 10, 1996 (“the ‘190 Patent”) and 6,505,131 entitled “Multi-Rate Digital
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`Signal Processor for Signals from Pick-Offs on a Vibrating Conduit” and issued on January 7,
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`2003 (“the ‘131 Patent”) (collectively, the “Micro Motion Patents-in-Suit”).
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`Section a of this Joint Claim Construction Statement identifies the claim terms and
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`phrases of the Invensys Patents-in-Suit and Micro Motion Patents-in-Suit for which the parties
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`have agreed to a proper construction. Section b and Exhibits A and B contain the parties’
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`proposed constructions for the disputed terms and phrases of each of the Invensys Patents-in-Suit
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`and Micro Motion Patents-in-Suit, along with the identification of supporting intrinsic and
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`extrinsic evidence. Section c contains the parties’ positions regarding the anticipated length of
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`the claim construction hearing. Section d addresses the expert testimony that the parties may rely
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`on in support of their proposed claim constructions. Section e addresses the parties’ current
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`position on the need for a prehearing conference.
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 3 of 7 PageID #: 2631
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`1. Agreed Constructions of Claim Terms P.R. 4-3(a)
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`Pursuant to P.R. 4-3(a), the parties have agreed to the following constructions for the
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`Invensys Patents-in-Suit:
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`Patent:Claim Claim Term
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`And as to the Micro Motion Patents-in-Suit, the parties have agreed to the following
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`Agreed Construction
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`constructions:
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`Patent:Claim Claim Term
`’131: 1, 13, 26
`“decimating said
`samples”
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`Agreed Construction
`“converting from a first number of samples to a lesser
`number of samples”
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`2. Disputed Constructions of Claim Terms P.R. 4-3(b)
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`Pursuant to P.R. 4-3(b), and in the claim term charts attached as Exhibits A (Invensys
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`Patents-in-Suit) and B (Micro Motion Patents-in-Suit), the parties designate disputed claim
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`terms, phrases, and clauses and state their positions on the construction of those terms, phrases,
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`and clauses for each of the Patents-in-Suit. The parties also identify in Exhibits A and B the
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`intrinsic and extrinsic evidence, if any, upon which they may rely to support their proposed
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`constructions. Each party expressly reserves the right to rely on any intrinsic or extrinsic
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`evidence identified by the other party and any evidence obtained, or that may be obtained,
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`through claim construction discovery. Each party expressly reserves the right to amend, correct,
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`or supplement its claim construction positions and supporting evidence in response to any
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`change of position by the other party, in response to the extrinsic and intrinsic evidence disclosed
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`by each party, in response to information received through claim construction discovery, in
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`response to a controlling Court order, or for other good cause. Emerson and Micro Motion
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`expressly reserve the right to contest the definiteness of any of the terms, phrases, or clauses
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 4 of 7 PageID #: 2632
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`identified in Exhibit A and the validity of any claim in the Invensys Patents-in-Suit. Emerson and
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`Micro Motion also reserve the right to identify additional terms and constructions to the extent
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`Invensys amends its infringement contentions. And Invensys expressly reserves the right to
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`contest the definiteness of any of the terms, phrases, or clauses identified in Exhibit B and the
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`validity of any claim in the Micro Motion Patents-in-Suit. Invensys also reserves the right to
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`identify additional terms and constructions to the extent Micro Motion amends its infringement
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`contentions.
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`3. Length of Claim Construction Hearing P.R. 4-3(c)
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`Pursuant to P.R. 4-3(c), Invensys requests 1.5 hours per side for the claim construction
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`hearing. Emerson and Micro Motion request 1.5 hours per side for the claim construction
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`hearing.
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`4. Live Witness Testimony at Claim Construction Hearing P.R. 4-3(d)
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`Pursuant to 4-2(d), and with respect to the testimony of percipient and expert witnesses,
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`the parties do not believe that any live witness testimony is needed at the claim construction
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`hearing. However, the parties may rely on expert witness declarations. Invensys intends to offer
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`testimony of Dr. Jeffrey Rodriguez1 of the University of Arizona and Dr. Pol Spanos of Rice
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`1 Emerson’s and Micro Motion’s objection to the expert declaration of Dr. Rodriguez is without merit. Invensys’
`P.R. 4-2 disclosures stated (at p.3) that “depending upon the proposed constructions proposed by Micro Motion and
`Emerson Electric Co. (‘Emerson’) (collectively, ‘Defendants’) and/or the extrinsic evidence, if any, cited by
`Defendants, Invensys reserve[d] the right to identify, designate or rely upon expert testimony and/or other extrinsic
`evidence.” Moreover, counsel for Emerson and Micro Motion has engaged in an effort to hinder Invensys’ case
`preparations by raising a baseless objection to Dr. Rodriguez under the guise of a Protective Order concern.
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`Specifically, Invensys disclosed Dr. Rodriguez as its expert on January 13, 2014. Counsel for Defendants objected
`on January 23, 2014, to Dr. Rodriguez on the basis that a named inventor on one of the Micro Motion patents, Tamal
`Bose, is Dr. Rodriguez’s department head at the University of Arizona. The Parties initially meet-and-conferred on
`Friday, January 24, 2014. During that meet-and-confer, Defendants suggested that Invensys should consult with Dr.
`Rodriguez as to whether he would be concerned about testifying in the case (and implicitly about his position at the
`University of Arizona). When Invensys's counsel indicated that they had talked to Dr. Rodriguez after the objection
`had been lodged, counsel for Emerson and Micro Motion requested to extend the meet-and-confer process over the
`weekend to Monday, January 27, 2014. Thereafter, counsel for Emerson and Micro Motion refused Invensys’
`request to continue the meet-and-confer, waiting until January 31, 2014 at 11:10am, just prior to the P.R. 4-3 filing,
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 5 of 7 PageID #: 2633
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`University2 through declarations. A summary of Dr. Rodriguez’s and Dr. Spanos’ expected
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`opinions is attached as Exhibit C. Emerson and Micro Motion intend to offer testimony of Dr.
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`Harry Direen. A summary of Dr. Direen’s expected opinions is attached as Exhibit D.
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`5. Prehearing Conference P.R. 4-3(e)
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`The parties do not believe that a prehearing conference is required.
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`Dated: January 31, 2014
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`Respectfully submitted,
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`/s/ Todd Patterson
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`Dawn M. Jenkins
`State Bar No. 24074484
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Dawn.Jenkins@dlapiper.com
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`Nicholas G. Papastavros
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`to finally withdraw their “objection.” Accordingly, Plaintiff reserves its rights to identify a substitute expert at a
`later date.
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` Invensys’s P.R. 4-2 disclosures did not state that Invensys would rely on any testimony or provide a “brief
`description of the substance of that witness’ proposed testimony,” as required by P.R. 4-2(b). Emerson and Micro
`Motion object to the late disclosure here and to any attempt to use the undisclosed testimony of Dr. Rodriguez and
`Dr. Spanos in connection with the claim construction process. Despite meeting and conferring about claim
`construction issues after the exchange of P/R. 4-2 disclosures, as of at least noon on January 31, 2014 – the day
`these P.R. 4-3 disclosures are due – Invensys had not disclosed the substance of Dr. Rodriguez’s testimony or even
`what claim terms or issues Dr. Rodriguez will testify about. And Invensys did not disclose the use of Dr. Spanos
`until after 6 pm on January 31, leaving Micro Motion/Emerson no opportunity to rebut that disclosure. Emerson and
`Micro Motion reserve their rights to object to Dr. Rodriguez’s and Dr. Spanos’ testimony and to identify at a later
`date a witness and/or other intrinsic or extrinsic evidence to rebut the testimony of Dr. Rodriguez and Dr. Spanos.
`Invensys’s complaint about Micro Motion/Emerson’s objection to the disclosure of confidential information to Dr.
`Rodriguez is a red-herring, of course, because Micro Motion/Emerson’s confidential information is irrelevant to
`claim construction.
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 6 of 7 PageID #: 2634
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`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`Todd S. Patterson
`DLA PIPER LLP
`401 Congress Ave., Suite 2500
`Austin, TX 78701-3799
`Telephone: 512.457.7017
`Facsimile: 512.721.2217
`todd.patterson@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
`
`/s/ Kadie M. Jelenchick (with permission)
`Linda E.B. Hansen, WI Bar No. 1000660
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Kadie M. Jelenchick, WI Bar No. 1056506
`Matthew J. Shin, WI Bar No. 1090096
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202
`Telephone: 414.271.2400
`Facsimile: 414.297.4900
`lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`Guy N. Harrison
`State Bar No. 00000077
`Harrison Law Firm
`217 N. Center Street
`Longview, TX 75606
`Telephone: 903.758.7361
`Facsimile: 903.753.9557
`guy@gnhlaw.com
`cj_gnharrison@att.net
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`Case 6:12-cv-00799-JRG Document 105 Filed 01/31/14 Page 7 of 7 PageID #: 2635
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`ATTORNEYS FOR EMERSON ELECTRIC
`CO. and MICRO MOTION INC., USA
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on January 31, 2014, all counsel of record who are deemed
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`to have consented to electronic service are being served with a copy of this document via the
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`Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served
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`by facsimile transmission and/or first class mail.
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`/s/ Todd Patterson
`Todd Patterson
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