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`Case 6:12—cv—00799—JRG Document 107-11 Filed 02/07/14 Page 1 of 68 Page|D #: 3031
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`EXHIBIT J
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 2 of 68 PageID #: 3032
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`Paper No. ________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRO MOTION, INC.
`Petitioner
`v.
`
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 8,000,906
`Issue Date: August 16, 2011
`Title: DIGITAL FLOWMETER
`_______________
`
`Inter Partes Review No. Unassigned
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
`
`4834-2050-6903.4
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`

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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 3 of 68 PageID #: 3033
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`TABLE OF CONTENTS
`
`NOTICE OF LEAD AND BACKUP COUNSEL ..........................................................................1
`NOTICE OF EACH REAL-PARTY-IN-INTEREST.....................................................................1
`NOTICE OF RELATED MATTERS .............................................................................................1
`NOTICE OF SERVICE INFORMATION......................................................................................1
`GROUNDS FOR STANDING........................................................................................................2
`STATEMENT OF PRECISE RELIEF REQUESTED ...................................................................2
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ...............................................3
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................................................3
`
`I.
`
`II.
`
`TECHNICAL INTRODUCTION .......................................................................................3
`A.
`Coriolis Flowmeters ................................................................................................3
`B.
`The Claims of the ’906 Patent .................................................................................5
`C.
`The ’906 Describes the Advantages of a Digital Flowmeter, But Most of Its
`Claims Are Not Limited to a Digital Flowmeter.....................................................6
`The Prior Art Discloses Coriolis Flowmeters that Maintained Oscillation During
`the Transition from Substantially Empty to Substantially Full ...............................8
`
`D.
`
`CONSTRUCTION OF THE CLAIMS .............................................................................11
`A.
`Functional Limitations in the Claims ....................................................................12
`B.
`“During a Transition” and “While”.......................................................................13
`
`III.
`
`C.
`Ground 2.
`Ground 3.
`
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY14
`Ground 1.
`Claims 1-3 and 8-9 Are Anticipated Under 35 U.S.C. § 102(b) by Romano........14
`A.
`Romano Disclosed a Digital Mass Flowmeter Long Before the ’906 Patent........15
`B.
`Romano Anticipates in the Case in Which the Functional Language in the Claims
`Is Not Limiting ......................................................................................................16
`Dependent Claims .................................................................................................19
`Claims 5 and 7 Are Anticipated Under 35 U.S.C. § 102(b) by Lindenbaum........19
`Claims 1-3, 6 and 8-9 Are Unpatentable Under 35 U.S.C. § 103(a) over
`Lindenbaum in Combination with Romano ..........................................................23
`Claims 1-3 and 8-9 Are Anticipated Under 35 U.S.C. § 102(b) by Miller ...........34
`Claims 1-3, 5 and 7-9 Are Unpatentable Under 35 U.S.C. § 103 over Printed
`Publications Describing the Micro Motion FlowScale System.............................40
`Claims 1-2 and 5-8 Are Unpatentable Under 35 U.S.C. § 103(a) over Printed
`Publications Describing the Micro Motion Model D and Its Uses........................45
`Claims 5 and 7 Are Unpatentable Under 35 U.S.C. § 103 over Cage in
`Combination with the Slug Flow Supplement.......................................................56
`
`Ground 4.
`Ground 5.
`
`Ground 6.
`
`Ground 7.
`
`CONCLUSION .............................................................................................................................59
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`4834-2050-6903.4
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 4 of 68 PageID #: 3034
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`Ex. #
`
`EXHIBIT LIST
`
`Exhibit
`
`1001 U.S. Pat. No. 8,000,906 (“’906 Patent”)
`
`1002 Declaration of Dr. Michael D. Sidman
`
`1003 U.S. Pat. No. 5,373,745 (“Cage”)
`
`1004 U.S. Pat. No. 2,865,201 (“Roth”)
`
`1005 U.S. Pat. No. RE 31,450 (“Smith”)
`
`1006 U.S. Pat. No. 4,934,196 (“Romano”)
`
`1007 U.S. Pat. No. 4,679,947 (“Miller”)
`
`1008 U.S. Pat. No. 5,009,109 (“Kalotay”)
`
`1009
`
`1010
`
`“How the Micro Motion Mass Flow and Density Sensor Works,” Micro
`Motion, Inc., 1990 (“How Article”)
`
`“FlowScale™ System,” Instruction Manual, Micro Motion, Inc.,
`December 1992 (“Flowscale Manual”)
`
`1011 U.S. Pat. No. 5,224,387 (“Lindenbaum”)
`
`1012 U.S. Pat. No. 4,738,144 (“Cage”)
`
`1013
`
`1014
`
`Excerpt from Dictionary of Mechanical Engineering, Fourth Edition,
`Nayler, Butterworth-Heinemann, 1996
`
`Invalidity Contentions, ’906 Patent Invalidity Claim Chart – Cage and
`Slugflow References served on September 13, 2013, Invensys Systems,
`Inv. v. Emerson Electric Co. et.al. Case No. 6:12-cv-00799-LED (E.D.
`TX)
`
`1015 U.S. Pat. No. 5,379,649 (“Kalotay ’649”)
`
`4834-2050-6903.4
`
`iii
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`

`
`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 5 of 68 PageID #: 3035
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`1016 U.S. Pat. No. 5,555,190 (“Derby”)
`
`1017 U.S. Pat. No 5,734,112 (“Bose”)
`
`1018 U.S. Pat. No. 4,996,871 (“Romano ’871”)
`
`1019 U.S. Pat. No. 5,029,482 (“Lui”)
`
`1020 U.S. Pat. No. 4,872,351 (“Ruesch”)
`
`1021 U.S. Pat. No. 4,823,614 (“Dahlin”)
`
`1022 U.S. Pat. No. 5,143,257 (“Austin”)
`
`1023 U.S. Pat. No. 5,148,945 (“Geatz”)
`
`1024 U.S. Pat. No. 5,224,372 (“Kolpak”)
`
`1025 U.S. Pat. No. 5,317,928 (“Young”)
`
`1026 U.S. Pat. No. 4,733,569 (“Kelsey”)
`
`1027 U.S. Pat. No. 5,050,439 (“Thompson”)
`
`1028 U.S. Pat. No. 5,068,116 (“Gibney”)
`
`1029
`
`1030
`
`“Introduction to Continuous and Digital Control Systems,” Saucedo &
`Schering, Macmillan, 1968
`
`“Electromechanical Control Systems and Devices,” Canfield, Robert E.
`Kreiger Publishing Company, Original Edition 1965, Reprint 1977
`
`1031 U.S. Pat. No. 4,524,610 (“Fitzgerald”)
`
`1032
`
`1033
`
`“Integrated Electronics: Analog and Digital Circuits and Systems,”
`Jacob Millman and Christos Halkias, McGraw-Hill, 1972
`
`“Operational Amplifiers Design and Applications,” Graeme, Tobey and
`Huelsman, McGraw-Hill, 1971
`
`4834-2050-6903.4
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`iv
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`

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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 6 of 68 PageID #: 3036
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`1034
`
`1035
`
`1036
`
`1037
`
`“Modern Control Engineering,” Chapter 5 Basic Control Actions and
`Industrial Automatic Controls, Ogata, Prentice-Hall, 1970
`
`“Automatic Control Systems,” Third Edition, Benjamin C. Kuo,
`Prentice-Hall, 1975
`
`“Computer Controlled Systems Theory and Design,” Astrom and
`Wittenmark, Prentice-Hall 1984
`
`“Digital Control of Dynamic Systems,” Franklin, Powell & Workman,
`Addison-Wesley Publishing Company, Second Edition, 1990
`
`1038
`
`“Control Sensors and Actuators,” De Silva, Prentice-Hall, 1989
`
`1039
`
`1040
`
`1041
`
`“Digital Signal Processing,” Alan V. Oppenheim, Ronald W. Schafer,
`Prentice-Hall, January 1975
`
`“Programs for Digital Signal Processing,” IEEE Acoustics, Speech, and
`Signal Processing Society, John Wiley and Sons, 1979
`
`“The Fourier Transform and its Applications,” Bracewell, McGraw-Hill,
`Second Edition, 1978
`
`1042 U.S. Pat. No. 4,536,809 (“Sidman”)
`
`1043 Analog Devices Data-Acquisition Databook
`
`1044
`
`“Convert all your synchro channels to digital with a single μP-based
`system,” Arthur Berg, Micro Networks, ELECTRONIC DESIGN 25,
`December 6, 1976
`
`1045 U.S. Pat. No. 4,817,448 (“Hargarten”)
`
`1046
`
`“Digital Signal Processing,” Proakis and Manolakis, Macmillian
`Publishing Company, Second Edition, 1992
`
`1047 U.S. Pat. No. 4,655,089 (“Kappelt”)
`
`1048
`
`“Local Cosine Bases in Two Dimensions,” Jelena Kovacevic, IEEE
`Trans. on Image Proc., Vol. 6, No. 11, November 1997
`
`4834-2050-6903.4
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`v
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`

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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 7 of 68 PageID #: 3037
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`1049
`
`“The Use of Fast Fourier Transform for the Estimation of Power
`Spectra: A Method Based on Time Averaging Over Short, Modified
`Periodograms,” Peter Welch, IEEE Tras. Audio and Electroacoust., Vol.
`AU-15, pp. 70-73, June 1987
`
`1050 U.S. Pat. No. 4,799,385 (“Hulsing”)
`
`1051 U.S. Pat. No. 6,311,136 (“’136 Patent”)
`
`1052 U.S. Pat. No. 5,231,884 (“Zolock”)
`
`1053 U.S. Pat. No. 5,767,665 (“Morita”)
`
`1054 U.S. Pat. No. 5,804,741 (“Freeman”)
`
`1055 U.S. Pat. No. 3,251,226 (“Cushing”)
`
`1056 U.S. Pat No. 5,469,748 (“Kalotay ’748”)
`
`1057 U.S. Pat. No. 5,570,093 (“Aker”)
`
`1058 U.S. Pat. No. 5,479,933 (“Atarius”)
`
`1059 U.S. Pat. No. 5,365,592 (“Horner”)
`
`1060 U.S. Pat. No. 5,646,960 (“Sonohara”)
`
`1061
`
`1062
`
`1063
`
`1064
`
`“A Tutorial on MPEG/Audio Compression,” Davis Pan, Motorola Inc.,
`IEEE Multimedia Journal, Summer 1995
`
`Invalidity Contentions, ’906 Patent Invalidity Claim Chart – Romano
`Reference served on September 13, 2013, Invensys Systems, Inv. v.
`Emerson Electric Co. et.al. Case No. 6:12-cv-00799-LED (E.D. TX)
`
`Excerpt from Merriam-Webster’s Collegiate Dictionary, Tenth Edition,
`1996
`
`Invalidity Contentions, ’906 Patent Invalidity Claim Chart – Miller
`Reference served on September 13, 2013, Invensys Systems, Inv. v.
`Emerson Electric Co. et.al. Case No. 6:12-cv-00799-LED (E.D. TX)
`
`4834-2050-6903.4
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`vi
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`

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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 8 of 68 PageID #: 3038
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`1065
`
`Invalidity Contentions, ’906 Patent Invalidity Claim Chart –
`Lindenbaum Reference served on September 13, 2013, Invensys
`Systems, Inv. v. Emerson Electric Co. et.al. Case No. 6:12-cv-00799-
`LED (E.D. TX)
`1066 Micro Motion Model D Mass Flow Meters, June 1985 (“Model D
`Manual”)
`
`1067
`
`1068
`
`“Model D Meter Supplement, Slug Flow and Loading/Unloading,”
`Instruction Manual, Micro Motion, Inc., September 1987 (“Slug Flow
`Supplement”)
`
`Invalidity Contentions, ’906 Patent Invalidity Claim Chart – Flowscale
`Reference served on September 13, 2013 in Invensys Systems, Inv. v.
`Emerson Electric Co. et.al. Case No. 6:12-cv-00799-LED (E.D. TX)
`
`1069 Declaration of Richard B. Hall
`
`1070 Declaration of Jeffrey N. Costakos
`
`4834-2050-6903.4
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`vii
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`

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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 9 of 68 PageID #: 3039
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel: Andrew S. Baluch (Reg. No. 57,503); Tel. 202-672-5520.
`
`Backup Counsel: Jeffrey N. Costakos (Reg. No. 34,144); Tel. 414-297-5782.
`
`Address: Foley & Lardner LLP, 3000 K St. NW, Suite 600,
`
`Washington, D.C. 20007. FAX: 202.672.5399.
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`The real-parties-in-interest for this Petition are Micro Motion, Inc. and
`
`Emerson Electric Co.
`
`NOTICE OF RELATED MATTERS
`The ’906 patent is asserted in the litigation styled Invensys Systems, Inc. v.
`
`Emerson Electric Co. et al., CA. No. 6:12-cv-00799-LED (E.D. Tex.).
`
`Micro Motion has filed concurrent petitions for inter partes review of U.S.
`
`Patent No. 6,311,136 (Case No. 2014-00170), U.S. Patent No. 6,754,594 (Case No.
`
`2014-00390), U.S. Patent No. 7,124,646 (Case No. 2014-00179), U.S. Patent No.
`
`7,136,761 (Case No. 2014-00178), U.S. Patent No. 7,505,854 (Case No. 2014-
`
`00167), and U.S. Patent No. 7,571,062 (Case No. 2014-00391).
`
`NOTICE OF SERVICE INFORMATION
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioner consents to electronic service by email at: abaluch@foley.com
`
`and jcostakos@foley.com.
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`4834-2050-6903.4
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`1
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 10 of 68 PageID #: 3040
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`GROUNDS FOR STANDING
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the grounds
`
`identified in the petition.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Petitioner respectfully requests that claims 1-3 and 5-9 of U.S. Patent
`
`No. 8,000,906 (“the ’906 patent”) (Ex. 1001) be cancelled based on the following
`
`grounds of unpatentability, explained in detail:
`
`Ground 1. Claims 1-3 and 8-9 Are Anticipated Under 35 U.S.C. § 102(b)
`
`by Romano.
`
`Ground 2. Claims 5 and 7 Are Anticipated Under 35 U.S.C. § 102(b) by
`
`Lindenbaum.
`
`Ground 3. Claims 1-3, 6 and 8-9 Are Unpatentable Under 35 U.S.C. §
`
`103(a) over Lindenbaum in Combination with Romano.
`
`Ground 4. Claims 1-3 and 8-9 Are Anticipated Under 35 U.S.C. § 102(b)
`
`by Miller.
`
`Ground 5. Claims 1-3, 5 and 7-9 Are Unpatentable Under 35 U.S.C. § 103
`
`over Printed Publications Describing the Micro Motion FlowScale System.
`
`Ground 6. Claims 1-2 and 5-8 Are Unpatentable Under 35 U.S.C. § 103(a)
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`4834-2050-6903.4
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 11 of 68 PageID #: 3041
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`over Printed Publications Describing the Micro Motion Model D and Its Uses.
`
`Ground 7. Claims 5 and 7 Are Unpatentable Under 35 U.S.C. § 103 over
`
`Cage in Combination with the Slug Flow Supplement.
`
`THRESHOLD REQUIREMENT FOR INTER PARTESREVIEW
`A petition for inter partes review must demonstrate “a reasonable likelihood
`
`that the Petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a). The Petition meets this threshold.
`
`All elements of claims 1-3 and 5-9 of the ’906 patent are taught in the prior art as
`
`explained below in the proposed grounds of unpatentability, and reasons to
`
`combine are established for each ground that is based on 35 U.S.C. § 103.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`I.
`
`TECHNICAL INTRODUCTION
`A.
`Coriolis Flowmeters
`
`The following technical introduction is supported by the Declaration of Dr.
`
`Michael Sidman (“Sidman Decl.”) attached as Ex. 1002, ¶¶ 22-158.
`
`Many claims of the ’906 patent recite “a flowmeter” but do not indicate
`
`which of the many available flowmeter types the term “flowmeter” represents.
`
`The ’906 patent describes a Coriolis type flowmeter (“Coriolis flowmeter”),
`
`which may be a mass flowrate meter or a densitometer. (Ex. 1001, 6:33-36.) Such
`
`flowmeters make use of the Coriolis effect induced on fluid flowing through a
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`4834-2050-6903.4
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`3
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 12 of 68 PageID #: 3042
`Patent No. 8,000,906
`Petition For Inter Partes Review
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`vibrating tube. For example, by measuring a phase difference in the sinusoidal
`
`oscillation of the tube between two points on the tube, it is possible to determine
`
`the mass of the fluid flowing through the tube.
`
`Coriolis flowmeters were first commercialized by petitioner Micro Motion
`
`in the late 1970s and early 1980s. See U.S. Pat. No. 5,373,745, Ex. 1003, 1:24-25
`
`(“[Coriolis flowmeters were] first made commercially successful by Micro Motion,
`
`Inc. of Boulder, Colorado.”) Coriolis flowmeters include the following basic
`
`components: a vibratable tube (which can have various shapes and sizes) through
`
`which fluid flows; an electromechanical drive mechanism (including one or more
`
`electromagnetic drivers or actuators) for vibrating the tube; one or more sensors
`
`that transduce the vibration of the tube; and electronics for controlling the drive
`
`mechanism and for analyzing the signals from the sensors.
`
`Coriolis (and other) flowmeters were originally implemented with analog
`
`components. E.g., U.S. Pat. No. 2,865,201, Ex. 1004. To do the necessary signal
`
`processing and control, such an analog flowmeter uses analog components to
`
`process signals from the sensors and to control the drive mechanism. As digital
`
`components became more readily available, flowmeters incorporated digital
`
`components. (See, e.g., U.S. Pat. No. Re. 31,450, Ex. 1005, which discloses a
`
`predominantly analog system incorporating some digital components.) Digital
`
`components include digital logic and programmable digital devices (e.g.,
`
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 13 of 68 PageID #: 3043
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`microprocessors). E.g., U.S. Pat. No. 4,934,196 (“Romano”), Ex. 1006, Fig. 3;
`
`U.S. Pat. No. 4,679,947 (“Miller”), Ex. 1007, Fig. 4. A digital flowmeter may
`
`include analog and digital components. For example, a digital flowmeter may
`
`process signals from the sensors using digital components but control the drive
`
`signal using analog components. A digital flowmeter may alternatively control the
`
`drive signal using digital components.
`
`The flowmeter must process the sensor signals to extract information of
`
`interest from other information in the signals. Thus, all flowmeters, whether analog
`
`or digital, perform signal processing on the sensor signals. For example, in a
`
`Coriolis flowmeter, fluid flowing through an oscillating flowtube may cause a
`
`phase shift in the flowtube oscillation due to the Coriolis effect, and the flowmeter
`
`processes the sensor signals to extract the information related to the Coriolis effect
`
`from other information in the signals to determine mass flow rate. If the signal
`
`processing is performed in digital components, then the signal processing is digital
`
`signal processing.
`
`B.
`
`The Claims of the ’906 Patent
`
`The ’906 patent has three independent claims: apparatus claims 1 and 8, and
`
`method claim 5. Claim 1 reads as follows in full:
`
`1. A controller for a flowmeter comprising:
`an input module operable to receive a sensor signal from a
`sensor connected to a vibratable flowtube, the sensor signal related to
`
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`5
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 14 of 68 PageID #: 3044
`Patent No. 8,000,906
`Petition For Inter Partes Review
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`a fluid flow through the flowtube;
`a signal processing system operable to receive the sensor signal,
`determine sensor signal characteristics, and output drive signal
`characteristics for a drive signal applied to the flowtube;
`an output module operable to output the drive signal to the
`flowtube;
`a control system operable to modify the drive signal and
`thereby maintain oscillation of the flowtube during a transition of the
`flowtube from a substantially empty state to a substantially full state;
`and
`
`wherein the control system is further operable to modify the
`drive signal and thereby maintain oscillation of the flowtube while
`separate batches of the fluid flow are processed through the flowtube,
`wherein the flowtube is substantially empty in between the
`separate batches.
`C.
`The ’906 Patent Describes the Advantages of a Digital Flowmeter,
`But Most of Its Claims Are Not Limited to a Digital Flowmeter
`
`The specification of the ’906 patent suggests that it was the first digital
`
`Coriolis flowmeter, and also the first Coriolis flowmeter to use digital signal
`
`processing. However, as will be discussed below, digital Coriolis flowmeters, as
`
`well as Coriolis flowmeters using digital signal processing, have been known since
`
`long prior to the filing of the ’906 patent.
`
`Only two dependent claims of the ’906 patent include the term “digital.”
`
`Thus, the remaining claims read on both analog and digital flowmeters.
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`4834-2050-6903.4
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 15 of 68 PageID #: 3045
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`The independent claims of the ’906 patent claim a flowmeter that modifies
`
`the drive signal to maintain oscillation during a transition of the flowtube from
`
`being substantially empty to being substantially full. This feature is recited in claim
`
`1 as a “control system operable to modify the drive signal and thereby maintain
`
`oscillation of the flowtube during a transition of the flowtube from a substantially
`
`empty state to a substantially full state.” Independent claim 5 is a method claim
`
`with this same requirement, and independent claim 8 includes the same
`
`requirement but recites in the preamble that the flowmeter is a “Coriolis effect”
`
`flowmeter. Dependent claims 3 (which depends from 1) and 9 (which depends
`
`from 8) specify that the control system is a “digital control system,” but the
`
`remaining claims are not limited to flowmeters having a digital control system.
`
`The ’906 patent suggests that the flowmeter is able to maintain oscillation
`
`because it is a digital system, but in fact, the ’906 specification never actually
`
`describes that it can maintain oscillation during the transition from substantially
`
`empty to substantially full and, if so, how this is accomplished. What the ’906
`
`patent does provide is an indication that analog flowmeters were no less able to
`
`operate during an empty-full transition than digital flowmeters. The “performance
`
`results” section provides a comparison of measurements made by a digital
`
`flowmeter versus an analog flowmeter during a batch process, where the conduit
`
`was “empty at the start of the batch . . . The batches were finished with the
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`7
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`Case 6:12-cv-00799-JRG Document 107-11 Filed 02/07/14 Page 16 of 68 PageID #: 3046
`Patent No. 8,000,906
`Petition For Inter Partes Review
`
`flowtube full.” (Ex. 1001, 49:37-53.) Although there was a difference in measured
`
`value of flow between the digital and analog meters, there is no indication in the
`
`specification that either meter was able to maintain oscillation, or that the analog
`
`meter was less able than the digital meter to “maintain oscillation during a
`
`transition of the flowtube from a substantially empty state to a substantially full
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`state” as claimed in the ’906 patent.
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`Finally, the ’906 patent also does not describe an analog technique for
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`maintaining oscillation during the transition from empty to full – even though all
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`but two claims cover analog systems. On the contrary, the ’906 patent is devoted to
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`distinguishing its digital techniques from what it characterizes as the flawed
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`operation of traditional analog systems. As will be shown below, however, analog
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`systems prior to the ’906 patent could successfully maintain oscillation during
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`batching applications where the tube transitioned from empty to full (and back
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`again). Thus, prior art analog flowmeters performed all of the elements of the non-
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`digital claims of the ’906 patent.
`
`D.
`
`The Prior Art Discloses Coriolis Flowmeters that Maintained
`Oscillation During the Transition from Substantially Empty to
`Substantially Full
`
`The independent claims of the ’906 patent claim nothing more than the
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`traditional structural components of a Coriolis flow meter – a device that was first
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`commercialized by petitioner Micro Motion more than a decade before the ’906
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`patent application was filed – together with some functional language: “thereby
`
`maintain oscillation of the flowtube during a transition of the flowtube from a
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`substantially empty state to a substantially full state” and “thereby maintain
`
`oscillation of the flowtube while separate batches of the fluid flow are processed
`
`through the flowtube, wherein the flowtube is substantially empty in between the
`
`separate batches.”
`
`As discussed below, controlling case law dictates that functional language is
`
`not a substantive limitation. Therefore, the ’906 claims are anticipated by
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`numerous pieces of prior art directed to generic Coriolis flowmeters.
`
`Even if the functional language were a substantive limitation, the prior art
`
`shows that prior art Coriolis flow meters “maintain[ed] oscillation of the flowtube
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`during a transition of the flowtube from a substantially empty state to a
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`substantially full state.” Numerous prior art examples will be described in more
`
`detail below, and in the claim charts from the Invensys litigation submitted
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`herewith. As just one example, the Lindenbaum patent (Ex. 1011) (U.S. Patent No.
`
`5,224,387), which issued in 1993, specifically describes a prior art flowmeter that
`
`meets all of the structural limitations and performs the “maintain oscillation of the
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`flowtube during a transition” function recited in the independent claims of the ’906
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`patent. In fact, the Lindenbaum patent describes batching, with the flow tube
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`empty between batches:
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`If the measuring arrangement is installed in a line through which
`various fluids are pumped and if the line is in each case purged with a
`gas between these fluids, heterogeneous zones occur at the beginning
`and at the end of each fluid metering in which zones this fluid is
`mixed together with a part of the purge gas.
`
`(Lindenbaum, Ex. 1011, 1:13-19 (emphasis added).) The measurement is provided
`
`as a sequence of pulses, as shown in Figures 2 and 3 of Lindenbaum for the
`
`transition from empty to full flowtube and the transition from full to empty
`
`flowtube, respectively. Figures 2 and 3 are described by Lindenbaum:
`
`During the beginning of metering, initially only the purge gas is
`present in the metering tube of the arrangement for mass flow
`measurement. Subsequently, when the raw material R flows through
`the metering tube, a heterogeneous two-phase mixture of purge gas
`and raw material is present for a particular time in the metering tube,
`and during this time, the pulses emitted by the measuring instrument
`do not correspond to the actual mass flow. This can be clearly seen in
`Fig. 2 . . . Fig. 3 illustrates that a similar phenomenon can be observed
`at the end of metering.
`
`(Lindenbaum, Ex. 1011, 2:1-14, 2:23-24.) The pulses emitted by the measuring
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`instrument are based on the oscillation of the flowtube.
`
`[A] measuring device operating in accordance with the Coriolis
`principle, including an oscillating conduit in which the fluid to be
`measured flows through the conduit, and a sensor for sensing the
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`4834-2050-6903.4
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`movement of the conduit and generating output signals indicative of
`the movement, wherein the measuring device generates a
`measurement signal based on the sensor signal indicative of the flow
`rate of fluid through the conduit, said measurement signal being
`pulses.
`
`(Lindenbaum, Ex. 1011, 4:40-49 (emphasis added).) Thus, the pulses in Figures 2
`
`and 3 of Lindenbaum indicate maintaining oscillation throughout batching.
`
`In short, and as will be explained in more detail below, the Lindenbaum
`
`patent, among others, demonstrates that it was well known in the art to maintain
`
`oscillation of the flowtube during the transition from substantially empty to
`
`substantially full. While the ’906 specification suggests that its inventors
`
`discovered an improved way of maintaining oscillation, the specification never
`
`actually says what that improved way is. More important for this proceeding, the
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`claims are not limited to the inventors’ supposed improvements. As a result, the
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`claims read on the numerous prior art references described below that maintain
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`oscillation during a transition from substantially empty to substantially full.
`
`II.
`
`CONSTRUCTION OF THE CLAIMS
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b). “[B]ecause the Board
`
`applies the broadest reasonable construction standard, the Board’s construction
`
`may not be the same as that adopted by a district court, which may apply a
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`4834-2050-6903.4
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`different standard.” Samsung Elecs. Co. v. Virginia Innov. Sci., Inc., IPR2013-
`
`000569, Paper 9 (PTAB Oct. 30, 2013).
`
`A.
`
`Functional Limitations in the Claims
`
`Under the broadest reasonable interpretation, no patentable weight is given
`
`to language such as “adapted to” and “operable to,” which state an optional, rather
`
`than a required, condition of the claims. See MPEP § 2111.04. Claim 1 recites “a
`
`controller for a flowmeter” having certain capabilities. Claims 1-3 do not
`
`positively recite a flowtube. Rather, these claims recite various systems or modules
`
`that are “operable” to “receive a sensor signal” and perform certain analysis on the
`
`signal; to “output drive signal characteristics”; to “output the drive signal”; and to
`
`“modify the drive signal.” Under the broadest reasonable interpretation, these
`
`claim terms merely require that the modules be capable of performing the recited
`
`function – not that they actually perform that function under all (or indeed any)
`
`circumstances.
`
`Likewise, the language following the words “thereby” in claims 1 and 8
`
`merely recites the intended result of the control system – i.e., to maintain
`
`oscillation. As such, these thereby clauses are not limiting. See Minton v. Nat’l
`
`Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003).
`
`Finally, as the Federal Circuit noted in In re Schreiber, 128 F.3d 1473 (Fed.
`
`Cir. 1997), where, as here, an element is defined functionally and there is reason to
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`believe the element is performed by the prior art, the applicant has the burden “to
`
`prove that the subject matter shown to be in the prior art does not possess the
`
`characteristic relied on.” Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 213
`
`(CCPA 1971)); MPEP § 2173.05(g). This burden-shifting applies in inter partes
`
`proceedings before the PTO as well. See Foundation for Taxpayer & Consumer
`
`Rights, v. Wisconsin Alumni Res. Found., Reexam. Control 95/000,154, 2010 Pat.
`
`App. LEXIS 15017 (B.P.A.I. 2010); USV Limited, B.S.D. v. State of Oregon,
`
`Reexam. Control 95/000,073, 2009 Pat. App. LEXIS 6847 (B.P.A.I. 2009). Thus,
`
`at a minimum, the burden is on the patent owner to show that the prior art that
`
`meets all of the structural limitations of the ’906 claims does not perform the
`
`functions recited in the claims.
`
`B.
`
`“During a Transition” and “While”
`
`The functional language of the ’906 claims recite “thereby maintain
`
`oscillation of the flowtube during a transition…” and “while separate batches of
`
`the fluid flow are processed through the flowtube ….” The phrases “during a
`
`transition” and “while separate batches … are processed” are not defined in the
`
`patent. There are two commonly accepted definitions of “during”: “1. Throughout
`
`the duration of (swims every day during the summer) 2 at a point in the course of
`
`(was offered a job during a visit to the capital).” (Merriam Webster’s Collegiate
`
`Dictionary 10th edition 1996, Ex. 1063, p. 360). There are similar definitions of
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`“while”: “1a: during the time that <take a nap while I’m out> b: as long as <while
`
`there’s life there’s hope>.” (Id., p. 1347.)
`
`The broadest reasonable construction is applied in inter partes reviews.
`
`Therefore, the proper construction of “during a transition” for purposes of this
`
`proceeding is “at one or more points in the course of a transition.” Likewise,
`
`“while separate batches … are processed” should be construed as “at one or more
`
`points during the time that the separate batches of the fluid flow are processed.”
`
`However, as discussed below, the claim