Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 1 of 65 PageID #: 2800
`Case 6:l2—cv—00799—JRG Document 107-3 Filed 02/07/14 Page 1 of 65 Page|D #: 2800
`
`
`
`
`EXHIBIT B
`
`EXHIBIT B
`
`
`
`
`
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 2 of 65 PageID #: 2801
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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. 7,136,761
`Issue Date: November 14, 2006
`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.
`
`
`
`
`
`
`4845-5230-1846.4
`
`
`
`
`
`
`
`
`
`
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 3 of 65 PageID #: 2802
`Patent No. 7,136,761
`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 .......................................................................................................................1 
`Statement of Precise Relief Requested ............................................................................................2 
`Threshold Requirement For Inter Partes Review ............................................................................3 
`Statement of Reasons for Relief Requested .....................................................................................3 
`
`I. 
`A. 
`B. 
`C. 
`
`D. 
`
`II. 
`A. 
`B. 
`
`TECHNICAL INTRODUCTION ........................................................................................3 
`Coriolis Flowmeters .............................................................................................................3 
`The Claims of the ’761 Patent .............................................................................................5 
`The ’761 Patent 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 Empty to Full .............................................................................................9 
`
`CONSTRUCTION OF THE CLAIMS ..............................................................................12 
`Functional Limitations in the Claims .................................................................................12 
`“During a Transition” ........................................................................................................14 
`
`B. 
`
`C. 
`
`III. 
`
`Ground 2. 
`Ground 3. 
`
`Ground 4. 
`
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY ......................................................................................................14 
`Ground 1. 
`Claims 1-4 and 9-12 Are Anticipated Under 35 U.S.C. § 102(b) by Romano ......15 
`Romano Disclosed a Digital Mass Flowmeter Long Before the ’761 Patent
`A. 
`....................................................................................................................15 
`Romano Anticipates in the Case in Which the Functional Language in the
`Claims Is Not Limiting ..............................................................................16 
`Romano Discloses Noise Reduction, Which Is the Only Possible Support
`for the ’761 Patent’s “Thereby” Relationship ............................................17 
`Mapping of Romano to Claim Elements ...................................................20 
`D. 
`Dependent Claims ......................................................................................22 
`E. 
`Claims 1-4 and 9-12 Are Anticipated Under 35 U.S.C. § 102(b) by Miller ..........25 
`Claims 1-5 and 7-12 Are Unpatentable Under 35 U.S.C. § 103(a) over Printed
`Publications Describing the Micro Motion FlowScale System .............................31 
`Claims 1-3 and 5-11 Are Unpatentable Under 35 U.S.C. § 103(a) over Printed
`Publications Describing the Micro Motion Model D ............................................36 
`Claims 5-8 Are Unpatentable Under 35 U.S.C. § 103 over Printed Publications
`Describing the Micro Motion Meter Model D in Combination with Cage ...........44 
`Claims 5, 7 and 8 Are Anticipated Under 35 U.S.C. § 102(b) by Lindenbaum ....48 
`Claims 1-4 and 9-12 Are Unpatentable Under 35 U.S.C. § 103(a) over
`Lindenbaum in Combination with Romano ...........................................................51 
`Conclusion .....................................................................................................................................58
`
`Ground 5. 
`
`Ground 6. 
`Ground 7. 
`
`4845-5230-1846.4
`
`ii
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 4 of 65 PageID #: 2803
`Patent No. 7,136,761
`Petition For Inter Partes Review
`
`EXHIBIT LIST
`
`Ex. #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1014
`
`Exhibit
`U.S. Pat. No. 7,136,761 (“’761 Patent”)
`Declaration of Dr. Michael D. Sidman
`U.S. Pat. No. 5,373,745 (“Cage”)
`U.S. Pat. No. 2,865,201 (“Roth”)
`U.S. Pat. No. RE 31,450 (“Smith”)
`U.S. Pat. No. 4,934,196 (“Romano”)
`U.S. Pat. No. 4,679,947 (“Miller”)
`U.S. Pat. No. 5,009,109 (“Kalotay”)
`“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”)
`U.S. Pat. No. 5,224,387 (“Lindenbaum”)
`1011
`U.S. Pat. No. 4,738,144 (“Cage”)
`1012
`1013 Micro Motion Model D Mass Flow Meters, June 1985 (“Manual D
`Manual”)
`“Model D Meter Supplement, Slug Flow and Loading/Unloading,”
`Instruction Manual, Micro Motion, Inc., September 1987
`(“Supplement”)
`’761 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)
`Declaration of Richard B. Hall
`Excerpt from Merriam-Webster’s Collegiate Dictionary, Tenth
`Edition, 1996
`’761 Patent Invalidity Claim Chart – Romano 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)
`’761 Patent Invalidity Claim Chart – Miller Reference served on
`
`1015
`
`1016
`1017
`
`1018
`
`1019
`
`4845-5230-1846.4
`
`iii
`
`

`
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`
`1031
`1032
`
`1033
`
`1034
`
`1035
`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 5 of 65 PageID #: 2804
`Patent No. 7,136,761
`Petition For Inter Partes Review
`September 13, 2013 in Invensys Systems, Inv. V. Emerson Electric
`Co. et.al. Case No. 6:12-cv-00799-LED (E.D. TX)
`U.S. Pat. No. 4,872,352 (“Alden”)
`U.S. Pat. No. 4,823,614 (“Dahlin”)
`U.S. Pat. No. 5,143,257 (“Austin”)
`U.S. Pat. No. 5,146,945 (“La Rosa”)
`U.S. Pat. No. 5,224,372 (“Kolpak”)
`U.S. Pat. No. 5,317,928 (“Young”)
`U.S. Pat. No. 4,733,569 (“Kelsey”)
`U.S. Pat. No. 5,050,439 (“Thompson”)
`U.S. Pat. No. 5,068,116 (“Gibney”)
`“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
`U.S. Pat. No. 4,524,610 (“Fitzgerald”)
`“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
`“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
`“Control Sensors and Actuators,” De Silva, Prentice-Hall, 1989
`
`1036
`
`1037
`
`1038
`
`4845-5230-1846.4
`
`iv
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 6 of 65 PageID #: 2805
`Patent No. 7,136,761
`Petition For Inter Partes Review
`
`“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
`U.S. Pat. No. 4,536,809
`Analog Devices Data-Acquisition Databook
`“Convert all your synchro channels to digital with a single μP-based
`system,” Arthur Berg, Micro Networks, ELECTRONIC DESIGN
`25, December 6, 1976
`U.S. Pat. No. 4,817,448 (“Hargarten”)
`U.S. Pat. No. 4,872,351 (“Ruesch”)
`U.S. Pat. No. 4,996,871 (“Romano ’871”)
`U.S. Pat. No. 5,379,649 (“Kalotay ’649”)
`U.S. Pat. No. 5,555,190 (“Derby”)
`U.S. Pat. No. 5,734,112 (“Bose”)
`U.S. Pat. No. 6,311,136 (“’136 Patent”)
`U.S. Pat. No. 7,124,646 (“’646 Patent”)
`U.S. Pat. No. 4,655,089 (“Kappelt”)
`Declaration of Jeffrey N. Costakos
`
`1039
`
`1040
`
`1041
`
`1042
`1043
`1044
`
`1045
`1046
`1047
`1048
`1049
`1050
`1051
`1052
`1053
`1054
`
`
`
`4845-5230-1846.4
`
`v
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 7 of 65 PageID #: 2806
`Patent No. 7,136,761
`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 ’761 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, U.S. Patent No. 7,124,646, and U.S. Patent No. 7,505,854.
`
`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.
`
`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
`
`4845-5230-1846.4
`
`1
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 8 of 65 PageID #: 2807
`Patent No. 7,136,761
`Petition For Inter Partes Review
`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 1-12 of U.S. Patent No.
`
`7,136,761 (“the ’761 patent”)(Ex. 1001) be cancelled based on the following
`
`grounds of unpatentability, explained in detail below:
`
`Ground 1. Claims 1-4 and 9-12 Are Anticipated Under 35 U.S.C. § 102(b)
`
`by Romano.
`
`Ground 2. Claims 1-4 and 9-12 Are Anticipated Under 35 U.S.C. § 102(b)
`
`by Miller.
`
`Ground 3. Claims 1-5 and 7-12 Are Unpatentable Under 35 U.S.C. § 103(a)
`
`over Printed Publications Describing the Micro Motion FlowScale System.
`
`Ground 4. Claims 1-3 and 5-11 Are Unpatentable Under 35 U.S.C. § 103(a)
`
`over Printed Publications Describing the Micro Motion Model D.
`
`Ground 5. Claims 5-8 Are Unpatentable Under 35 U.S.C. § 103 over
`
`Printed Publications Describing the Micro Motion Meter Model D in Combination
`
`with Cage.
`
`Ground 6. Claims 5, 7 and 8 Are Anticipated Under 35 U.S.C. § 102(b) by
`
`Lindenbaum.
`
`4845-5230-1846.4
`
`2
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 9 of 65 PageID #: 2808
`Patent No. 7,136,761
`Petition For Inter Partes Review
`Ground 7. Claims 1-4 and 9-12 Are Unpatentable Under 35 U.S.C. § 103(a)
`
`over Lindenbaum in Combination with Romano.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`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 1-12 of the ’761 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 under 35 U.S.C. § 103(a).
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`I.
`
`TECHNICAL INTRODUCTION
`A. Coriolis Flowmeters
`
`The following technical introduction is supported by the Declaration of Dr.
`
`Michael D. Sidman (“Sidman Decl”) attached as Ex. 1002, ¶¶ 22-104.
`
`Many claims of the ’761 patent recite “a flowmeter” but do not indicate
`
`which of the many available flowmeter types the term “flowmeter” represents.
`
`The ’761 patent describes a Coriolis type flowmeter (“Coriolis flowmeter”),
`
`which may be a mass flowrate meter or a densitometer. (Ex. 1001, 6:34-36.) Such
`
`flowmeters make use of the Coriolis effect induced on fluid flowing through a
`
`vibrating tube. For example, by measuring a phase difference in the sinusoidal
`
`4845-5230-1846.4
`
`3
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 10 of 65 PageID #: 2809
`Patent No. 7,136,761
`Petition For Inter Partes Review
`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.,
`
`microprocessors). E.g., U.S. Pat. No. 4,934,196 (“Romano”), Ex. 1006, Fig. 3;
`
`4845-5230-1846.4
`
`4
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 11 of 65 PageID #: 2810
`Patent No. 7,136,761
`Petition For Inter Partes Review
`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 or density. If the
`
`signal processing is performed in digital components, then the signal processing is
`
`digital signal processing.
`
`B.
`
`The Claims of the ’761 Patent
`
`As noted above, the ’761 patent has three independent claims: apparatus
`
`claims 1 and 9, 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
`a fluid flow through the flowtube;
`
`4845-5230-1846.4
`
`5
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 12 of 65 PageID #: 2811
`Patent No. 7,136,761
`Petition For Inter Partes Review
`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; and
`a control system operable to modify the drive signal and
`thereby maintain oscillation of the flowtube during a transition of the
`flowtube from a first state in which the flowtube is substantially
`empty of liquid to a second state in which the flowtube is substantially
`full of liquid.
`
`C. The ’761 Patent Describes the Advantages of a Digital Flowmeter,
`but Most of Its Claims Are Not Limited to a Digital Flowmeter
`
`The specification of the ’761 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 ’761 patent.
`
`Only two dependent claims of the ’761 patent include the term “digital.”
`
`Thus, the remaining claims read on both analog and digital flowmeters.
`
`The independent claims of the ’761 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
`
`4845-5230-1846.4
`
`6
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 13 of 65 PageID #: 2812
`Patent No. 7,136,761
`Petition For Inter Partes Review
`oscillation of the flowtube during a transition of the flowtube from a first state in
`
`which the flowtube is substantially empty of liquid to a second state in which the
`
`flowtube is substantially full of liquid.” Independent claim 5 is a method claim
`
`with this same requirement, and independent claim 9 includes the same
`
`requirement but recites in the preamble that the flowmeter is a “Coriolis effect”
`
`flowmeter. Dependent claims 4 (which depends from 1) and 12 (which depends
`
`from 9) 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 ’761 patent suggests that it is able to maintain oscillation because it is a
`
`digital system. The ’761 patent never actually says it can maintain oscillation
`
`during the transition from substantially empty to substantially full. Nor does it say
`
`how it maintains oscillation during this transition. Instead, the ’761 patent merely
`
`sets forth a number of schemes for processing input signals and controlling the
`
`drive mechanism.
`
`For example, the ’761 patent describes how the use of a digital control
`
`system allows it to generate a large gain range to overcome problems with aeration
`
`in the tube. (Ex. 1001, 48:18-24). The ’761 patent also suggests that the use of a
`
`digital control system allowed it to generate a negative gain, which could be of use
`
`in controlling oscillation amplitude. (Ex. 1001, 2:19-26). There is no discussion,
`
`4845-5230-1846.4
`
`7
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 14 of 65 PageID #: 2813
`Patent No. 7,136,761
`Petition For Inter Partes Review
`however, of the use of negative gain during the transition from substantially empty
`
`to substantially full.
`
`The ’761 patent also discusses the use of two different drive modes. For
`
`example, at 21:4-24, the patent describes using a synthesized periodic drive signal
`
`to initiate oscillation, and then using a feedback loop employing sensor signal
`
`feedback (a positive feedback loop) to maintain oscillation. (Ex. 1001, 4:44-52.)
`
`The patent also describes a scheme that is exactly the opposite – i.e., using
`
`feedback employing sensor signals to initiate the oscillation, and then employing a
`
`synthesized periodic drive signal to maintain oscillation. (Ex. 1001, 4:53-56.) But
`
`the patent does not say that either of these schemes would be used during a
`
`transition from substantially empty to substantially full.
`
`Finally, the ’761 patent does not describe an analog technique for
`
`maintaining oscillation during the transition from empty to full – even though all
`
`but two claims cover analog systems. On the contrary, the ’761 patent is devoted to
`
`distinguishing its digital techniques from what it characterizes as the inadequate
`
`operation of traditional analog systems. As will be shown below, however, analog
`
`systems prior to the ’761 patent could successfully maintain oscillation during
`
`batching applications where the tube transitioned from empty to full (and back
`
`again). Thus, prior art analog flowmeters performed all of the elements of the non-
`
`digital claims of the ’761 patent. In fact, all of the features of the independent
`
`4845-5230-1846.4
`
`8
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 15 of 65 PageID #: 2814
`Patent No. 7,136,761
`Petition For Inter Partes Review
`claims are described in the ’761 patent itself in relation to Figure 4 – which
`
`describes the prior art analog mass flowmeters criticized in the ’761 patent. (Ex.
`
`1001, 10:33-11:43.) M.P.E.P. § 2129 (admitted prior art “can be relied upon for
`
`both anticipation and obviousness determinations”).
`
`D. The Prior Art Discloses Coriolis Flowmeters that Maintained
`Oscillation During the Transition from Empty to Full
`
`As just demonstrated, the independent claims of the ’761 patent claim
`
`nothing more than the traditional structural components of a Coriolis flow meter –
`
`a device that was first commercialized by petitioner Micro Motion more than a
`
`decade before the ’761 patent application was filed – together with some functional
`
`language: “and thereby maintain oscillation of the flowtube during a transition of
`
`the flowtube from a first state in which the flowtube is substantially empty of
`
`liquid to a second state in which the flowtube is substantially full of liquid.”
`
`However, as established above, controlling case law dictates that this
`
`functional language is not a substantive limitation. Therefore, the ’761 claims are
`
`anticipated by numerous pieces of prior art directed to generic Coriolis flowmeters.
`
`But even if this functional language were a substantive limitation, the prior
`
`art shows that prior art Coriolis flow meters “maintain[ed] oscillation of the
`
`flowtube during a transition of the flowtube from a first state in which the flowtube
`
`is substantially empty of liquid to a second state in which the flowtube is
`
`substantially full of liquid.” Numerous prior art examples will be described in more
`
`4845-5230-1846.4
`
`9
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 16 of 65 PageID #: 2815
`Patent No. 7,136,761
`Petition For Inter Partes Review
`detail below and in the claim charts from the Invensys litigation submitted
`
`herewith. As just one example, the Lindenbaum patent (Ex. 1011) – U.S. Patent
`
`5,224,387, which issued in 1993 – specifically describes a prior art flowmeter that
`
`meets all of the structural limitations – and performs the “thereby” function –
`
`recited in the independent claims of the ’761 patent. In fact, the text of the
`
`Lindenbaum patent describes that the flowtube oscillated continuously throughout
`
`both the transition from substantially empty to substantially full and from
`
`substantially full to substantially empty:
`
`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: at the beginning of metering, that is to say the pumping process
`for the raw material R, the measuring signals have a very high
`frequency, and thus indicate a flow of a great amount of material,
`whereas the signal later settles at a value which characterizes a lower
`mass flow.….
`Fig. 3 illustrates that a similar phenomenon can be observed at the end
`of metering.
`(Lindenbaum, Ex. 1011, 2:1-14; 2:23-24.) These Lindenbaum figures show
`
`continuous oscillation of the flowtube of its “apparatus for measuring fluid flow…
`
`4845-5230-1846.4
`
`10
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 17 of 65 PageID #: 2816
`Patent No. 7,136,761
`Petition For Inter Partes Review
`in accordance with the Coriolis principle” all the way from “a first state in which
`
`the flowtube is substantially empty of liquid to a second state in which the
`
`flowtube is substantially full of liquid”:
`
`
`
`Likewise, the Kalotay patent (Ex. 1008, U.S. Pat. No. 5,009,109) disclosed
`
`
`
`supplying “bursts of energy” to compensate for the attenuation in the flowtubes
`
`“caused by large rapid increases in the fluid density.” (Ex. 1008, 5:8-12; 13:40-58;
`
`16:45-49.) Of course, transitioning from an empty tube to a full tube involves a
`
`“large rapid increase in the fluid density.”
`
`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 ’761 specification suggests that its inventors
`
`discovered an improved way of maintaining oscillation, the specification never
`
`4845-5230-1846.4
`
`11
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 18 of 65 PageID #: 2817
`Patent No. 7,136,761
`Petition For Inter Partes Review
`actually says what that improved way is. More important for this proceeding, the
`
`claims are not limited to the inventors’ supposed improvements. As a result, the
`
`claims read on the numerous prior art references described below that maintain
`
`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
`
`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 1-4 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
`
`4845-5230-1846.4
`
`12
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 19 of 65 PageID #: 2818
`Patent No. 7,136,761
`Petition For Inter Partes Review
`claim terms merely require that the modules be capable of performing the recited
`
`function – not that they actually perform that function or that the perform the
`
`function under all circumstances.
`
`Likewise, the language following the word “thereby” in claims 1 and 9
`
`merely recites the intended result of the control system – i.e., to maintain
`
`oscillation. As such, this thereby clause is 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
`
`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 prior art that meets
`
`all of the structural limitations of the ’761 claims does not perform the functions
`
`recited in the claims.
`
`4845-5230-1846.4
`
`13
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 20 of 65 PageID #: 2819
`Patent No. 7,136,761
`Petition For Inter Partes Review
`B.
`“During a Transition”
`
`The functional language of the ‘761 claims recite “thereby maintain
`
`oscillation of the flowtube during a transition….” The phrase “during a transition”
`
`is not defined in the patent. There are two commonly accepted definitions of the
`
`word “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).” (Ex. 1017 (Merriam Webster’s Collegiate Dictionary 10th edition 1996,
`
`p. 360).)
`
`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.” However, as
`
`discussed below, the claims are invalid under either construction.
`
`III. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`
`Claims 1-12 are unpatentable as shown in the following Grounds.
`
`As will be described in detail below, the independent claims of the ’761
`
`patent recite features that were well-known features of all Coriolis flowmeters,
`
`such as flowtubes, sensors, drivers, and controllers to receive inputs signals from
`
`the sensors and control the drivers. Independent apparatus claims 1 and 9 of the
`
`’761 patent further recite a functional “thereby” relationship which is not limiting,
`
`4845-5230-1846.4
`
`14
`
`

`
`Case 6:12-cv-00799-JRG Document 107-3 Filed 02/07/14 Page 21 of 65 PageID #: 2820
`Patent No. 7,136,761
`Petition For Inter Partes Review
`as discussed above, and which, in any event, is disclosed in the prior art, as
`
`discussed below. (Sidman Decl., Ex. 1002, ¶ 112.)
`
`Ground 1. Claims 1-4 and 9-12 Are Anticipated Under 35 U.S.C. § 102(b) by
`Romano
`
`Claims 1-4 and 9-12 are anticipated by and obvious over U.S. Patent No.