Case 6:12-cv-00799-JRG Document 116-1 Filed 03/04/14 Page 1 of 5 PageID #: 3348
`Case 6:12—cv—00799—JRG Document 116-1 Filed 03/04/14 Page 1 of 5 Page|D #: 3348
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 6:12-cv-00799-JRG Document 116-1 Filed 03/04/14 Page 2 of 5 PageID #: 3349
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`DLA Piper LLP (US)
`1000 Louisiana Street, Suite 2800
`Houston, Texas 77002-5005
`www.dlapiper.com
`
`Claudia Wilson Frost
`claudia.frost@dlapiper.com
`T 713.425.8450
`F 713.300.6050
`
`March 3, 2014
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Re:
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`C.A. No. 6:12-cv-00799-LED; Invensys Systems, Inc. v. Emerson Electric Co., et al.
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`Dear Judge Davis:
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`A brief summary of the parties’ meet-and-confer efforts may help to put Emerson’s
`request to strike Invensys’s sur-reply into context. On February 10, counsel for Emerson sent
`counsel for Invensys an email complaining that Invensys’s sur-reply did not accurately reflect
`Emerson’s position. Emerson took umbrage with Invensys’s statement that Emerson had
`admitted that its EPM “business platform” is not a legal entity and is only an organizational unit
`within Emerson (i.e., an unincorporated division). The parties had a meet-and-confer in which
`Emerson requested that Invensys amend its brief to clarify the distinction between facts and
`argument.
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`Invensys maintained that its statements about EPM were fair and appropriate argument
`fully supported by the law and Emerson’s own briefs and declarations. In order to avoid wasting
`the Court’s time and Invensys’s resources with the motion Emerson was threatening to file,
`Invensys offered to amend its sur-reply to clarify the language about which Emerson was
`complaining. Emerson rejected Invensys’s offer to do what Emerson had asked it to do, arguing
`for the first time that Invensys’s sur-reply exceeded the scope of Emerson’s reply brief and that
`Parts I and II of Invensys’s sur-reply also had to be removed. Emerson made this claim even
`though Parts I and II of Invensys’s sur-reply merely responded to new evidence and arguments
`Emerson had made in its reply brief. Based on Emerson’s shifting (and increasingly dubious)
`complaints about Invensys’s sur-reply, counsel for Invensys concluded that Emerson was not
`negotiating in good faith and that further meet-and-confer efforts on this issue would be
`unproductive. Emerson then filed the present letter brief, much of which focuses on rearguing
`substantive issues, rather than the supposed defects in Invensys’s sur-reply.
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`I.
`
`Invensys’s Statements About EPM’s Legal Status Are Appropriate Argument Fully
`Supported by Emerson’s Own Briefs and Declarations.
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`Emerson takes issue with the following statement in Invensys’s sur-reply:
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`Emerson has now unequivocally admitted that the EPM “business platform” “is
`not a legal business entity of any type,” but merely a division of Emerson. Def.’s
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`Case 6:12-cv-00799-JRG Document 116-1 Filed 03/04/14 Page 3 of 5 PageID #: 3350
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`The Honorable Leonard Davis
`March 3, 2014
`Page Two
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`MSJ Reply at 3; see also Def.’s MSJ Ex. 8 ¶ 3 (stating that “Emerson’s business
`is organized into five business platforms,” including EPM).
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`Invensys’s MSJ Sur-reply at 1. The quotes from Emerson’s brief and its declarations are
`completely accurate. In its reply, Emerson admits that “EPM is not a legal business entity of any
`type.” Emerson’s MSJ Reply at 3. Likewise, in his declaration Randall Ledford, an Emerson
`VP, states: “Emerson’s business is organized into five business platforms: (a) Emerson Process
`Management . . . .” Emerson’s MSJ Ex. 8 ¶ 3. By citing and accurately quoting both sources,
`Invensys’s brief makes it clear that Emerson admitted that EPM is not a legal entity, and
`therefore, in light of Ledford’s statement that EPM is an organizational unit within Emerson,
`EPM is necessarily a division of Emerson (since a division is, by definition, an unincorporated
`administrative or organizational structure within a larger business entity).
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`Emerson also disagrees with the following statement in Invensys’s sur-reply:
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`Emerson admits that EPM is a “business platform” with no legal existence that
`serves as an organizational unit within Emerson. See id. at 3; see also Def.’s MSJ
`Ex. 8 ¶ 3.
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`Again, however, this statement is fully supported by the record. Emerson has admitted that the
`EPM “business platform” is an organizational unit within Emerson. Emerson’s MSJ Ex. 8 ¶ 3
`(“Emerson’s business is organized into five business platforms:
`(a) Emerson Process
`Management . . . .” (emphasis added)). Emerson has also admitted that EPM has no legal
`existence. Emerson’s MSJ Reply at 3 (“EPM is not a legal business entity of any type.”). Thus,
`Invensys’s statement on page 2 of its sur-reply is completely accurate.1
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`Likewise, Emerson’s vehement insistence that EPM is not a division is unfounded. An
`unincorporated organization or operational group of subsidiaries in a parent company is a
`division. This is especially true when the unincorporated organization has its own name and
`logo and goods and services are sold under that name and logo.2
`In fact, Emerson has
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`1 Emerson also appears particularly indignant about Invensys’s description of EPM as a part of
`Emerson (i.e., EPM is a division within Emerson). But Ledford specifically says that
`“Emerson’s business is organized into five business platforms,” including EPM. Emerson’s
`MSJ Ex. 8 ¶ 3 (emphasis added). Thus, even Emerson’s officers describe EPM as a part of
`Emerson.
`2 For example, Emerson offers on-site calibration of the accused Coriolis flowmeters under
`See Invensys’s MSJ Ex. P (pamphlet on calibration
`EPM’s name, not Micro Motion’s.
`services displaying the EPM logo, but not the Micro Motion logo). Similarly, Emerson owns
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`Case 6:12-cv-00799-JRG Document 116-1 Filed 03/04/14 Page 4 of 5 PageID #: 3351
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`The Honorable Leonard Davis
`March 3, 2014
`Page Three
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`“instructed its U.S. subsidiaries to include on their marketing materials the name of the Emerson
`business platform under which they operate.” See Emerson’s MSJ Ex. 8 ¶ 6 (emphasis added).
`This is organizational
`language. Thus, EPM is merely a division of Emerson, and an
`unincorporated division “is the corporation itself.” W. Beef, Inc. v. Compton Inv. Co., 611 F.2d
`587, 591 (5th Cir. 1980).
`
`Finally, Emerson’s apparent attempt to draw a distinction between a “business platform”
`or “brand” and a “division” is purely semantic. That is, an infringer cannot insulate itself from
`liability by committing infringing acts under the name of a nonexistent entity, regardless of how
`it chooses to denominate that entity. Of course, to the extent a distinction in nomenclature might
`have some legal significance, it presents a fact issue since Ledford describes EPM as an
`organizational unit within Emerson. See Def.’s MSJ Ex. 8 ¶ 3. Either way, Emerson’s request to
`file a motion to strike (and the underlying summary judgment motion) should be denied.
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`II.
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`Invensys Has the Right to Respond to the New Arguments and Evidence Emerson
`Presented in Its Reply.
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`In its reply, Emerson argues that it is not liable for the actions of the EPM sales
`representatives, technicians, and instructors who engage in infringing acts, apparently because
`they are employed by entities other than EPM (which is not a legal entity). See Emerson’s Reply
`at 3-4. Emerson also submitted a new declaration in support of this argument. See id. (citing the
`second declaration of James Davis, attached as Exhibit 1 to Emerson’s reply). Emerson now
`argues that Invensys should not be allowed to respond to the new arguments and evidence raised
`in Emerson’s reply by showing that those dealing with EPM personnel would reasonably believe
`they were dealing with agents of Emerson.3 See Invensys’s Sur-Reply at 2-4. As a matter of
`basic fairness (not to mention Due Process), Invensys has the right to respond to the new
`evidence and arguments raised in Emerson’s reply brief.4
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`the copyright on the EPM website, which states that Emerson (not Micro Motion) provides
`service and support for the accused flowmeters. See id. Ex. O.
`3 Invensys could have filed its own motion to strike Emerson’s new arguments and evidence,
`but concluded it would be more efficient to respond to those arguments directly instead of
`wasting everyone’s time with collateral motion practice.
`4 Local Rule 7(f) expressly allows a party to file a sur-reply to respond to issues raised in a reply
`brief. Conway v. United States, 647 F.3d 228 (5th Cir. 2011), nor Miles Bramwell USA, LLC
`v. Weight Watchers International, Inc., No. 4:12-CV-292, 2013 WL 1797031 (E.D. Tex. Mar.
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`Case 6:12-cv-00799-JRG Document 116-1 Filed 03/04/14 Page 5 of 5 PageID #: 3352
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`The Honorable Leonard Davis
`March 3, 2014
`Page Four
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`For the foregoing reasons, Emerson’s request to file a motion to strike Invensys’s sur-
`reply should be denied.
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`Very truly yours,
`
`/s/ Claudia Wilson Frost
`
`Claudia Wilson Frost
`
`cc:
`
`All Counsel of Record (via ECF)
`
`27, 2013), on which Emerson relies, involved a reply or sur-reply that did not respond to new
`evidence and arguments in the preceding brief and thus are irrelevant to the present case.
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