Case 6:12-cv-00799-JRG Document 121-1 Filed 03/07/14 Page 1 of 6 PageID #: 3455
`Case 6:12—cv—00799—JRG Document 121-1 Filed 03/07/14 Page 1 of 6 Page|D #: 3455
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`EXHIBIT 1
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`EXHIBIT 1 
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`Case 6:12-cv-00799-JRG Document 121-1 Filed 03/07/14 Page 2 of 6 PageID #: 3456
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`ATTORNEYS AT LAW
`
`FOLEY & L ARDN ER LLP
`
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`March 7, 2014
`
`
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Re:
`
`
`
`Dear Honorable Judge Davis:
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-LED
`
`Defendants respectfully request permission to file a motion for summary judgment of
`invalidity based on indefiniteness of certain patent claims asserted in this lawsuit.
`
`I.
`
`The Applicable Legal Standard Regarding Indefiniteness
`
`If a claim is not amenable to construction or is insolubly ambiguous, then the claim is
`invalid as indefinite. Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1368 (Fed. Cir.
`2013); Biosig Instr., Inc. v. Nautilus, Inc., 715 F.3d 891, 898 (Fed. Cir. 2013). Indefiniteness is a
`question of law. Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
`1298 (Fed. Cir. 2005). The indefiniteness standard will soon be addressed by the Supreme Court,
`which has granted certiorari to review Biosig. Sup. Ct. No. 13-369. Oral argument is scheduled
`for April 28, 2014 with a decision expected by June of this year. There, the Petitioner has argued
`that the definiteness requirement is met only when the claims clearly distinguish what is claimed
`from what went before in the art and clearly circumscribe what the patentee is intending to
`protect.1 Defendants here so contend, as well.
`
`As discussed below, several claims of the Invensys patents are indefinite under both
`standards, because they “do[] not reasonably apprise those skilled in the art of [their] scope.”
`IPXL Holdings, LLC v. Amazon, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005).
`
`II.
`
`Certain Claims of the Invensys Patents Are Indefinite Because They Are Means-
`Plus-Function Claim Limitations Without Disclosure of Corresponding Structure
`
`The terms “input module” (’761:1, 9; ’906: 1, 8), “output module” (’761:1, 9; ’906: 1, 8),
`and “processing device” (’646:1, 10; ’854:15) should be interpreted as means-plus-function
`terms under 35 U.S.C. § 112(f). Although the word “means” is not used in these terms, so there
`is a rebuttable presumption that § 112(f) does not apply, this presumption is rebutted if “the
`claim term fails to recite sufficiently definite structure or else recites function without reciting
`
`1 See Brief for Petitioner at 20-22, Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (Feb. 24, 2014),
`available at, http://www.americanbar.org/publications/preview_home/13-369.html.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`4815-6514-7673.
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`

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`sufficient structure for performing that function.” Lighting World, Inc. v. Birchwood Lighting,
`Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). (internal quotations omitted).
`
`A.
`
`The Terms “Input Module” and “Output Module” Do Not Recite Sufficient
`Structure, and There Is No Corresponding Structure in the Specification
`
`The claim terms “input module” (’761:1, 9; ’906:1, 8) and “output module” (’761:1, 9;
`’906:1, 8) are generic terms amounting to nothing more than function without structure for
`performing the recited functions. Kozam v. Phase Forward, Inc., No. MJG-04-1787, 2005 U.S.
`Dist. LEXIS 46850, at *17-18 (D. Md. Aug. 29, 2005) (applying § 112 ¶ 6 to the term
`“module”); see also Ranpak Corp. v. Storopak, Inc., No. 98-1009, 1998 U.S. App. LEXIS
`16348, at*6 (Fed. Cir. July 15, 1998) (“settable control module [in a claim] merely sets forth the
`same black box as settable context means without recitation of structure for providing the same
`specified function”); Williamson v. Citrix Online LLC, No. CV11-02409 AHM, 2012 U.S. Dist.
`LEXIS 189496, at *38-43 (C.D. Cal. Sept. 4, 2012) (“module” does not connote sufficient
`structure to avoid a means-plus-function construction). The U.S. Patent and Trademark Office
`has published examination guidelines indicating that “module” is a non-structural term that may
`invoke means-plus-function construction. 76 Fed. Reg. 7167 (Feb. 9, 2011).
`
`It is the court’s duty to determine the corresponding structure, if any, described in the
`specification. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed.
`Cir. 2001). A structure is “corresponding” only if the specification or prosecution history clearly
`links that structure to the function recited in the claim. PersonalWeb Techs. LLC v. Microsoft
`Corp., No. 6:12-CV-663, 2013 U.S. Dist. LEXIS 110256, at *8 (E.D. Tex. Aug. 6, 2013) (Davis,
`J.). If there is no corresponding structure in the specification, the claim is indefinite. Biomedino,
`LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
`
`Here, there is no corresponding structure described in the specification to provide any
`definiteness to “input module” or “output module.” Indeed, the terms “input module,” “output
`module,” and “module” do not appear anywhere in the written descriptions of the ’761 or ’906
`patents (except in their respective Abstracts). The claims with these terms are therefore invalid.
`
`B.
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`The Term “Processing Device” Does Not Recite Sufficient Structure, and
`There Is No Corresponding Structure in the Specification
`
`The claim term “processing device” (’646:1, 10; ’854:15) is also a generic term that does
`not recite structure for performing the recited function(s). See Welker Bearing Co. v. PHD, Inc.,
`550 F.3d 1090, 1096 (Fed. Cir. 2008) (use of generic terms such as “device” typically do not
`connote sufficiently definite structure); see also Widevine Tech., Inc. v. Verimatrix, Inc., No. 2-
`07-cv-321, 2009 U.S. Dist. LEXIS 102768, at *40-41 (E.D. Tex. Nov. 4, 2009) (Ward, J.)
`(construing the terms “first device” and “second device” as means-plus-function limitations); 76
`Fed. Reg. 7167 (“device” is a non-structural term that may invoke means-plus-function).
`
`The pertinent claims provide no structural context and only describe the “processing
`device” by the function(s) that it performs. In each instance, the term appears in isolation
`without any structural language. For instance, in Claims 1 and 10 of the ’646 patent, the only
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`language modifying “processing devices” are the phrases “coupled to the sensor” and
`“configured to [perform the recited functions].” Similarly, in Claim 15 of the ’854 patent, only
`the “configured to” language modifies “processing device.” This language is insufficient to
`define a particular structure of the “processing devices” claimed, and this term should therefore
`be construed as a means-plus-function limitation. Mass. Institute Tech. v. Abacus Software, 462
`F.3d 1344, 1354 (Fed. Cir. 2006) (“device” does not connote sufficient structure).
`
`The term “processing device” also does not appear in the written description of the ’646
`or ’854 patents. In the absence of linked structure, these claims are indefinite. Further, claim 15
`of the ’854 patent is invalid because it consists of the single means element “processing device.”
`In re Hyatt, 708 F.2d 712, 713 (Fed. Cir. 1983) (prohibiting single means claim).
`
`III. Certain Claims of the Invensys Patents Are Indefinite Because They Are Not
`Amenable to Construction or They Are Insolubly Ambiguous
`
`“The test for definiteness is whether one skilled in the art would understand the bounds of the
`claim when read in light of the specification.” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875
`(Fed. Cir. 1993). As explained below, several of the claim terms here do not meet this standard.
`In addition, if the Supreme Court were to adopt the indefiniteness standard advocated by the
`Petitioner in Biosig, several of the claim terms would fail under that standard.2
`
`First, the claim term “determine the flow rate” and variants of that term that appear in
`claims 1, 5, 9, 10, 11, 15, 17, 19 of the ’646 patent are indefinite because the metes and bounds
`of what constitutes “determining” the flow rate, such as how long and to what degree of accuracy
`the flow rate must be measured, are unclear to one skilled in the art. “Determining the flow rate”
`is not a term that has a particular meaning to a person of ordinary skill in the art. All Coriolis
`flowmeters measure flow rate to some degree, the difference being the accuracy of the
`measurement. The specification of the ’646 patent provides no guidance as to the precise
`meaning of the claim term. Indeed, the specification describes performance results for the
`disclosed digital flow meter and a traditional analog flow meter during a batching application in
`which both meters provided measurement data with some error, the difference being in different
`amounts of error. (’646: 51:38-52:11). The specification also states that even the disclosed digital
`flow meter provides “erroneous data” representing conditions “physically not possible” during
`batching (’646: 56:43-45). Thus, it is clear from the specification that both prior art flowmeters
`and the disclosed (and claimed) digital flowmeters measure the flow rate during the transition
`from empty to full, but that neither does so with 100% accuracy. Because neither the
`specification nor the claim language provides any basis for deciding when a measurement of a
`flow rate constitutes a “determination” that is covered by the claims and when it is not, the
`claims are invalid as indefinite.
`
`Second, if not construed as Micro Motion asserts, the claim phrase “maintains oscillation
`of the flowtube … during a transition” (and variants), which appear in the ’761 and ’906 patents
`would be indefinite. (’761:1, 5, 7, 9, 11; ’906:1, 5, 7, 8.) If not given Micro Motion’s
`
`2 Defendants reserve the right to make further arguments depending on the Supreme Court’s decision, and
`suggest, for the sake of judicial economy, delaying indefiniteness briefing until after the Supreme Court’s decision.
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`construction, the metes and bounds of “maintaining oscillation … during,” such as how long and
`to what degree oscillation must be maintained, are unclear to one skilled in the art. As will be
`discussed in Micro Motion’s claim construction briefing, the specifications of the ’761 and ’906
`patents make clear that “maintains oscillation … during a transition” is limited to a system that
`modifies the drive signal, and, except for programmed pauses between setpoint adjustments,
`maintains oscillation of the flow tube at amplitude setpoints set by the controller throughout the
`transition from substantially empty to substantially full. If the court were to hold otherwise, the
`specifications would provide no guidance as to how long and to what degree oscillation must be
`maintained. The specifications disclose that prior art analog flow meters were capable of keeping
`the flowtubes oscillating in the presence of aeration or two-phase flow. (’761: 50:2-24). The
`patents describe a test that compares the “digital flowmeter” of the claimed invention with a
`“traditional analog flowmeter.” (’761:51:48-52:21.) This test showed that both the prior art
`“traditional” meter and the disclosed digital meter produced results for at least some portion of
`the transitions of the flowtubes from substantially empty to substantially full. (’761:52:3-21
`(describing results of test).) The fact that both meters produced results shows that both of their
`flowtubes must have been oscillating at some rate and amplitude for some portions of these
`transitions. Thus, unless Micro Motion’s construction were adopted, the words “maintains
`oscillation … during a transition” cannot distinguish the claimed invention from the prior art,
`and the claims including that language would be invalid under § 112(b).3
`
`Finally, the claim term “system disturbance” (’854:1, 8, 15) is indefinite because the
`metes and bounds of a system disturbance, such as the magnitude, duration or effect on the
`system, are unclear to one skilled in the art. “System disturbance” does not have an ordinary
`meaning to one of skill in the art, and could range from simple external electrical or mechanical
`noise to a high percentage of entrained gas flowing through the flowmeter. Moreover, the
`specification of the ’854 patent does not provide a clear definition for “system disturbance”
`beyond possibly equating it to a condition in which the flowmeter measurements become
`“unstable” (’854:29:15-18) – which is no more enlightening as to the scope of that term. It is thus
`unclear to one of skill in the art when a system is or is not subjected to a system disturbance.
`
`IV.
`
`The Broad Functional Language Used in Many of the Invensys Claims Render
`Them Invalid under the Supreme Court’s Halliburton Decision
`
`Many of the Invensys claims use broad functional language that is calculated to cover
`every structure for performing the recited function. For example, certain of the claims recite
`devices that are “configured to” or “operable to” perform in a particular way without reciting any
`structure that performs those functions. (“Configured to”: ’646:1, 5, 9-11; ’854:15, 20, 21;
`’062:13, 23-25, 29, 30, 36, 40, 43. “Operable to”: ’761:1, 2, 4, 9, 11, 12; ’854:1, 7; ’906:1-3, 8,
`9.) Other claims recite “circuitry to” perform various functions. (’136:17, 21, 24-26, 36; ’594:1,
`3, 4, 6, 9-11, 13, 14.) The Supreme Court in Halliburton Oil Well Cementing Co. v. Walker, 329
`U.S. 1 (1946), found that such language at the point of novelty rendered the claim invalid as
`
`3 The specifications of these patents describe a setpoint adjustment procedure that supposedly allows the
`disclosed digital meter to perform better than traditional analog flowmeters. (‘761: 50:29-32). Micro Motion
`contends that the only way to construe the claim so that it would be valid is to limit Invensys to what it is alleged to
`have invented – i.e., the construction advocated by Micro Motion.
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`indefinite. Congress provided a remedy to this proscription in 1952 by enacting § 112, ¶ 6 (now
`§ 112(f)), which permitted a patentee to draft functional elements in means-plus-function
`language. However, to the extent the limitations described above are not construed as means-
`plus-function limitations, then they are invalid under Halliburton, because they use purely
`functional language without making use of the Congressionally-approved remedy provided by
`§ 112(f). The defendants are aware that the Federal Circuit has not adopted this argument, but
`make it here to preserve the issue on appeal. 
`
`V.
`
`Certain Claims of the Invensys Patents Are Indefinite Because They Impermissibly
`Claim Both a System and a Method
`
`A claim that recites both apparatus and method limitations is invalid as indefinite. IPXL,
`430 F.3d at 1383-84. Instead, the claim must tell an accused infringer whether a particular claim
`is infringed (a) when the system is built; or (b) when the system is used.
`
`Claim 36 of the ’136 patent is representative of Invensys’s indefinite “mixed”
`system/method claims. Claim 36 is directed to a digital flowmeter that first recites structures,
`such as “a control and measurement system,” and then adds a method step that states: “wherein
`the control and measurement system uses digital processing to adjust a phase of the drive
`signal….” Under IPXL, the phrase “uses digital processing” renders the claim indefinite because
`it is unclear whether infringement occurs when one creates the digital flowmeter or whether
`infringement occurs only when the user uses digital processing with the flowmeter. Id. at 1384;
`see also Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1340 (Fed. Cir. 2011).
`
`Whereas the focus of the “operable to” and “to generate” is the capability and
`functionality of the digital flowmeter apparatus, the focus of the method step “uses digital
`processing” requires actual performance by way of digital processing. This is the same defect
`the Federal Circuit found to invalidate the claims in IPXL and in Rembrandt. See also In re Katz
`Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (rejecting
`argument that the term “wherein” defines a functional capability rather than a method step).
`
`Besides claim 36 of the ’136 patent, the following claims are indefinite “mixed” claims
`that similarly combine structural elements and “wherein” clauses that use method steps; ’136: 17
`(digitally generates a gain); ‘594: 13, 14 (digitally implements a PI control algorithm);‘136: 21
`(selectively applies a negative gain…); ‘136: 24-26 (accounts for effects of aeration); ‘594: 3, 6
`(combines the sensor signals); ’594: 4 (generates the drive signal); and ‘594:8 (initiates motion).
`
`VI. Conclusion
`
`For at least these reasons, the defendants respectfully request permission to file a motion
`for summary judgment on each of the above-described indefiniteness issues.
`
`cc: all counsel of record (by ECF)
`
`Sincerely,
`/s/ Jeffrey N. Costakos