Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 1 of 6 PageID #: 3558
`Case 6:12—cv—00799—JRG Document 123-1 Filed 03/07/14 Page 1 of 6 Page|D #: 3558
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`EXHIBIT 1
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`EXHIBIT 1
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`

`
`Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 2 of 6 PageID #: 3559
`
`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 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: C.A. No. 6:12-cv-799-LED; Invensys Systems, Inc. v. Emerson Electric Co., et al.
`
`Dear Judge Davis:
`
`Counterclaim-Defendant Invensys Systems, Inc. (“Invensys”) requests permission to
`file a summary judgment motion that U.S. Patent No. 5,555,190 (the “ ’190 patent”) is
`indefinite under 35 U.S.C. § 112(b).1 The term “mass flow measurement means,” which
`appears in independent claims 1 and 35 of the ’190 patent, is indefinite because it is a
`computer-implemented means-plus-function term that lacks a corresponding algorithm. See
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
`2008).
`
`Invensys also requests permission to file a summary judgment motion that U.S. Patent
`No. 6,505,131 (the “ ’131 patent”) is indefinite or alternatively that it is not enabled or lacks
`utility under §§ 112(a) and 101, respectively. Every independent claim of the ’131 patent
`requires “calculating dot products of said normalized pulsation and said signals from said
`first pick-off sensor and said second pick-off sensor to translate said signals to said center
`frequency.” But this mathematical calculation cannot be performed. A skilled artisan could
`not give meaning to an impossible mathematical operation, rendering this term insolubly
`ambiguous. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
`2005); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).
`Alternatively, the claimed invention’s inoperability makes it not enabled or lacking utility.
`See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999).
`Either way, the ’131 patent is invalid.
`
`1 The America Invents Act recodified several parts of § 112. Since those changes did not alter
`the substantive law applicable to the present motion, for simplicity, Invensys will refer to the
`current version of the statute.
`
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`Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 3 of 6 PageID #: 3560
`
`The Honorable Leonard Davis
`March 7, 2014
`Page Two
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`I.
`
`The ’190 Patent Is Indefinite.
`
`The parties agree that the term “mass flow measurement means” is a means-plus-
`function term and that the claimed function is “determining a mass flow rate value of the
`material flowing through the flow tube.” Joint Claim Constr. and Prehearing Statement Ex.
`B at 3, ECF No. 105. The only corresponding structure Counterclaim-Plaintiff Micro
`Motion, Inc. (“Micro Motion”) has identified is the “mass flow computation” block, 290 in
`Figure 2.2 See id.
`
`As the name implies, there appears to be no dispute that the mass flow computation
`block is a computer element. But the ’190 patent does not disclose an algorithm or
`instructions for programming the mass flow computation block to perform the claimed
`function. In fact, the specification’s entire description of the mass flow computation block is
`as follows: “Mass flow computation element 290 corrects the Δt value to generate the mass
`flow rate and apply it to utilization 292 of FIG. 2 over path 155. Element 290 performs
`appropriate corrections and scaling to compensate for the effects of temperature and other
`environmental factors.” ’190 Pat. 36:27-32.
`
`“In cases involving a computer-implemented invention in which the inventor has
`invoked means-plus-function claiming, this court has consistently required that the structure
`disclosed in the specification by more than simply a general purpose computer or
`microprocessor.” Aristocrat Techs., 521 F.3d at 1333.
`Instead, the specification must
`disclose the specific algorithm or programming necessary to enable the computer to carry out
`the claimed function. See id. The ’190 patent, however, merely discloses using “appropriate
`corrections and scaling” to calculate the mass flow rate from the Δt. ’190 Pat. 36:30-31. The
`Federal Circuit has held that such generic language is insufficient. See Aristocrat Techs.,
`
`2 Invensys initially believed that several other portions of the specification related to the mass
`flow measurement means. See id. On further reflection, however, those portions of the
`specification actually relate to determining the time difference between the two sensor signals
`(i.e., the Δt). The mass flow computation block performs calculations on the Δt in order to
`determine the mass flow rate of the liquid in the flowtube, and thus, the determination of the
`Δt is distinct from and must occur prior to the determination of the mass flow rate. See ’190
`Pat. 36:22-25 (“The Δt value stored in register 1222 is indicative of the mass flow rate of
`material through the flowmeter and is applied to path 294 for use by mass flow computation
`element 290.” (emphasis added)). Invensys agrees that the mass flow computation block (290)
`is the only structure associated with the mass flow measurement means.
`
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`Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 4 of 6 PageID #: 3561
`
`The Honorable Leonard Davis
`March 7, 2014
`Page Three
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`521 F.3d at 1336 (“appropriate programming” is not a sufficient structural disclosure to
`satisfy § 112).
`
`II.
`
`The ’131 Patent Is Indefinite or Alternatively Is Not Enabled or Lacks Utility.
`
`Every claim of the ’131 patent requires “calculating dot products of said normalized
`pulsation and said signals from said first pick-off sensor and said second pick-off sensor.”
`See, e.g., ’131 Pat. 11:36-40. This is not mathematically possible, however.
`
`There is no dispute that a “dot product” is “a single number [calculated] from two
`equal-length sequences of numbers.” Defs.’ LR 4-2 Disclosures at 15; see also Wikipedia
`(“In mathematics, the dot product . . . is an algebraic operation that takes two equal-length
`sequences of numbers (usually coordinate vectors) and returns a single number.”).3 A dot
`product can be expressed as:
`
`X · Y = x1y2 + . . . + xnyn
`See Eric W. Weisstein, THE CRC CONCISE ENCYCLOPEDIA OF MATHEMATICS 489 (1998).4
`
`A dot product cannot be calculated using the normalized pulsation disclosed in the
`’131 patent, however, because the normalized pulsation is a single number, not a sequence of
`numbers. See ’131 Pat. 9:6-12. Even Micro Motion acknowledges that a dot product
`requires a sequence of numbers, not a single number See Defs.’ LR 4-2 Disclosures at 15.
`Micro Motion’s proposed construction of “calculating a dot product” also implicitly confirms
`that a dot product cannot be taken from a single number since it attempts to add the new
`limitation “a sequence of data representing the normalized pulsation” to this term.
`Joint
`Claim Constr. and Prehearing Statement Ex. B at 9, ECF No. 105 (emphasis added).
`
`3 Some courts have been reluctant to rely on Wikipedia. While these concerns may be justified
`for some types of articles (e.g., articles on politically sensitive topics), for scientific articles,
`Wikipedia is generally as reliable as the Encyclopedia Britannica. See Jim Giles, Internet
`Encyclopedias Go Head to Head, 438 NATURE 900 (Dec. 15, 2005) (reporting on a peer-
`review study comparing Wikipedia and the Encyclopedia Britannica). Courts routinely take
`judicial notice of encyclopedias, and many courts have relied on Wikipedia. See Alfa Corp. v.
`OAO Alfa Bank, 475 F. Supp. 2d 357, 361 (S.D.N.Y. 2007) (collecting cases).
`4 That is, each number in set X is multiplied by the number in the corresponding position in set
`Y, and the product of each of those calculations is added together.
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`Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 5 of 6 PageID #: 3562
`
`The Honorable Leonard Davis
`March 7, 2014
`Page Four
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`Because a dot product cannot be calculated from the normalized pulsation and the
`sensor signals the dot product term in the ’131 patent is essentially mathematical nonsense.
`It is akin to requiring division by zero. Attempting to give meaning to an impossible
`mathematical operation is necessarily futile, rendering the term insolubly ambiguous. See
`Datamize, 417 F.3d at 1347. Alternatively, the impossibility of actually performing the
`claim renders it not enabled or lacking utility. See Process Control, 190 F.3d at 1359. Either
`way, the claim is invalid.5
`
`from the single-number
`While the impossibility of calculating a dot product
`normalized pulsation value is sufficient by itself to render the ’131 patent indefinite, the
`patent suffers from other fatal defects as well. For example, even if Micro Motion were
`permitted to rewrite the claims, the result of the dot product under its incorrect proposed
`construction is still a single number. A single number cannot be used to “translat[e] said
`signals to said center frequency” as required by the claims.
`
`Sensor signals are defined in units of length such as inches.6 Normalized pulsation is
`measured in radians per sample.7 Whatever “sequences of data” are purported to represent
`these quantities, they necessarily must represent measurements of the same characteristic.
`Instead, the result of the dot product of the values Micro Motion proposes would be in
`
`5 It would be possible to take the dot product of the two sets of sensor signals, since they would
`normally be sequences of numbers. But the claims require the dot product of the normalized
`pulsation and the sensor signals. Similarly, it would be possible to take the product of (i.e.,
`multiply) the normalized pulsation and the sensor signals, but the claims specifically require a
`dot product. Courts do not “rewrite claims to preserve their validity.” Allen Eng’g, 299 F.3d
`at 1349.
`6 In the ’131 patent, the sensor signals represent the position of the Coriolis flowtubes as they
`vibrate due to the drive signal. For convenience, for the balance of this letter brief Defendants
`use inches, but substituting another unit of distance would not change the analysis.
`7 “Radians” are a unit of measure for angles. For example, 6.3 radians is approximately 360
`degrees. Although the parties disagree about
`the proper construction of “normalized
`pulsation,” both definitions use radians per sample as the unit of measure. For example, Micro
`Motion contends “normalized pulsation” is a “normalized frequency [converted] into angular
`form,” which would necessarily be expressed in radians per sample. Joint Claim Constr. and
`Prehearing Statement Ex. B at 7, ECF No. 105.
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`Case 6:12-cv-00799-JRG Document 123-1 Filed 03/07/14 Page 6 of 6 PageID #: 3563
`
`The Honorable Leonard Davis
`March 7, 2014
`Page Five
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`“inches-radians per sample.”8 This is neither the correct unit for signals (measured in
`“inches”) nor is it the correct unit for center frequency (measured in “cycles per second”).
`
`Therefore, even though this dot product operation can technically be performed, the
`result of the calculation cannot “translate said signals to said center frequency” as required
`by the claims.
`It is akin to someone claiming to predict stock market performance using a
`mathematical formula in gallons per degrees or attempting to describe the area of a plot of
`land in pounds per second.
`
`For the foregoing reasons, Invensys requests permission to file a summary judgment
`motion of indefiniteness on claims 1 and 35 (and the accompanying dependent claims) of the
`’190 patent and on all the claims of the ’131 patent.
`
`Very truly yours,
`
`/s/ Claudia Wilson Frost
`
`Claudia Wilson Frost
`
`cc:
`
`All Counsel of Record (via ECF)
`
`8 To calculate a dot product between these two sequences of data representing the normalized
`pulsation and the sensor signals (measured in inches and radians per sample, respectively),
`each of the corresponding components in the sequence must first be multiplied together,
`producing a sequence of numbers measured in (inches) x (radians per sample). Adding up a
`sequence of numbers with those units will result in a number with the same units.
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