Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 1 of 21 PageID #: 3954
`Case 6:12—cv—00799—JRG Document 126-2 Filed 03/10/14 Page 1 of 21 Page|D #: 3954
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`EXHIBIT B
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`EXHIBIT B
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 2 of 21 PageID #: 3955
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Plaintiff,
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`Case No. 6:12-cv-00799-LED
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`INVENSYS SYSTEMS, INC.,
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`vs.
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants.
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`vs.
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`Counterclaim-Defendant.
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`INVENSYS SYSTEMS, INC.,
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`INVALIDITY CONTENTIONS OF EMERSON ELECTRIC CO. AND MICRO MOTION, INC.
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`Pursuant to the Second Amended Docket Control Order, (Dkt. No. 69), and in
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`compliance with P. R. 3-3, Defendant Emerson Electric Co. (“Emerson”) and Defendant and
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`Counterclaim-Plaintiff Micro Motion, Inc. (“Micro Motion”) hereby provide their Invalidity
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`Contentions relating to the Invensys Patents-in-Suit (United States Patent Nos. 7,124,646,
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`7,136,761, 6,311,136, 7,505,854, 6,754,594, 7,571,062, and 8,000,906) to Plaintiff and
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`Counterclaim-Defendant Invensys Systems, Inc. (“Invensys”).
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`In addition, in compliance with P. R. 3-4, Emerson and Micro Motion are
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`producing documents branded with production numbers MM00002702-MM0646207, certain of
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`4844-2821-1989.1
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`

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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 3 of 21 PageID #: 3956
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`which are being provided in native format and all of which are subject to the Protective Order
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`entered in this case, (Dkt. No. 66).1
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`These Invalidity Contentions are being provided without prejudice to Emerson’s
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`and Micro Motion’s rights and are based on reasonable beliefs and information available prior to
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`completion of fact or expert discovery. As such, Emerson and Micro Motion reserve the right to
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`amend, add, supplement, change, alter, expand, or otherwise modify these Invalidity Contentions
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`as Emerson and Micro Motion learn new information, additional facts are ascertained as
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`discovery progresses in this case, including written discovery, document production, and both
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`fact and expert depositions, analyses are made, research is completed, and additional contentions
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`and elections of asserted claims are made.2
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`In addition, because there has been neither an interpretation of any claim elements
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`of the Invensys Patents-in-Suit nor a Markman hearing and ruling to determine the meaning and
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`scope of any of the claims, Emerson and Micro Motion reserve the right to amend, add,
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`supplement, change, alter, expand, or otherwise modify these Invalidity Contentions, including
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`in response to any Court order and/or the Rules of Practice for Patent Cases before the Eastern
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`District of Texas, including P. R. 3-6.
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`
`
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`1 Micro Motion intends to make the relevant source code available for inspection at its
`counsel’s office either in Boulder, Colorado or Milwaukee, Wisconsin upon Invensys’s request,
`subject to the Protective Order, (Dkt. No. 66), and the parties’ agreed upon restrictions.
`
`2 For example, Invensys has only just begun producing documents and has not produced
`all relevant documents in the possession, custody, or control of the purported inventors of the
`Invensys Patents-in-Suit or of Oxford University. Until those documents have been produced
`and appropriate follow up discovery has been conducted, Emerson and Micro Motion reserve
`their rights to assert appropriate invalidity defenses, including defenses under 35 U.S.C. §§
`102(b), (f), and (g).
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`4844-2821-1989.1
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`2
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 4 of 21 PageID #: 3957
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`These Invalidity Contentions should not be taken as evidence of or construed as
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`an admission that the claim terms of the Invensys Patents-in-Suit have any construction alleged,
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`now or hereafter, by Invensys. However, to the extent that the claim terms of the Invensys
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`Patents-in-Suit have a scope and meaning that is suggested by Invensys, the claims are still
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`anticipated or rendered obvious by the prior art identified and discussed in these Invalidity
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`Contentions or otherwise invalid under 35 U.S.C. § 112. Based on the information available at
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`this time, the Invensys Patents-in-Suit are invalid under any likely claim construction.
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`Correspondingly, nothing in these Invalidity Contentions should be interpreted to mean that
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`Emerson or Micro Motion have adopted a construction of any claim language, or that any claim
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`language requires construction.
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`In addition, Emerson and Micro Motion reserve the right to rely on additional
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`references, including those listed in the attached Exhibits and discussed herein, to establish the
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`invalidity of the asserted claims of the Invensys Patents-in-Suit. To the extent any reference
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`identified herein is not prior art to the asserted claims of the Invensys Patents-in-Suit, that
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`reference is evidence of simultaneous invention by another.
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`These Invalidity Contentions are made solely for the purpose of this action and
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`are subject to all objections as to competence, relevance, materiality, propriety, and
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`admissibility, and to any other objections, which are expressly reserved and may be interposed at
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`the time of trial.
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`With these reservations of rights and subject to Invensys’s preliminary and final
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`election of asserted claims, Emerson and Micro Motion provide their Invalidity Contentions,
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`which identify how the currently asserted claims of the Invensys Patents-in-Suit are anticipated
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`or rendered obvious by prior art as well as how these claims are invalid under various paragraphs
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`4844-2821-1989.1
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`3
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 5 of 21 PageID #: 3958
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`of § 112. Specifically, consistent with P. R. 3-3(a), Exhibit A identifies each item of prior art
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`that is cited to show anticipation or obviousness of any claim. Consistent with P. R. 3-3(b) and
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`(c), Exhibit B identifies representative prior art that anticipates each asserted claim or, in
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`combination with other prior art references, renders the asserted claims obvious, setting forth
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`representative motivations for such combinations.
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`The charts in Exhibit B identify where, in each cited prior art reference, each
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`element of each asserted claim may be found. Where a single prior art reference includes every
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`element of an asserted claim, that claim is anticipated or rendered obvious under that prior art
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`reference. Where a combination of prior art references includes the elements of an asserted
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`claim, that claim is obvious. If a particular prior art reference is found not to anticipate a
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`particular asserted claim, that reference renders that claim obvious, either alone or in
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`combination with other prior art disclosing the elements allegedly missing from that reference.
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`The inclusion of a prior art reference as part of an obvious combination of prior art references
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`does not preclude application of that prior art reference as a piece of prior art that anticipates or
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`renders obvious without combination, or renders obvious in a different combination.
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`These Invalidity Contentions incorporate by reference, in their entirety, all
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`references cited in any of the prior art references. In addition, where Emerson and Micro Motion
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`cite to a particular figure in a prior art reference, the citation should be understood to encompass
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`the caption and description of the figure and any text relating to the figure in addition to the
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`figure itself. Where a cited portion of the text refers to a figure, the citation should be
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`understood to include the figure as well.
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`In addition, Emerson and Micro Motion cite to Micro Motion product manuals
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`and other documents descriptive of Micro Motion products, which are anticipating and/or render
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`4844-2821-1989.1
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`4
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 6 of 21 PageID #: 3959
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`obvious claims of the Invensys Patents-in-Suit. These product manuals and descriptive
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`documents represent the associated products and product families, such that the associated
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`products and product families also anticipate or render obvious the respective claims. Emerson
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`and Micro Motion reserve the right to use the associated products and product families and
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`related manuals and descriptive documents to show invalidity of any of the asserted claims in
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`subsequent proceedings.
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`In an effort to focus the issues, Emerson and Micro Motion have cited only
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`representative portions of the identified references, even where a reference may contain
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`additional support for a particular claim element. Persons of ordinary skill in the art generally
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`read an item of prior art as a whole and in the context of other publications and literature. Thus,
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`to understand and interpret any specific statement or disclosure within a prior art reference, such
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`persons would rely on other information within the reference, along with other publications,
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`texts, and treatises, and their general scientific knowledge. Emerson and Micro Motion may rely
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`on uncited portions of the prior art references and on other publications and expert testimony to
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`provide context and as aids to understanding and interpreting the portions that are cited. In other
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`words, the Exhibits are provided for illustrative purposes and may not set forth every place in
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`every reference where a claim element is disclosed. Where elements are disclosed at multiple
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`locations within a single item of prior art, Emerson and Micro Motion have not necessarily
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`identified every iteration of every disclosure. In the Exhibits, the absence of an identified
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`location in a reference where a claim or claim element of the Invensys Patents-in-Suit is found
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`should not be deemed an admission by Emerson or Micro Motion that the element is missing
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`from the reference.
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`4844-2821-1989.1
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`5
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`

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`
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`Moreover, much of the art identified in the attached Exhibits reflect common
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`knowledge and the state of the art before the filing dates of the Invensys Patents-in-Suit. In
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`many instances where a particular contention calls for combining references, any one of a
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`number of references can be combined. The inclusion of certain exemplary combinations of
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`prior art references does not exclude other combinations based upon the claim charts attached
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`hereto as Exhibit B.
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`
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`In addition to the prior art references set forth in the attached claim charts in
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`Exhibit B, Emerson and Micro Motion reserve the right to cite to and rely on treatises and
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`textbooks as representative of the state of the art, including the state of the art of digital signal
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`processing and control systems. For example, Emerson and Micro Motion reserve the right to at
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`least rely on the texts referred to in the specifications of the Invensys Patents-in-Suit, as well as
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`the following:
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`1. “Sampled-Data Control Systems,” Ragazzini & Franklin, McGraw-Hill, 1958;
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`2. “Introduction to Continuous and Digital Control Systems,” Saucedo & Schering,
` Macmillan, 1968;
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`3. “The Fast Fourier Transform,” Brigham, Prentice-Hall, 1974;
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`4. “Digital Signal Processing,” Alan V. Oppenheim, Ronald W. Schafer, Prentice-Hall,
`January 1975;
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`5. “Signal Analysis,” Athanasios Papoulis, McGraw-Hill College, May 1977;
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`6. “The Fourier Transform and its Applications,” Bracewell, McGraw-Hill, Second
`
`Edition, 1978;
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`7. “Applications of Digital Signal Processing,” Alan Oppenheim, Prentice-Hall, January
`1978;
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`8. “Digital Processing of Speech Signals,” Lawrence R. Rabiner, Ronald W. Schafer,
`Prentice-Hall, US Edition, September 1978;
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`9. “Digital Control of Dynamic Systems,” Franklin & Powell, Addison-Wesley
`Publishing Company, 1980;
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`4844-2821-1989.1
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`6
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 8 of 21 PageID #: 3961
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`10. “Modern Control Systems,” Richard C. Dorf, Addison-Wesley Publishing Company,
`Third Edition, May 1980;
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`11. “Multirate Digital Signal Processing,” Ronald E. Crochiere, Lawrence R. Rabiner,
`Prentice-Hall, First Edition, March 1983;
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`12. “Microprocessors in Signal Processing, Measurement and Control,” S.G. Tzafestas,
`D. Reidel Publishing Company, 1983;
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`13. “Digital Signal Processing,” William D. Stanley, Gary R. Dougherty, Ray Dougherty,
`Reston Publishing Company, Second Edition, August 1983;
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`14. “Computer Controlled Systems, Theory and Design,” Karl J. Astrom, Bjorn
` Wittenmark, Prentice-Hall, 1984;
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`15. “Time Delay and Computational Delay: Computer-Controlled Systems Theory
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`and Design,” Astrom & Wittenmark, Prentice-Hall, 1984;
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`16. “Adaptive Signal Processing,” Bernard Widrow, Samuel D. Stearns, Prentice- Hall,
`First Edition, March 1985;
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`17. “Fast Algorithms for Digital Signal Processing,” Richard E. Blahut, Addison-Wesley
`Publishing Company, First Edition, September 1985;
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`18. “Control Sensors and Actuators,” Clarence W. DeSilva, Prentice-Hall, 1989;
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`19. “Discrete-Time Signal Processing,” Oppenheim & Schafer, Prentice-Hall, 1989;
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`20. “Digital Control of Dynamic Systems,” Franklin, Powell & Workman, Addison-
`Wesley Publishing Company, Second Edition, 1990;
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`21. “Modern Control Theory,” William L. Brogan, Prentice-Hall, Third Edition, October
`1990;
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`22. “Sonar Signal Processing,” Richard O. Nielsen, Artech House Publishers, May, 1991;
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`23. “Statistical Signal Processing: Detection, Estimation, and Time Series Analysis,”
`Louis L. Scharf, Addison-Wesley Publishing Company, First Edition, July 1991;
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`24. “Digital Control Systems Theory, Hardware, Software,” Constantine Houpis, Gary B.
`Lamont, McGraw-Hill Companies, Second Edition, November 1991;
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`25. “Digital Signal Processing Principles, Algorithms, and Applications,” John J. Proakis,
`Dimitris G. Manolakis, Macmillan Publishing Company, Second Edition, 1992;
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`26. “Random Signal Processing,” Dwight F. Mix, Prentice-Hall, August 1995;
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`27. “Active Noise Control Systems: Algorithms and DSP Implementations,” Sen M.
`Kuo, Dennis R. Morgan, Wiley-Interscience, First Edition, February, 1996;
`7
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`4844-2821-1989.1
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 9 of 21 PageID #: 3962
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`28. “Advanced Signal Processing and Digital Noise Reduction,” Saeed V. Vaseghi,
`Wiley, First Edition, July 1996; and
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`29. “Sampling in Digital Signal Processing and Control,” Arie Feuer, Graham Goodwin,
`Birkhauser Boston, First Edition, August 1996.
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`
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`Each of the asserted claims of the Invensys Patents-in-Suit is anticipated by
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`and/or obvious in view of one or more of the items of prior art identified herein alone or in
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`combination with other prior art references. None of the contentions contained herein shall be
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`construed as an admission that any asserted claim satisfies the requirements of 35 U.S.C. § 112.
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`
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`In fact, the asserted claims are invalid under various paragraphs of § 112 because:
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`(a)
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`the specification does not provide a written description of the alleged
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`inventions;
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`(b)
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`the specification does not enable one of ordinary skill in the art to make
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`and use the claimed inventions; and
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`(c)
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`the claims are indefinite because certain claim terms are fatally
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`ambiguous.3
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`Based on Invensys’s apparent construction of the claims, the asserted claims are invalid under
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`§ 112(a). This section requires that a “specification shall contain a written description of the
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`invention.” Id. The test for whether the written description requirement is met is “whether the
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`disclosure of the application relied upon reasonably conveys to those skilled in the art that the
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`inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc.
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`v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). In making this inquiry, “the
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`3 The parties have not yet exchanged constructions of any terms in the asserted claims of
`the Invensys Patents-in-Suit. Emerson and Micro Motion reserve the right to further object to
`the indefiniteness of the asserted claims depending on the claim constructions advanced by
`Invensys.
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`4844-2821-1989.1
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`8
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 10 of 21 PageID #: 3963
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`specification must describe an invention understandable to that skilled artisan and show that the
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`inventor actually invented the invention claimed.” Id. “Put another way, one skilled in the art,
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`reading the original disclosure, must ‘immediately discern the limitation at issue’ in the claims.”
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`Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). The Federal
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`Circuit has indicated that the inventor must show in his application that he in fact invented what
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`he later claimed. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991)
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`(identifying the relevant question as “whether the [application] conveyed with reasonable clarity
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`to those of ordinary skill that [the inventor] had in fact invented the [invention] recited in those
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`claims”).
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`The Invensys Patents-in-Suit do not do this.
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`U.S. Patent No. 7,124,646 (“the ’646 patent”)
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`The ’646 patent claims a method or controller for a Coriolis effect flowmeter,
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`including processing devices configured, among other things, to “determine, based on the sensor
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`signal, the flow rate of the flowing liquid during a transition of the flowtube from a first state in
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`which the flowtube is substantially empty of the flowing liquid to a second state in which the
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`flowtube is substantially full of the flowing liquid.” It appears that Invensys interprets this claim
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`limitation to cover every Coriolis flowmeter that determines the flow rate during the transition
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`from a substantially empty condition to a substantially full condition – so-called “batching from
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`empty.” However, the specification neither enables nor provides an adequate written description
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`of this scope of invention.
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`The only portions of the ’646 patent that potentially relate to determining the flow
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`rate during “batching from empty” are contained in Section K, which begins at column 51, line
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`37 and runs through column 52, line 11, and Section N, which begins at column 55, line 54 and
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`4844-2821-1989.1
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`9
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 11 of 21 PageID #: 3964
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`runs to column 57, line 45. However, these sections never explain how the Coriolis flowmeter
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`disclosed in the ’646 patent measures the flow rate during batching from empty. It merely
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`provides data that purports to show improved performance during batching from empty.
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`In one of the preceding sections (Section I, which relates to “Aeration (Two-
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`Phase Flow),” 47:65-49:55, the ’646 patent attempts to explain ways in which it attempts to
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`correct for two-phase flow. It explains correcting for aeration effects such as the “bubble effect,”
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`“damping effect,” and “sensor imbalance.” But, the ’646 patent never explains how, if at all, the
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`correction for these effects relates to the issue of batching from empty.
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`The ’646 patent even concedes that its method, whatever it is, does not provide an
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`accurate measurement during batching from empty. At column 57, line 31, the ’646 patent
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`acknowledges that “it would be difficult to assess the true mass-flow through the flowtube, given
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`its initially empty state. The reported total mass falls between that of the magnetic flowmeter
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`4810 and the weigh scale, as expected.” This acknowledges that the data produced by the
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`alleged invention, while purportedly better than a magnetic flowmeter, is still not accurate.
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`
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`The data used in the ’646 patent appears to be in a controlled laboratory
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`environment. However, the ’646 patent states that its methods are repeatable in industrial
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`settings: “Similar repeatability could be achieved in an arbitrary industrial batch process.”
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`57:39-40. However, the provisional application on which the ’646 patent claims priority says
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`just the opposite: “Thus, it cannot be guaranteed that similar repeatability could be achieved in
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`an arbitrary industrial process.” Provisional App. No. 60/166,742, filed Nov. 22, 1999 (“the
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`’646 provisional application”). Thus, the ’646 provisional application expressly states that the
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`results cannot be generalized to a range of industrial processes. This language was changed in an
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`apparent attempt to support the broad claims asserted in the ’646 patent. It is apparent that the
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`4844-2821-1989.1
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`10
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 12 of 21 PageID #: 3965
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`original application does not support the general claims set forth in the ’646 patent, and that the
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`inventors did not possess the broad scope of invention claimed in the independent claims of the
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`’646 patent.
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`
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`Throughout the specification of the ’646 patent are further examples where the
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`author of the ’646 patent specification attempted to generalize the narrow invention or even to
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`minimize the inventors’ own counsel that their invention was limited. For example, in the ’646
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`provisional application, the inventors state that they had been unable to stall any “B” tube – a
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`Foxboro Coriolis tube of a particular shape. ’646 provisional app. However, the specification of
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`the ’646 patent deleted the letter “B” and stated instead that “laboratory experiments conducted
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`thus far have been unable to stall a tube of any size with any level of gas phase when controlled
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`by the digital controller 105.” 57:63-65. Likewise, immediately following the portion of the
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`’646 provisional application that corresponds to column 58, line 48, the provisional application
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`states: “However, the correction technique used here is not suitable for applications with much
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`variation in the fluid density, or in three-phase flow applications, for which more research would
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`be necessary.” The ’646 patent specification omits this sentence. The omitted sentence states
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`that the correction techniques are not applicable in all situations, such as where the density is
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`variable or in three-phase flow (which would include many oil and gas situations). However, the
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`asserted claims are not so limited.
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`
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`In short, the ’646 patent does not explain how it continues to measure during the
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`transition from empty to full, and the omitted portions of the ’646 provisional application
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`expressly state that the technique in the patent is not generalizable to industrial applications or
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`where the density is variable or in three-phase flow. Thus, the ’646 patent expressly does not
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`4844-2821-1989.1
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`11
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 13 of 21 PageID #: 3966
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`have a written description or enabling disclosure commensurate with the asserted scope of the
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`claims.
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`
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`In addition, claims 3, 6, 13, and 16 (and claims dependent therefrom) recite a
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`processor configured to determine an apparent flow rate during the transition from empty to full
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`and then to correct the apparent flow rate to obtain the flow rate. This is also not disclosed in the
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`’646 patent specification. While the patent mentions the concept of apparent flow rate in various
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`spots, e.g., in the discussion beginning at column 62, line 61 to column 63, line 62, there is no
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`discussion in the context of the transition from empty to full. Moreover, as noted above, the ’646
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`provisional application specifically says that the correction technique is not generally applicable,
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`in contrast to the broad language of the claims.
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`
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`Further, the phrase “processing devices” may be interpreted as a “means-plus-
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`function” element within the meaning of § 112(f). To the extent that this term is construed to be
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`a means-plus-function element, it is indefinite for lack of corresponding structure. See Aristocrat
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`Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (“In cases
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`involving a computer-implemented invention in which the inventor has invoked means-plus-
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`function claiming, this court has consistently required that the structure disclosed in the
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`specification be more than simply a general purpose computer or microprocessor… . Because
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`general purpose computers can be programmed to perform very different tasks in very different
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`ways, simply disclosing a computer as the structure designated to perform a particular function
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`does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that
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`perform the function, as required by section 112 paragraph 6.”); Net MoneyIN, Inc. v. VeriSign,
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`Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) (“To avoid purely functional claiming in cases
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`involving computer-implemented inventions, we have ‘consistently required that the structure
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`4844-2821-1989.1
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 14 of 21 PageID #: 3967
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`disclosed in the specification be more than simply a general purpose computer or
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`microprocessor.’ … Consequently, a means-plus-function claim element for which the only
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`disclosed structure is a general purpose computer is invalid if the specification fails to disclose
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`an algorithm for performing the claimed function.”) (citing Aristocrat, 521 F.3d at 1333). Not
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`only is there no discussion of the technique for implementing measurement during batching from
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`empty, but there is no code or algorithm disclosed to accomplish this function. In the absence of
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`such a disclosure, the claims are invalid under § 112(b).
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`
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`Finally, certain of the claims of the ’646 patent are invalid for lacking antecedent
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`basis. For example, claim 1 recites “the sensor” in the first phrase following the preamble. “The
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`sensor” finds no antecedent basis. Following introduction of the term “the sensor,” claim 1
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`further recites another “sensor” without providing any distinction between the two sensors: “one
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`or more processing devices coupled to the sensor, the processing devices configured to . . .
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`receive a sensor signal from a sensor coupled to the flowtube.” Neither recited “sensor” is
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`associated with a descriptive adjective, thus, there is not a way to distinguish between the two.
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`Because it cannot be determined which “sensor” is meant in the later recitation in claim 1 to
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`“determine, based on the sensor signal, the flow rate of the flowing liquid,” claim 1 and its
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`dependent claims fail to be claims “particularly pointing out and distinctly claiming the subject
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`matter” as required by § 112(b), and therefore, are invalid.4
`
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`4 For purposes of charting invalidity, the two distinct elements recited as “the sensor” and
`“a sensor” were interpreted as being either the same sensor, or as two interchangeable sensors.
`However, Emerson and Micro Motion do not acquiesce to this construction, and contend that
`claim 1 is invalid for the reasons set forth above.
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`
`
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`
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`Claim 10 similarly lacks antecedent basis and is indefinite under § 112. Claim 10
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`recites “a flowtube to receive a flowing liquid having a flow rate; at least one sensor coupled to
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`the vibratable flowtube.” It is unclear whether “the vibratable flowtube” is a separate element
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`from “a flowtube,” and this lack of clarity appears throughout the entirety of claim 10. For
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`example, claim 10 recites “the sensor generates a sensor signal that is related to an oscillation of
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`the flowtube, at least one driver coupled to the vibratable flowtube, wherein the driver generates
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`a force to oscillate the flowtube . . . send a drive signal to the driver to oscillate the flowtube; . . .
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`a transition of the flowtube from a first state in which the flowtube is substantially empty of the
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`flowing liquid to a second state in which the flowtube is substantially full.” These claim
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`excerpts with interspersed usage of “the flowtube” and “the vibratable flowtube” indicate that the
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`phrases “the flowtube” and “the vibratable flowtube” refer to two separate components. Whether
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`in fact one or two components were intended, claim 10 fails to provide antecedence for “the
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`vibratable flowtube.” Therefore, claim 10 similarly is invalid under § 112(b).5
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`U.S. Patent No. 7,136,761 (“the ’761 patent”)
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`
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`The ’761 patent claims a method or controller for a Coriolis effect flowmeter,
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`including control systems configured, among other things, to “modify the drive signal and
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`thereby maintain oscillation of the flowtube during a transition of the flowtube from a first state
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`in which the flowtube is substantially empty of liquid to a second state in which the flowtube is
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`substantially full of liquid.” It appears that Invensys interprets this claim limitation to cover
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`every Coriolis flowmeter, including analog flowmeters, that modify the drive signal to maintain
`
`
`5 For purposes of charting invalidity, the two distinct elements recited as “the flowtube”
`and “the vibratable flowtube” were interpreted as being the same flowtube. However, Emerson
`and Micro Motion do not acquiesce to this construction, and contend that claim 10 is invalid for
`the reasons set forth above.
`
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`4844-2821-1989.1
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`Case 6:12-cv-00799-JRG Document 126-2 Filed 03/10/14 Page 16 of 21 PageID #: 3969
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`oscillation of the flowtube during the transition from a substantially empty condition to a
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`substantially full condition – so-called “batching from empty.” However, the specification
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`neither enables nor provides an adequate written description of this scope of invention. The
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`discussion above relating to the ’646 patent is incorporated by reference herein. The disclosure
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`in the ’761 patent relating to batching from empty is even skimpier than the disclosure in the
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`’646 patent.
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`
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`The only portions of the ’761 patent that potentially relate to modifying the drive
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`signal during “batching from empty” are Sections J and K of the ’761 patent, which run from
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`column 48 to column 50 of the patent. However, these sections never explain how the Coriolis
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`flowmeter disclosed in the ’761 patent modifies the drive signal to maintain oscillation during
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`batching from empty. The ’761 patent merely describes changing the set point and provides data
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`that purports to show improved performance during batching from empty. The claims are thus
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`invalid for failing to provide an enabling disclosure.
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`
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`Moreover, as noted above, the independent claims of the ’761 patent appear to
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`cover analog Coriolis flowmeters, which is what the ’761 patent is supposed to be an
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`improvement over. It is apparent from the specification of the ’761 patent that the inventors did
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`not believe their invention extended to the control of analog flowmeters during batching from
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`empty. Thus, claims 1-3 and 5-11 are invalid under § 112(a) as failing to provide an adequate
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`written description of the claimed invention.6 Claims 4 and 12 claim a digital control system.
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`These claims appear to claim every digital control system for maintaining oscillation of the
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`flowtube during the transition from empty to full. But, the description in the specification of the
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`6 In addition, as explained in Exhibit B, analog Coriolis flowmeters successfully
`maintained oscillation during the transition from empty to full, so the purported scope of the
`claims would cover the prior art.
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`4844-2821-1989.1
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`’761 patent, which does not provide an enabling disclosure or written description for any digital
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`control system, certainly does not provide an adequate disclosure for every digital control
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`system.
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`
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`Finally, the phrases “input module,” signal processing system,” “output module,”
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`and “control system” may be construed as means-plus-function elements under § 112(f). The
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`specification does not contain adequate disclosure of the specific structure or algorithm to
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`perform these claimed functions. Thus, the claims are invalid as indefinite under § 112(b).
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`U.S. Patent No. 6,311,1