Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 1 of 8 PageID #: 3989
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Plaintiff,
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`vs.
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`INVENSYS SYSTEMS, INC.,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants,
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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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` Case No. 12-CV-00799-LED
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`MICRO MOTION, INC.’S AND EMERSON ELECTRIC CO.’S REPLY IN SUPPORT
`OF THEIR MOTION TO STAY PENDING INTER PARTES REVIEW
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`4840-4218-6777.2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 2 of 8 PageID #: 3990
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`There is little downside to granting a stay pending the PTAB’s resolution of the seven
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`IPR petitions directed to the Invensys asserted patents. The stay will (1) be of limited duration
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`and cause no undue prejudice; (2) yield a more simplified and streamlined litigation to the extent
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`any claims survive IPR; and (3) preserve the resources of the Court and the parties. This motion
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`is not premature or late; it was filed once all the IPR petitions were timely submitted.
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`Invensys’s undue prejudice arguments fail. There is no support for Invensys’s contention
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`that it is entitled to an alleged presumption of undue prejudice because both Invensys and Micro
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`Motion manufacture and sell Coriolis flowmeters. Invensys far overstates the direct competitive
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`status between the parties and entirely ignores other players in the market. Invensys’s excuses
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`regarding its failure to seek a preliminary injunction are equally unpersuasive. Given its delay
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`tactics and that it will have the opportunity to defend its patents in the IPRs (and accelerate the
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`proceedings if it so chooses),1 Invensys’s claim of undue prejudice rings hollow, particularly
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`because there will be a decision from the PTAB on whether all the IPRs will be initiated in no
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`more than five months’ time.
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`Invensys cannot credibly deny that regardless of the outcome before the PTAB, this case
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`will be simplified by the IPR process, which weighs in favor of entering a stay. The case’s
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`procedural posture likewise demands the same result. Contrary to Invensys’s suggestion, the
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`mere passage of time does not mean that this case is “advanced.” In its response, Invensys
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`unfairly exaggerates the extent of discovery that has taken place to justify its position. However,
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`there is far more work to do. Not a single deposition has yet been taken. For these and other
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`reasons presented below, this Court should grant the motion to stay.
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`THE MOTION TO STAY IS APPROPRIATE
`I.
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`1 Thus far, Invensys has chosen not to do so. Despite being able to file sooner, Invensys waited
`until the final days to submit its preliminary responses for the first four IPR petitions.
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`4840-4218-6777.2
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`1
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 3 of 8 PageID #: 3991
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`It is appropriate to stay this case even though the PTAB has yet to decide whether to
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`institute the IPRs. As noted in the initial brief at page 7, courts have granted motions to stay
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`pending IPR before the IPR was instituted. See also Landmark Tech., LLC v. iRobot Corp., No.
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`6:13cv411 JDL, 2014 U.S. Dist. LEXIS 16487 (E.D. Tex. Jan. 24, 2014) (granting motion to stay
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`until the PTAB issued a decision on a petition for covered business method patent review). At a
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`minimum, postponing the litigation until the PTAB decides whether to institute IPR proceedings
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`is warranted. Here, as early as May 19, 2014, and no later than August 12, 2014, the Court and
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`the parties will know whether the IPRs are going forward. The cases in footnote 1 of Invensys’s
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`response do not compel a different result as they are factually distinct.2
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`II.
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`INVENSYS HAS NOT DEMONSTRATED UNDUE PREJUDICE
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`Invensys grossly overstates the competitive relationship, if any, between it and Micro
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`Motion. There is no evidence that the parties compete in the same market and for the same
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`customers. Additionally, the existence of others in the market weakens Invensys’s “direct
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`competitor” argument. See Air Vent, Inc. v. Owens Corning Corp., No. 10-cv-01699, 2012 U.S.
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`Dist. LEXIS 64294, at *11 (W.D. Pa. May 8, 2012). There are several other major competitors
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`and many other minor players, like Invensys, in the U.S. Coriolis flowmeter market.
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`Consequently, Invensys’s reliance on any presumption of undue prejudice is misplaced.
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`Even assuming Invensys and Micro Motion are competitors, this is of no consequence
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`because (1) Invensys has not pursued a preliminary injunction, and/or (2) Invensys waited for
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`years before bringing an infringement action. Zillow, Inc. v. Trulia, Inc., No. C-12-1549-JLR,
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`2013 U.S. Dist. LEXIS 144919, at *21-24 (W.D. Wash. Oct. 7, 2013). Here, Invensys satisfied
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`2 This dense footnote of string cites, like Invensys’s seven other footnotes, should be struck.
`They violate the Local Civil Rules requiring 12-point font. Local Rule CV-10. The use of the
`correct font may put Invensys’s brief over the Court’s page limits.
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`4840-4218-6777.2
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`2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 4 of 8 PageID #: 3992
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`both requirements, which negates any claim of undue prejudice. Invensys admits that it has not
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`pursued a preliminary injunction and that it waited nearly six years to bring this suit. Its excuses
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`attempting to justify its decisions are unpersuasive.
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`First, Invensys’s contention that its decision to hold off on filing a preliminary injunction
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`has been impacted by its inability to inspect a Micro Motion Coriolis flowmeter that uses the
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`Elite CMFS sensor is disingenuous at best. As an initial matter, Micro Motion has offered a
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`visual inspection of its products since at least since December 24, 2013, mere days after Invensys
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`made its request. (Supplemental Declaration of Kadie M. Jelenchick, Ex. P.) More significant,
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`however, is that this flowmeter uses the identical accused enhanced core processor, available
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`since 2006, found in the other accused Micro Motion flowmeters. To the extent Invensys wants
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`to understand how the new Elite CMFS sensor line of products works in combination with the
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`accused enhanced core processor, it could purchase the products for testing (and satisfy its Rule
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`11 obligation), as they are readily available. Invensys refuses to do so, instead insisting that
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`Micro Motion provide Coriolis flowmeters and their components that cost many thousands of
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`dollars for free. Invensys has offered no authority for its position, likely because there is none.
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`Second, regardless of whether Invensys moved for a preliminary injunction, if Invensys
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`ultimately prevails in the IPRs and its patents survive without amendment, provided it proves
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`infringement, Invensys will be awarded damages that accrued during any stay. Invensys failed to
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`offer any rebuttal for this point. Third, Invensys’s delay in bringing suit, purportedly to add
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`later-issued patents, was its choice. There was no requirement for Invensys to wait for its
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`continuation patents to issue.3
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`3 Invensys’s suggestion that knowledge of its patents is imputed to Micro Motion and/or
`Emerson because these patents are identified as prior art in prosecution of Micro Motion and
`Emerson patents is irrelevant to this inquiry. Moreover, such imputation is inappropriate and
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`4840-4218-6777.2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 5 of 8 PageID #: 3993
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`Micro Motion timely filed its IPR petitions within the statutory time frame. See
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`Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. C-13-4513-RMW, 2014 U.S. Dist.
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`LEXIS 26382, at *12 (N.D. Cal. Feb. 28, 2014) (finding no undue prejudice where IPR
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`petitioners filed the petitions properly within the statutory time frame). Under the statutory
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`framework, if and when the petitions are instituted, the PTAB will have until August 2015, or
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`one year, to issue final decisions. Thus, the contemplated stay is not putting this case on
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`“indefinite hold” as Invensys states.
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`III. THE IPR PROCEEDINGS WILL SIMPLIFY THE ISSUES
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`A stay does not require that Micro Motion and Emerson demonstrate that the IPR will
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`likely eliminate the need for litigation entirely, contrary to Invensys’s suggestion. Rather, the
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`relevant inquiry focuses on whether it is likely that the IPR will simplify the issues in the case.
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`See id. at *12 (explaining that the likelihood that the IPR will simplify the case is the standard
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`for weighing this factor). There is no question that the IPRs will do so. As discussed in the
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`initial brief at pages 9-11, the IPRs will focus and streamline the issues, if any, for trial by
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`narrowing the number of asserted claims, lessening the number of claim terms that need
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`interpreting, and/or eliminating prior art references from consideration through statutory
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`estoppel. This is true even if less than all the claims asserted in the IPR are cancelled.
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`Invensys’s speculation that the PTAB will not institute the IPRs based on its self-serving
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`calculations does not change the result. Invensys’s confusing and unsupported statistics should
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`not overshadow the PTAB’s own statistics showing that it overwhelmingly grants petitions for
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`IPR.
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`misleading. See Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir.
`1984) (“We hereby declare the presumption that the inventor has knowledge of all material prior
`art to be dead.”); Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1052 (Fed. Cir. 1995) (refusing to
`impute knowledge of prosecuting attorneys to inventors).
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`4840-4218-6777.2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 6 of 8 PageID #: 3994
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`Invensys’s other arguments on the simplification factor are weak and do not justify
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`denying a stay. Micro Motion and Emerson cannot “retool” their invalidity case with different
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`arguments following the IPRs. Their invalidity positions are detailed in their invalidity
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`contentions, which were served six months ago in September 2013. In addition, proceeding with
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`the IPRs and this litigation in parallel is inefficient. Staying the case now prevents any possibility
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`that the Court and the parties would spend time and resources litigating invalid claims.
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`IV.
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`THE STAGE OF THIS CASE FAVORS A STAY
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`This case is in its early stages. Invensys has not completed its document production
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`despite the December 2, 2013 deadline to do so. E-discovery has not been exchanged. Invensys
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`has refused in certain instances to provide meaningful interrogatory responses, claiming that the
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`request for information is “premature.” No depositions have been taken, and at this point, only
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`one deposition has been scheduled for the end of April 2014. No expert discovery has been
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`started, let alone completed. Claim construction briefing has just begun, with the Markman
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`hearing scheduled for May 1, 2014. Trial is more than 1.5 years away. As explained in the
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`initial brief at page 12, courts have stayed cases that have progressed much further into discovery
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`and claim construction than this case. See also PersonalWeb Techs., LLC v. Facebook, Inc.,
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`Nos. 5:13-CV-01356-EJD; 5:13-CV-01358-EJD; 5:13-CV-01359-EJD, 2014 U.S. Dist. LEXIS
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`4095, at *13-14 (N.D. Cal. Jan. 13, 2014).
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`Moreover, while this case may have been filed sixteen months ago, Invensys’s own delay
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`tactics warrant a stay (and undermine any undue prejudice claim). In addition to waiting nearly
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`six years to bring this suit, Invensys has sought multiple extensions to the case schedule,
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`including an extension to respond to this motion. (Dkt. Nos. 17, 74, 110, 113.) Under these
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`circumstances, a stay is justified and should be granted.
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`4840-4218-6777.2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 7 of 8 PageID #: 3995
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`Respectfully submitted,
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`/s/ Kadie M. Jelenchick
`Linda E.B. Hansen, WI Bar No. 1000660
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Kadie M. Jelenchick, WI Bar No. 1056506
`Matthew J. Shin, WI Bar No. 1090096
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`Phone: (414) 271-2400
`Fax: (414) 297-4900
`Email: lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`Attorneys for Micro Motion, Inc. and
`Emerson Electric Co.
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`6
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`Dated: March 20, 2014
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`Guy N. Harrison, State Bar No. 00000077
`Harrison Law Firm
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`217 N. Center Street
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`Longview, Texas 75601
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`Phone: (903) 758-7361
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`Fax: (903) 753-9557
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`Email: guy@gnhlaw.com
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`4840-4218-6777.2
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`Case 6:12-cv-00799-JRG Document 130 Filed 03/20/14 Page 8 of 8 PageID #: 3996
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 20, 2014, I electronically filed the foregoing
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`document with the Clerk of Court using the CM/ECF system which will send notification of such
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`filing via electronic mail to all counsel of record.
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`4840-4218-6777.2
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