Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 1 of 6 PageID #: 4004
`Case 6:12—cv—00799—JRG Document 131-1 Filed 03/24/14 Page 1 of 6 Page|D #: 4004
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`EXHIBIT 1
`
`EXHIBIT 1
`
`

`
`Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 2 of 6 PageID #: 4005
`
`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 24, 2014
`
`The Honorable Leonard E. Davis
`U.S. District Court, 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:
`
`Defendants launch a scatter-shot attack claiming that dozens of claims in the patents-in-
`suit are indefinite. Because Defendants’ arguments are inconsistent with numerous decisions
`from this Court and others, however, they can be disposed of easily.
`
`I.
`
`The Terms “Input Module,” “Output Module,” and “Processing Device” Are Not
`Means-Plus-Function Claims.
`
`Defendants admit that the terms “input module,” “output module,” and “processing
`device” do not use the word “means” and thus are presumptively not means-plus-function
`limitations. “[T]he presumption flowing from the absence of the term ‘means’ is a strong one
`that is not readily overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
`1358 (Fed. Cir. 2004). Defendants cannot overcome this strong presumption.
`
`A.
`
`The Term “Module” Is Structural.
`
`This Court has repeatedly held that the term “module” is a well understood structural
`term, not a means-plus-function limitation under § 112(f) (formerly § 112 ¶ 6).1 The Court has
`also held that similar software terms do not invoke § 112(f).2 These decisions are consistent with
`cases from many other courts.3
`
`1 See, e.g., Beneficial Innovations, Inc. v. Blockdot, Inc., No. 2:07-CV-263-TJW-CE, 2010 WL
`1441779, at *15-16 (E.D. Tex. Apr. 12, 2010); ROY-G-BIV Corp. v. FANUC Ltd., No. 2:07-
`CV-418 (DF), 2009 WL 2971097, at *26-28 (E.D. Tex. Aug. 25, 2009); C2 Commc’ns Techs.,
`Inc. v. AT&T, Inc., No. 2:06-CV-241, 2008 WL 2462951, at *11 (E.D. Tex. June 13, 2008).
`2 See, e.g., Mirror Worlds, LLC v. Apple, Inc., 742 F. Supp. 2d 875, 888 (E.D. Tex. 2010)
`(“document organizing facility” was a software module and was not a means-plus-function
`limitation); Software Tree, LLC v. Red Hat, Inc., No. 6:09-CV-97, 2010 WL 2232809, at *7
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`Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 3 of 6 PageID #: 4006
`
`The Honorable Leonard E. Davis
`March 24, 2014
`Page Two
`
`The Federal Circuit has also flatly rejected Defendants’ argument that a term that is broad
`or defined in terms of its function is necessarily a means-plus-function limitation: “[I]t is
`sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art
`to designate structure, even if the term covers a broad class of structures and even if the term
`identifies the structures by their function.” Id. at 1359-60.
`In making this determination, the
`Federal Circuit has “looked to the dictionary to determine if a disputed term has achieved
`recognition as a noun denoting structure, even if the noun is derived from the function
`performed.” Id. at 1360. A “module” can consist of software or hardware and is generally
`defined as a structured part of a computer program or a package of electronic components that
`performs a particular task.4 The use of the adjectives “input” and “output” provide further
`structural definition. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1374 (Fed. Cir.
`2003).
`In fact, the terms “input module” and “output module” are at least as concrete as the
`“connector assembly” at issue in Lighting World.5 See 382 F.3d at 1361 (using dictionaries to
`construe “connector assembly” as “a unit that joins, fastens, or links each pair of adjacent
`support members”).
`
`In
`The cases Defendants cite represent a minority view and are readily distinguishable.
`both Ranpak Corp. v. Storopack, Inc., No. 98-1009, 1998 WL 513598, at *2 (Fed. Cir. July 15,
`1998), and Kozam v. Phase Forward, Inc., Civ. No. MJG-04-1787, 2005 WL 6218037, at *7 (D.
`Md. Aug. 29, 2005), the module terms corresponded to means terms found in other claims and
`In addition, Ranpak is an unpublished, non-precedential
`were given the same construction.
`decision that predates Lighting World by approximately six years and contains little analysis.
`Williamson largely followed Ranpak. See Civil Minutes—General at 24, Williamson v. Citrix
`Online LLC, No. 2:11-cv-2409-AHM-JEM (C.D. Cal. Sept. 4, 2012), ECF No. 353.
`
`(E.D. Tex. June 1, 2010) (“database interface unit” was a module and was not a means-plus-
`function limitation); see also Inventio AG v. ThyssenKrupp Elevator Americas, Corp., 649
`F.3d 1350, 1359-60 (Fed. Cir. 2011) (“computing unit” was not a means-plus-function
`limitation).
`3 See, e.g., Wi-LAN USA, Inc. v. Alcatel-Lucent USA, Inc., No. 12-23568-CIV, 2013 WL
`4811233, at *42 (S.D. Fla. Sept. 9, 2013); ePlus, Inc. v. Lawson Software, Inc., No. 3:09cv620,
`2010 WL 1779973, at *18-19 (E.D. Va. Apr. 30, 2010); PalmTop Prods., Inc. v. Lo-Q plc, 450
`F. Supp. 2d 1344, 1364-65 (N.D. Ga. 2006).
`4 See, e.g., MICROSOFT COMPUTER DICTIONARY 295 (4th ed. 1999);
`IEEE STANDARD
`DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS 662-61 (6th ed. 1997); MCGRAW-HILL
`DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1285 (5th ed. 1994).
`5 In addition, although the term “module” does not appear in the specification, the specification
`does describe devices that correspond to the claimed “input” and “output modules.” See ‘761
`Pat. 11:48-51, 12:5-52 (input module); id. at 11:52-12:4 (output module).
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`Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 4 of 6 PageID #: 4007
`
`The Honorable Leonard E. Davis
`March 24, 2014
`Page Three
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`B.
`
`The Term “Processing Device” Refers to a Processor.
`
`As an initial matter, although Defendants fixate on the word “device,” the phrase in
`dispute is “processing device.” It would be error to consider the term “device” in isolation from
`the rest of the claim. See Apex, 325 F.3d at 1372 (holding that the district court incorrectly
`interpreted the term “circuit” as a means-plus-function claim because it failed to consider the
`limitation as a whole (i.e., “a first interface circuit for receiving keyboard and cursor control
`device signals from the workstation”)). The phrase “processing device” simply refers to a
`processor (which is described in detail
`throughout
`the ‘646 patent’s specification). A
`“processor” is a well-understood structure, that is, a microprocessor or CPU.6 This Court has
`also held that the term “processor” is not a means-plus-function claim. See Motorola, Inc. v.
`VTech Commc’ns, Inc., No. 5:07CV171, 2009 WL 2026317, at *16 (E.D. Tex. July 6, 2009).
`Many other courts have reached the same conclusion.7
`
`II.
`
`The Terms “Determine the Flowrate,” “Maintains Oscillation,” and “System
`Disturbance” Are Not Ambiguous.
`
`A.
`
`Particular Elements of a Patented Invention Do Not Have to be Distinct from
`the Prior Art.
`
`Defendants appear to argue that the terms “determine the flowrate during a transition”
`and “maintains oscillation during a transition” are indefinite if they are not construed in a way
`that distinguishes them from the prior art. Not every element of a patented invention must be
`new, however. See Intel Corp. v. ITC, 946 F.2d 821, 842 (Fed. Cir. 1991) (“Claim limitations
`may, and often do, read on the prior art, particularly in combination patents.”).8 Thus, even if the
`terms “determine the flowrate” and “maintains oscillation” do partially read on the prior art, that
`does not make them indefinite.
`
`6 See, e.g., MICROSOFT COMPUTER DICTIONARY 359 (4th ed. 1999);
`IEEE STANDARD
`DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS 823 (6th ed. 1997); MCGRAW-HILL
`DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1582 (5th ed. 1994).
`7 See, e.g., FitnessAge Servs., Inc. v. Polar Electro, Inc., No. 2:11-cv-1444-MMD-GWF, 2014
`WL 551335, at *5 (D. Nev. Feb. 10, 2014); Wi-LAN USA, Inc. v. Alcatel-Lucent USA, Inc.,
`No. 12-23568-CIV, 2013 WL 4811233, at *40-42 (S.D. Fla. Sept. 9, 2013); Aguayo v.
`Universal Instruments Corp., Civ. No. H-02-1747, 2003 WL 25787593, at *12 (S.D. Tex. June
`9, 2003).
`8 In fact, every element of the invention could have existed in the prior art. See id. (“ ‘That all
`elements of an invention may have been old (the normal situation), or some old and some new,
`or all new, is however, simply irrelevant. Virtually all inventions are combinations and
`virtually all are combinations of old elements.’ ” (quoting Envt’l Designs, Ltd. v. Union Oil
`Co., 713 F.2d 693, 698 (Fed. Cir. 1983))).
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`Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 5 of 6 PageID #: 4008
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`The Honorable Leonard E. Davis
`March 24, 2014
`Page Four
`
`Moreover, the bulk of the specifications of the patents-in-suit is devoted to describing
`how to “determine the flowrate” and “maintain oscillation.” This includes numerous examples
`as well as test results demonstrating the improved accuracy and performance of the patented
`digital drive Coriolis flowmeters over prior art analog flowmeters. These detailed disclosures
`belie any claim that skilled artisans could not ascertain the parameters of these terms.
`In
`addition, it is well settled that a term is not indefinite merely because it cannot be defined with
`mathematical precision.9 Thus, to the extent Defendants argue that the terms “determine the
`flowrate” and “maintains oscillation” are indefinite because they allow some margin for
`interpretation, Defendants’ argument is foreclosed by precedent.
`
`B.
`
`The Meaning of “System Disturbance” Is Explained in the ‘854 Patent’s
`Specification and Well Understood in the Industry.
`
`Defendants’ statement that the ‘854 patent does nothing to explain what constitutes a
`“system disturbance,” beyond equating it with instability in the flowmeter’s measurements, is
`inaccurate. To the contrary, the ‘854 patent provides several examples of a system disturbance:
`“For example, there may be some external disturbance to the system, or there may be some
`unanticipated object/material that flows through the flowtube. As another example, conditions
`such as two-phase flow and/or three-phase flow, particularly if initiated quickly or unexpectedly,
`might degrade or interrupt an operation of the flowmeter.” ‘854 Pat. 29:19-24. Moreover, users
`of prior art analog Coriolis flowmeters were well aware of their deficiencies and the problems
`the patented invention solved. See Jim Reizner, Procter & Gamble Co., Coriolis—the Almost
`Perfect Flow Meter at 14 (Ex. A to Pl.’s Opening Claim Constr. Br.) (“90% or 95% of non-
`hardware Coriolis problems are due to entrained gas.”); see also Rebekkah Marshall, Cash in on
`Flowmeter Innovation, CHEM ENG’G 25, 27 (Mar. 2003) (Ex. B to Pl.’s Opening Claim Constr.
`Br.) (“Two-phase flow is ‘one of the Holy Grails’ of Coriolis measurement, says Micro Motion’s
`O’Banion.”). This is sufficient to defeat Defendants’ indefiniteness argument. See Hearing
`Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366-68 (Fed. Cir. 2010) (examples in the
`specification rendered the claims sufficiently definite); Kinetic Concepts, Inc. v. Blue Sky Med.
`Group, Inc., 554 F.3d 1010, 1022 (Fed. Cir. 2009) (no indefiniteness when the specification
`provided examples and there was evidence that skilled artisans would understand the claims).
`
`III.
`
`Halliburton Has Been Overruled by Statute.
`
`The Federal Circuit has expressly held that Halliburton Oil Well Cementing Co. v.
`Walker, 329 U.S. 1 (1946), has been overruled by statute. See In re Donaldson Co., 16 F.3d
`1189, 1194 (Fed. Cir. 1994) (en banc); see also In re Fuetterer, 319 F.2d 259, 264 n.11
`(C.C.P.A. 1963). Since Defendants candidly admit that they are raising this argument only to
`
`9 See, e.g., Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010);
`Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005); Exxon Research
`& Eng’g Co. v. United States, 265 F.3d 1371, 1381 (Fed. Cir. 2001).
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`Case 6:12-cv-00799-JRG Document 131-1 Filed 03/24/14 Page 6 of 6 PageID #: 4009
`
`The Honorable Leonard E. Davis
`March 24, 2014
`Page Five
`
`preserve it for appeal, Invensys will not address it further at this time, but reserves the right to do
`so in the future, if necessary.
`
`IV.
`
`The Patents-in-Suit Do Not Impermissibly Combine System and Method Claims.
`
`It is well-settled that claim elements that merely describe the capabilities of the claimed
`See Microprocessor
`system do not
`improperly mix system and method limitations.
`Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008).10 Generally,
`a claim only improperly combines system and method limitations when it contains elements that
`require the user of the system to take some action. See id.; see also supra note 10. All the terms
`about which Defendants complain simply set forth the capabilities of the claimed system and do
`not require the user of the patent Coriolis flowmeter to do anything. For example, the phrase
`“wherein the control and measurement system uses digital processing to adjust a phase of the
`drive signal” logically and grammatically refers to the capabilities of the “control and
`measurement system,” not a user-required action.11
`In contrast, in IPXL Holdings, L.L.C. v.
`Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), the system claims stated that “the user
`uses the input means,” thus expressly requiring action by the system’s operator. Similarly, the
`patented system in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318
`(Fed. Cir. 2011), required that “callers digitally enter data.” Finally, in Rembrandt Data
`Technologies, LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011), the last element of the
`apparatus claim (“transmitting the trellis encoded frames”) was not clearly linked to any
`particular part of the device and was therefore held to be a method step.
`In contrast, all the
`limitations Defendants claim are indefinite are directly tied to a specific device or component.
`
`For the foregoing reasons, Invensys requests that the Court refuse to give Defendants
`permission to file a summary judgment motion on indefiniteness.
`
`Very truly yours,
`
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`
`cc:
`
`All Counsel of Record (via ECF)
`
`10 See also, e.g., SFA Sys., LLC v. 1-800-Flowers.com, Inc., 940 F. Supp. 2d 433, 454-55 (E.D.
`Tex. 2013); WesternGeco L.L.C. v. ION Geophysical Corp., 876 F. Supp. 2d 857, 873-74, 885-
`86 (S.D. Tex. 2012); Eolas Techs., Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 812-14 (E.D.
`Tex. 2011).
`11 In fact, since human beings are not capable of “digital processing,” this limitation can only
`refer to the “control and measurement system.”
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