Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 1 of 18 PageID #: 4025
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`Case No. 6:12-cv-00799-LED
`
`INVENSYS SYSTEMS, INC.,
`
`Plaintiff,
`
`vs.
`
`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
`
`Defendants.
`
`and
`
`MICRO MOTION INC., USA,
`
`Counterclaim-Plaintiff,
`
`vs.
`
`INVENSYS SYSTEMS, INC.,
`
`Counterclaim-Defendant.
`
`[PROPOSED] LETTER OF REQUEST TO THE CENTRAL AUTHORITY OF THE
`UNITED KINGDOM FOR INTERNATIONAL JUDICIAL ASSISTANCE PURSUANT
`TO THE HAGUE CONVENTION OF 18 MARCH 1970 ON THE TAKING OF
`EVIDENCE ABROAD IN CIVIL OR COMMERCIAL MATTERS
`
`4843-6222-0313.1
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 2 of 18 PageID #: 4026
`
`Pursuant to Article 3 of the Hague Convention of March 18, 1970 on the Taking of
`
`Evidence Abroad in Civil or Commercial Matters, the undersigned applicant submits this
`
`Request on behalf of Emerson Electric Co. and Micro Motion, Inc. in the above-captioned case.
`
`The United States District Court for the Eastern District of Texas presents its compliments to the
`
`judicial authorities of the United Kingdom and requests international judicial assistance to obtain
`
`evidence, as detailed herein, to be used in a civil proceeding before this Court.
`
`i.
`
`Sender:
`
`The Honorable Leonard Davis
`United States District Judge
`United States District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, Texas 75702
`U.S.A.
`
`ii.
`
`Central Authority of the Requested State:
`
`The Senior Master
`For the attention of the Foreign Process Section
`Room E16
`Royal Courts of Justice
`Strand
`London WC2A 2LL
`United Kingdom
`Telephone: +44 207 947 6691
`Fax: +44 870 324 0025
`Email: foreignprocess.rcj@hmcts.gsi.gov.uk
`
`iii.
`
`Person to whom the executed request is to be returned:
`
`Kadie M. Jelenchick, Esq.
`c/o Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`U.S.A.
`Telephone: (414) 271-2400
`Fax: (414) 297-4900
`Email: kjelenchick@foley.com
`
`4843-6222-0313.1
`
`2
`
`

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`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 3 of 18 PageID #: 4027
`
`Emerson Electic Co.’s and Micro Motion, Inc.’s U.S. Legal Representative
`
`on behalf of:
`
`The Honorable Leonard Davis
`United States District Judge
`United States District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, Texas 75702
`U.S.A.
`
`iv.
`
`v.
`
`Specification of the date by which the Requesting Authority requires receipt of the
`response to the Letter of Request:
`
`As soon as practicable.
`
`In conformity with Article 3 of the Convention, the undersigned applicant has the
`honor to submit the following:
`
`a.
`
`Requesting judicial authority:
`
`The Honorable Leonard Davis
`United States District Judge
`United States District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, Texas 75702
`U.S.A.
`
`b.
`
`To the competent authority of:
`
`The Senior Master
`For the attention of the Foreign Process Section
`Room E16
`Royal Courts of Justice
`Strand
`London WC2A 2LL
`United Kingdom
`Telephone: +44 207 947 6691
`Fax: +44 870 324 0025
`Email: foreignprocess.rcj@hmcts.gsi.gov.uk
`
`4843-6222-0313.1
`
`3
`
`

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`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 4 of 18 PageID #: 4028
`
`vi.
`
`Names and addresses of the parties and their representatives:
`
`Party
`
`Invensys Systems, Inc.
`10900 Equity Drive
`Houston, Texas 77041
`U.S.A.
`
`Emerson Electric Co.
`8000 West Florissant Avenue
`St. Louis, Missouri 63136
`U.S.A.
`
`Micro Motion, Inc.
`7070 Winchester Circle
`Boulder, Colorado 80301
`U.S.A.
`
`4843-6222-0313.1
`
`4
`
`Representatives
`
`Claudia Wilson Frost
`Jeffrey L. Johnson
`Dawn M. Jenkins
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, Texas 77002
`U.S.A.
`Telephone: (713) 425-8400
`Fax: (713) 425-8401
`
`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110
`U.S.A.
`Telephone: (617) 406-6000
`Fax: (617) 406-6100
`
`Todd S. Patterson
`Courtney P. Stewart
`DLA PIPER LLP
`401 Congress Avenue, Suite 2500
`Austin, Texas 75701
`U.S.A.
`Telephone: (512) 457-7017
`Fax: (512) 721-2217
`
`Linda E.B. Hansen
`Richard S. Florsheim
`Jeffrey N. Costakos
`Kadie M. Jelenchick
`Matthew J. Shin
`FOLEY & LARDNER LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`U.S.A.
`Telephone: (414) 271-2400
`Fax: (414) 297-4900
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 5 of 18 PageID #: 4029
`
`Guy N. Harrison
`HARRISON LAW FIRM
`217 North Center Street
`Longview, Texas 75601
`U.S.A.
`Telephone: (903) 758-7361
`Fax: (903) 753-9557
`
`Adrian Toutoungi
`EVERSHEDS LLP
`1 Wood Street
`London
`EC2V 7WS
`United Kingdom
`Telephone: +44 20 7919 4500
`Fax: +44 20 7919 4919
`
`vii.
`
`Nature and purpose of the proceedings and summary of the facts:
`
`This is a patent infringement case pending in the United States District Court for the
`
`Eastern District of Texas, Case No. 6:12-cv-00799-LED.
`
`Plaintiff and Counterclaim-Defendant
`
`Invensys Systems,
`
`Inc.
`
`(“Invensys”) and
`
`Defendant and Counterclaim-Plaintiff Micro Motion, Inc. (“Micro Motion”) manufacture and
`
`sell Coriolis flowmeters, which are devices used to measure the mass of liquid flowing through a
`
`tube. On October 22, 2012, Invensys filed a complaint in the aforementioned District Court
`
`against Micro Motion and its parent company Emerson Electric Co.
`
`(“Emerson”)
`
`for
`
`infringement of four U.S. Patents (Nos. 7,124,646, 7,136,761, 6,311,136, and 7,505,854).
`
`Invensys subsequently amended its complaint to include allegations that Micro Motion and
`
`Emerson infringe three additional U.S. Patents (Nos. 6,754,594, 7,571,062, and 8,000,906).
`
`Each of Invensys’s asserted patents concerns digital flowmeter technology relating to mass
`
`measurement devices such as Coriolis flowmeters.
`
`4843-6222-0313.1
`
`5
`
`

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`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 6 of 18 PageID #: 4030
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`Micro Motion has asserted counterclaims against Invensys for a declaratory judgment of
`
`non-infringement and invalidity of
`
`Invensys’s asserted patents, and a counterclaim for
`
`infringement of two of its U.S. Patents (Nos. 5,555,190 and 6,505,131), which also relate to
`
`digital flowmeter technology.
`
`Emerson has filed a motion for summary judgment of non-infringement on the grounds
`
`that Emerson does not make, use, offer to sell, sell, import, or repair any of the accused products
`
`and it is party to the lawsuit solely on account of its status as a parent company.
`
`Micro Motion has filed with the U.S. Patent and Trademark Office petitions for Inter
`
`Partes Review (“IPR”) of each of the seven patents asserted by Invensys. The petitions allow the
`
`U.S. Patent Trial and Appeal Board to evaluate the validity of the Invensys patents on the basis
`
`of prior art. Micro Motion and Emerson have filed a motion with the District Court to stay the
`
`litigation pending the IPR proceedings.
`
`The parties are preparing for a claim construction hearing that is scheduled for May 1,
`
`2014. The parties are also in the midst of the discovery process, which is scheduled to close on
`
`July 16, 2014. A jury trial is scheduled for October 13, 2015.
`
`viii.
`
`Evidence to be obtained:
`
`Emerson and Micro Motion submit this Letter of Request for the purpose of obtaining
`
`testimony and documents from certain named inventors of the Invensys patents and their
`
`employer, the University of Oxford. Each of the examination topics and document categories set
`
`forth below are directly relevant to the inventorship and chain-of-title of the Invensys patents
`
`which are being asserted against Emerson and Micro Motion in this lawsuit.
`
`4843-6222-0313.1
`
`6
`
`

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`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 7 of 18 PageID #: 4031
`
`ix.
`
`Identity and address of persons to be examined:
`
`a.
`
`Persons to be examined and from which documents are requested:
`
`Manus Henry
`86 Stauntaon Road
`Oxford
`OX3 7TR
`United Kingdom
`
`David W. Clarke
`98 Old Road
`Headington
`Oxford
`OX3 8SX
`United Kingdom
`
`Mayela E. Zamora
`The Institute of Biomedical Engineering
`Department of Engineering Science
`Old Road Campus Research Building
`University of Oxford
`Headington
`Oxford
`OX3 7DQ
`United Kingdom
`
`b.
`
`Persons from which documents are requested:
`
`University of Oxford
`University Offices
`Wellington Square
`Oxford
`OX1 2JD
`United Kingdom
`Telephone: +44 1865 270000
`Fax: +44 1865 270708
`
`4843-6222-0313.1
`
`7
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 8 of 18 PageID #: 4032
`
`x.
`
`Statement of the subject matter about which the identified persons are to be
`examined:
`
`a.
`
`Manus Henry:
`
`1)
`experience,
`qualifications,
`to witness
`relating
`questions
`Introductory
`circumstances under which witness learned of the request for his testimony and the preparation
`for testimony.
`
`2)
`English Court.
`
`Documents produced pursuant to the Letter of Request and the Order of the
`
`3)
`Henry’s terms and scope of his employment with The Chancellor, Masters and
`Scholars of the University of Oxford or any affiliate, subsidiary, or department (collectively,
`“Oxford”).
`
`4)
`The facts and circumstances surrounding whether the terms of Oxford’s Statute(s)
`and Regulation(s) relating to the 1980 IP Policy (including amendments) were incorporated into
`Henry’s employment agreement.
`
`5)
`Henry’s ordinary duties as a researcher for Oxford, and an identification of
`what—including what invention(s)—was or were reasonably expected to result from those
`duties.
`
`6)
`The witness’s duties that were specially assigned to him by Oxford, and an
`identification of what—including what invention(s)—was or were reasonably expected to result
`from those duties.
`
`7)
`The witness’s understanding of any “special obligations” he owed to Oxford to
`further its interests.
`
`8)
`Facts and circumstances surrounding whether Henry was “employed to invent,”
`including whether he had a duty to invent.
`
`9)
`surrounding the witness’s affiliation with the
`and circumstances
`Facts
`Engineering and Physical Sciences Research Council (“EPSRC”) with respect to the specific
`research projects in question, which gave rise to the Invensys Patents.
`
`10)
`Facts and circumstances surrounding the witness’s affiliation with the University
`Technology Centre for Advanced Instrumentation (“UTC”) with respect to the specific research
`projects in question, which gave rise to the Invensys Patents.
`
`11)
`The substance of any agreements and/or assignments between Henry and
`Invensys or any affiliate, subsidiary, or predecessor thereof, including The Foxboro Company,
`(collectively “Invensys”), particularly with respect to intellectual property rights and/or the
`subject matter of Henry’s work or research as it related or relates to U.S. Patent Nos. 7,124,646,
`7,136,761, 6,311,136, 7,505,854, 6,754,594, 7,571,062, and 8,000,906 (“the Invensys Patents”),
`Coriolis flowmeters, or technology involving the same.
`
`4843-6222-0313.1
`
`8
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 9 of 18 PageID #: 4033
`
`12)
`The substance of any agreements and/or assignments between Henry and Oxford,
`particularly with respect to intellectual property rights and/or the subject matter of Henry’s work
`or research as it related or relates to the Invensys Patents, Coriolis flowmeters, or technology
`involving the same.
`
`13)
`The substance of any agreements and/or assignments between Oxford and
`Invensys, particularly with respect to intellectual property rights and/or the subject matter of the
`Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`14)
`The substance of any consents relating to any assignments to any patents or patent
`applications embodying the claimed inventions in the Invensys Patents.
`
`15)
`Facts and circumstances surrounding the sponsorship or funding of Henry’s work
`or research, including the extent it was supported in whole or part by Invensys, EPSRC, UTC,
`and/or any other entity or external body, and the substance of any agreements relating thereto
`with respect to the specific research projects in question, which gave rise to the Invensys Patents.
`
`16)
`
`The terms and scope of Henry’s consultancy services provided to Invensys.
`
`17)
`Detailed identification of the contributions made by the witness to the inventive
`concepts of each invention described in the Invensys Patents.
`
`18)
`Detailed identification of the contributions made by the witness to the reduction to
`practice of each invention described in the Invensys Patents.
`
`19)
`The facts and circumstances surrounding the witness’s assignment of rights in the
`Invensys Patents to Invensys.
`
`20)
`The receipt of consideration by the witness for his assignment of rights in the
`Invensys Patents to Invensys.
`
`21)
`
`The dates the witness was first employed and/or enrolled at Oxford.
`
`22)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`23)
`The witness’s practices in recording and maintaining records memorializing work
`or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving the
`same.
`
`24)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`25)
`recovery the witness may recover
`Any award, settlement, or
`infringement action relating to the Invensys Patents.
`
`from any
`
`4843-6222-0313.1
`
`9
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 10 of 18 PageID #: 4034
`
`b.
`
`David W. Clark:
`
`1)
`experience,
`qualifications,
`to witness
`relating
`questions
`Introductory
`circumstances under which witness learned of the request for his testimony and the preparation
`for testimony.
`
`2)
`English Court.
`
`Documents produced pursuant to the Letter of Request and the Order of the
`
`3)
`The witness’s ordinary duties as an employee/student of Oxford, and an
`identification of what—including what invention(s)—was or were reasonably expected to result
`from those duties.
`
`4)
`The witness’s duties that were specially assigned to him by Oxford, and an
`identification of what—including what invention(s)—was or were reasonably expected to result
`from those duties.
`
`5)
`The witness’s understanding of any “special obligations” he owed to Oxford to
`further its interests.
`
`6)
`Facts and circumstances surrounding the witness’s affiliation with the EPSRC
`with respect to the specific research projects in question, which gave rise to the Invensys Patents.
`
`7)
`Facts and circumstances surrounding the witness’s affiliation with the UTC with
`respect to the specific research projects in question, which gave rise to the Invensys Patents.
`
`8)
`The substance of any agreements and/or assignments between Oxford and
`Invensys, particularly with respect to intellectual property rights and/or the subject matter of the
`Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`9)
`The substance of any consents relating to any assignments to any patents or patent
`applications embodying the claimed inventions in the Invensys Patents.
`
`10)
`Detailed identification of the contributions made by the witness to the inventive
`concepts of each invention described in the Invensys Patents.
`
`11)
`Detailed identification of the contributions made by the witness to the reduction to
`practice of each invention described in the Invensys Patents.
`
`12)
`The facts and circumstances surrounding the witness’s assignment of rights in the
`Invensys Patents to Invensys.
`
`13)
`The receipt of consideration by the witness for his assignment of rights in the
`Invensys Patents to Invensys.
`
`14)
`
`The dates the witness was first employed and/or enrolled at Oxford.
`
`4843-6222-0313.1
`
`10
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 11 of 18 PageID #: 4035
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`15)
`The dates and scope of the witness’s affiliation with Henry and his work or
`research as it related or relates to the Invensys Patents, Coriolis flowmeters, or technology
`involving the same.
`
`16)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`17)
`The witness’s practices in recording and maintaining records memorializing work
`or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving the
`same.
`
`18)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`19)
`recovery the witness may recover
`Any award, settlement, or
`infringement action relating to the Invensys Patents.
`
`from any
`
`c.
`
`Mayela E. Zamora:
`
`1)
`experience,
`qualifications,
`to witness
`relating
`questions
`Introductory
`circumstances under which witness learned of the request for her testimony and the preparation
`for testimony.
`
`2)
`English Court.
`
`Documents produced pursuant to the Letter of Request and the Order of the
`
`3)
`The witness’s ordinary duties as an employee/student of Oxford, and an
`identification of what—including what invention(s)—was or were reasonably expected to result
`from those duties.
`
`4)
`The witness’s duties that were specially assigned to her by Oxford, and an
`identification of what—including what invention(s)—was or were reasonably expected to result
`from those duties.
`
`5)
`The witness’s understanding of any “special obligations” she owed to Oxford to
`further its interests.
`
`6)
`Facts and circumstances surrounding the witness’s affiliation with the EPSRC
`with respect to the specific research projects in question, which gave rise to the Invensys Patents.
`
`7)
`Facts and circumstances surrounding the witness’s affiliation with the UTC with
`respect to the specific research projects in question, which gave rise to the Invensys Patents.
`
`8)
`The substance of any agreements and/or assignments between Oxford and
`Invensys, particularly with respect to intellectual property rights and/or the subject matter of the
`Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`9)
`The substance of any consents relating to any assignments to any patents or patent
`applications embodying the claimed inventions in the Invensys Patents.
`
`4843-6222-0313.1
`
`11
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 12 of 18 PageID #: 4036
`
`10)
`Detailed identification of the contributions made by the witness to the inventive
`concepts of each invention described in the Invensys Patents.
`
`11)
`Detailed identification of the contributions made by the witness to the reduction to
`practice of each invention described in the Invensys Patents.
`
`12)
`The facts and circumstances surrounding the witness’s assignment of rights in the
`Invensys Patents to Invensys.
`
`13)
`The receipt of consideration by the witness for her assignment of rights in the
`Invensys Patents to Invensys.
`
`14)
`
`The dates the witness was first employed and/or enrolled at Oxford.
`
`15)
`The dates and scope of the witness’s affiliation with Henry and his work or
`research as it related or relates to the Invensys Patents, Coriolis flowmeters, or technology
`involving the same.
`
`16)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`17)
`The witness’s practices in recording and maintaining records memorializing work
`or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving the
`same.
`
`18)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`19)
`recovery the witness may recover
`Any award, settlement, or
`infringement action relating to the Invensys Patents.
`
`from any
`
`xi.
`
`Documents or other property to be inspected:
`
`a.
`
`Oxford University:
`
`1)
`All written employment agreements and/or contracts between the listed inventors
`of the Invensys Patents and Oxford and any amendments and renewals thereof.
`
`2)
`All written agreements and/or assignments between the listed inventors of the
`Invensys Patents and Oxford that address the issue of intellectual property.
`
`3)
`amendments).
`
`4)
`amendments).
`
`5)
`amendments).
`
`Oxford’s Statute(s) and Regulation(s) relating to the 1980 IP Policy (including
`
`Oxford’s Statute(s) and Regulation(s) relating to the 1995 IP Policy (including
`
`Oxford’s Statute(s) and Regulation(s) relating to the 2000 IP Policy (including
`
`4843-6222-0313.1
`
`12
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 13 of 18 PageID #: 4037
`
`6)
`All agreements and/or assignments between Oxford and Invensys that address the
`issue of intellectual property relating to the listed inventors of the Invensys Patents’ work or
`research regarding the Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`7)
`All agreements relating to Invensys’s sponsorship or funding of Oxford work or
`research relating to the Invensys Patents, Coriolis flowmeters, or technology involving the same,
`including that of UTC, EPSRC, or any other entity or external body.
`
`8)
`All agreements relating to Invensys’s sponsorship or funding of the listed
`inventors of the Invensys Patents’ work or research relating to the Invensys Patents, Coriolis
`flowmeters, or technology involving the same.
`
`9)
`All agreements between the listed inventors of the Invensys Patents and Invensys,
`including consultancy agreements and any agreements relating to ownership, funding, licensing,
`and/or intellectual property relating to the Invensys Patents, Coriolis flowmeters, or technology
`involving the same.
`
`10)
`
`All assignments relating to the Invensys Patents.
`
`11)
`All consents relating to any assignments to any patents or patent applications
`embodying the claimed inventions in the Invensys Patents.
`
`12)
`
`13)
`
`14)
`
`15)
`
`16)
`
`Fuente.
`
`All records of the employment and enrollment at Oxford of Manus Henry.
`
`All records of the employment and enrollment at Oxford of David W. Clarke.
`
`All records of the employment and enrollment at Oxford of Mayela E. Zamora.
`
`All records of the employment and enrollment at Oxford of James H. Vignos.
`
`All records of the employment and enrollment at Oxford of Maria Jesus De La
`
`17)
`Documents sufficient to describe the relationship between Oxford, UTC, and
`EPSRC as it relates to the Invensys Patents.
`
`18)
`the market.
`
`All documents relating to the introduction of Invensys’s Coriolis flowmeters into
`
`19)
`Lab notebooks or other records relating to the Invensys Patents or work or
`research relating to the conception and/or reduction to practice of the same.
`
`20)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`21)
`Oxford’s practices in/for recording and maintaining records memorializing work
`or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving the
`same.
`
`4843-6222-0313.1
`
`13
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 14 of 18 PageID #: 4038
`
`22)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`23)
`All documents relating to any award, settlement, or recovery Oxford may recover
`from any infringement action relating to the Invensys Patents.
`
`24)
`Identification
`aforementioned documents.
`
`b.
`
`Manus Henry:
`
`of
`
`an Oxford
`
`representative who
`
`can
`
`authenticate
`
`the
`
`1)
`All written employment agreements and/or contracts between the witness and
`Oxford and any amendments and renewals thereof.
`
`2)
`All written agreements and/or assignments between the witness and Oxford that
`address the issue of intellectual property.
`
`3)
`All agreements and/or assignments between Oxford and Invensys that address the
`issue of intellectual property relating to the witness’s work or research regarding the Invensys
`Patents, Coriolis flowmeters, or technology involving the same.
`
`4)
`All agreements relating to Invensys’s sponsorship or funding of the witness’s
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`5)
`including consultancy
`All agreements between the witness and Invensys,
`agreements and any agreements relating to ownership, funding, licensing, and/or intellectual
`property relating to the Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`6)
`
`All assignments relating to the Invensys Patents.
`
`7)
`All consents relating to any assignments to any patents or patent applications
`embodying the claimed inventions in the Invensys Patents.
`
`8)
`
`All records of the witness’s employment and enrollment at Oxford.
`
`9)
`the market.
`
`All documents relating to the introduction of Invensys’s Coriolis flowmeters into
`
`10)
`Lab notebooks or other records relating to the Invensys Patents or work or
`research relating to the conception and/or reduction to practice of the same.
`
`11)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`12)
`The witness’s practices in/for recording and maintaining records memorializing
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`13)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`4843-6222-0313.1
`
`14
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 15 of 18 PageID #: 4039
`
`14)
`All documents relating to any award, settlement, or recovery the witness may
`recover from any infringement action relating to the Invensys Patents.
`
`c.
`
`David W. Clark:
`
`1)
`All written employment agreements and/or contracts between the witness and
`Oxford and any amendments and renewals thereof.
`
`2)
`All written agreements and/or assignments between the witness and Oxford that
`address the issue of intellectual property.
`
`3)
`All agreements and/or assignments between Oxford and Invensys that address the
`issue of intellectual property relating to the witness’s work or research regarding the Invensys
`Patents, Coriolis flowmeters, or technology involving the same.
`
`4)
`All agreements relating to Invensys’s sponsorship or funding of the witness’s
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`5)
`including consultancy
`All agreements between the witness and Invensys,
`agreements and any agreements relating to ownership, funding, licensing, and/or intellectual
`property relating to the Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`6)
`
`All assignments relating to the Invensys Patents.
`
`7)
`All consents relating to any assignments to any patents or patent applications
`embodying the claimed inventions in the Invensys Patents.
`
`8)
`
`All records of the witness’s employment and enrollment at Oxford.
`
`9)
`the market.
`
`All documents relating to the introduction of Invensys’s Coriolis flowmeters into
`
`10)
`Lab notebooks or other records relating to the Invensys Patents or work or
`research relating to the conception and/or reduction to practice of the same.
`
`11)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`12)
`The witness’s practices in/for recording and maintaining records memorializing
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`13)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`14)
`All documents relating to any award, settlement, or recovery the witness may
`recover from any infringement action relating to the Invensys Patents.
`
`4843-6222-0313.1
`
`15
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 16 of 18 PageID #: 4040
`
`d.
`
`Mayela E. Zamora:
`
`1)
`All written employment agreements and/or contracts between the witness and
`Oxford and any amendments and renewals thereof.
`
`2)
`All written agreements and/or assignments between the witness and Oxford that
`address the issue of intellectual property.
`
`3)
`All agreements and/or assignments between Oxford and Invensys that address the
`issue of intellectual property relating to the witness’s work or research regarding the Invensys
`Patents, Coriolis flowmeters, or technology involving the same.
`
`4)
`All agreements relating to Invensys’s sponsorship or funding of the witness’s
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`5)
`including consultancy
`All agreements between the witness and Invensys,
`agreements and any agreements relating to ownership, funding, licensing, and/or intellectual
`property relating to the Invensys Patents, Coriolis flowmeters, or technology involving the same.
`
`6)
`
`All assignments relating to the Invensys Patents.
`
`7)
`All consents relating to any assignments to any patents or patent applications
`embodying the claimed inventions in the Invensys Patents.
`
`8)
`
`All records of the witness’s employment and enrollment at Oxford.
`
`9)
`the market.
`
`All documents relating to the introduction of Invensys’s Coriolis flowmeters into
`
`10)
`Lab notebooks or other records relating to the Invensys Patents or work or
`research relating to the conception and/or reduction to practice of the same.
`
`11)
`Invention disclosures or inventor proposals relating to the Invensys Patents,
`Coriolis flowmeters, or technology involving the same.
`
`12)
`The witness’s practices in/for recording and maintaining records memorializing
`work or research relating to the Invensys Patents, Coriolis flowmeters, or technology involving
`the same.
`
`13)
`
`Valuation of or projected revenue from the Invensys Patents.
`
`14)
`All documents relating to any award, settlement, or recovery the witness may
`recover from any infringement action relating to the Invensys Patents.
`
`xii.
`
`Requirements that the evidence be given on oath or affirmation and any special
`form to be used:
`
`This Letter of Request includes the following requests:
`
`4843-6222-0313.1
`
`16
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 17 of 18 PageID #: 4041
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`That the deponents Manus Henry, David W. Clarke, and Mayela E. Zamora
`(collectively, the “deponents”) be placed under oath or affirmation;
`
`Emerson’s and Micro Motion’s attorneys, Foley & Lardner LLP and Eversheds
`LLP, request, under authorization of this Court, permission to attend and
`participate in the oral depositions of the deponents;
`
`That the deponents be examined orally by counsel for Emerson and Micro Motion
`as counsel for Emerson and Micro Motion is familiar with the complex issues in
`this case and it would be advantageous to allow them to conduct the questioning
`rather than to have the questioning done by the English Court;
`
`That a representative of Oxford be present to authenticate documents produced
`and/or otherwise made available for inspection and copying;
`
`That an authorized shorthand writer/court reporter be present at the examinations
`who shall record the oral testimony verbatim and prepare a transcript of the
`evidence;
`
`That a videographic record be taken of the proceedings;
`
`That the examination take place at: (1) the offices of Eversheds LLP, One Wood
`Street London, EC2V 7WS, United Kingdom; or (2) a location as may be agreed
`upon between the deponents and counsel for the parties;
`
`That the examination take place at dates and times as may be agreed upon
`between the deponents and counsel for the parties;
`
`That any objections raised as to the admissibility of certain testimony or the
`manner in which questions are asked or answers are given are “reserved,” in that
`they are noted for the record, but not resolved at the deposition but addressed and
`resolved by this Court when the testimony is presented at trial; and
`
`That the privileges or duties not to give evidence shall be the same as if the
`deponent were testifying under the applicable provisions of the United States
`Federal Rules of Civil Procedure.
`
`In the event the evidence cannot be taken in the manner or location requested, it is to be
`
`taken in such a manner or location as provided by local law.
`
`This Letter of Request also requests that the confidentiality of any evidence produced as a
`
`result of this Request be maintained pursuant to the laws of the United Kingdom as well as
`
`pursuant
`
`to a Protective Order issued by this Court
`
`that provides specific confidentiality
`
`protections for certain documents and/or testimony furnished in the course of this litigation that
`
`4843-6222-0313.1
`
`17
`
`

`
`Case 6:12-cv-00799-JRG Document 133-1 Filed 03/27/14 Page 18 of 18 PageID #: 4042
`
`include trade secrets, confidential business information, or other proprietary information.
`
`Pursuant to this Protective Order, this Court respectfully requests that this Letter of Request and
`
`any information provided in response to this Request not be disclosed to any individuals or
`
`entities other than the parties and their counsel or their or the Court’s designees. Emerson and
`
`Micro Motion agree to be bound by any similar protective ordered issued by the English Court
`
`pertaining to any information disclosed in response to this Request. Emerson and Micro Motion
`
`will not object to a request by any witness for such an order.
`
`xiii.
`
`Reciprocity:
`
`The courts of the United States are authorized by st