Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 1 of 11 PageID #: 4461
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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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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`MICRO MOTION, INC.’S AND EMERSON ELECTRIC CO.’S
`REPLY BRIEF IN SUPPORT OF THEIR MOTION FOR
`SUMMARY JUDGMENT OF INDEFINITENESS
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 2 of 11 PageID #: 4462
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .......................................................................................................... ii 
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`I. 
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`II. 
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`“INPUT MODULE,” “OUTPUT MODULE,” AND “PROCESSING DEVICE”
`ARE Means-Plus-Function Claim Limitations ................................................................... 1 
`“Module” Is Not Mentioned in the Specifications Of The Invensys
`A. 
`Patents. .................................................................................................................... 1 
`“Processing Device” Does Not Recite Sufficient Structure. .................................. 3 
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`B. 
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`“Determine the Flowrate,” “Maintains Oscillation,” and “System Disturbance”
`Are Not Amenable to Construction. ................................................................................... 4 
`The Terms “Determine The Flow Rate” and “Maintain Oscillation” Must
`A. 
`Distinguish Invensys’s Claims From The Prior Art. .............................................. 4 
`The ’854 Patent Does Not Define “System Disturbance.” ..................................... 5 
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`B. 
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`III. 
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`Invensys’S Patent Claims Impermissibly Claim Both a System and a Method. ................ 6 
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`CONCLUSION ................................................................................................................... 6 
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`IV. 
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`i
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 3 of 11 PageID #: 4463
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`TABLE OF AUTHORITIES
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`Cases 
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`Beneficial Innovations, Inc., v. Blockdot, Inc., No. 2:07-CV-263-TJW-CE, 2010 U.S. Dist.
`LEXIS 35784 (E.D. Tex. Apr. 12, 2010) ........................................................................ 1, 2
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`C2 Communs. Techs., Inc. v. AT&T, Inc., No. 2:06-CV-241, 2008 U.S. Dist. LEXIS 46942 (E.D.
`Tex. June 13, 2008) ......................................................................................................... 1, 2
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`Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005) ...... 3
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`In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983) ..................................................................................... 3
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`Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011) .................................. 6
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`Roy-G-Biv Corp. v. Fanuc Ltd., No. 2:07-CV-418 (DF), 2009 U.S. Dist. LEXIS 127428 (E.D.
`Tex. Aug. 25, 2009) ........................................................................................................ 1, 2
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`35 U.S.C. § 112(f) ....................................................................................................................... 1, 2
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`Statutes 
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`ii
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 4 of 11 PageID #: 4464
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`For the reasons below, the arguments raised by Invensys in its April 18, 2014 Response
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`(Dkt. No. 148, “Pl.’s Resp.”) to Defendants’ Motion for Summary Judgment of Indefiniteness
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`fail to establish that its patent claims are sufficiently definite under both the current state of the
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`law and a bolstered definiteness standard that may be announced in the next two months by the
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`Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc.
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`I.
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`“INPUT MODULE,” “OUTPUT MODULE,” AND “PROCESSING DEVICE”
`ARE MEANS-PLUS-FUNCTION CLAIM LIMITATIONS
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`A.
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`“Module” Is Not Mentioned in the Specifications Of The Invensys Patents.
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`Invensys cites three decisions issued by this Court to support its proposition that the term
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`“module” is a “well understood structural term, not a means-plus-function limitation under
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`§ 112(f) (formerly § 112 ¶ 6).” (Pl.’s Resp. at 1, Dkt. No. 148.) Each of those cases is readily
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`distinguishable from the facts of this case. In each case, “module” appeared numerous times in
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`the respective written descriptions:
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`
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`
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`Beneficial Innovations, Inc., v. Blockdot, Inc., No. 2:07-CV-263-TJW-CE, 2010 U.S.
`Dist. LEXIS 35784, at *2, *46-50 (E.D. Tex. Apr. 12, 2010) (construing U.S. Pat. No.
`6,183,366, which recites the term “module” numerous times in both the figures and the
`written specification, and identifies several “module” elements, including a “wager
`accounting module 30,” “controller 14 modules,” “card generator module 38,” “house
`blackjack playing module 42,” and “website 308 modules.”) (see Ex. E, U.S. Pat. No.
`6,183,366, detailed description).1
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`Roy-G-Biv Corp. v. Fanuc Ltd., No. 2:07-CV-418 (DF), 2009 U.S. Dist. LEXIS 127428,
`at *69-74 (E.D. Tex. Aug. 25, 2009) (construing U.S. Pat. No. 6,513,058, which recites
`“module” dozens of times and identifies a “driver administrator module 32,” “driver stub
`module 36,” “motion control component module 35,” and “selected driver module 30.”)
`(see Ex. F, U.S. Pat. No. 6,513,058, detailed description).
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`C2 Communs. Techs., Inc. v. AT&T, Inc., No. 2:06-CV-241, 2008 U.S. Dist. LEXIS
`46942, at *4, *33-35 (E.D. Tex. June 13, 2008) (construing U.S. Pat. No. 6,243,373,
`which describes a “Voice Resources module 504,” “Telephone Network Interface
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`1 All exhibits referenced herein are attached to the Declaration of Kadie M. Jelenchick,
`concurrently filed herewith.
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`1
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 5 of 11 PageID #: 4465
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`Module (TNIM) 502,” “ICM modules,” and “Internet Router Module (IRM) 518,” among
`other modules) (see Ex. G., U.S. Pat. No. 6,243,373, detailed description).
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`Here, by contrast, the term “module” does not appear in the written descriptions of the
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`’761 or ’906 patents—a fact that Invensys concedes. (See Pl.’s Resp. at 2.) Invensys argues that
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`its three cited cases are not distinguishable because “[n]one of those decisions cited the
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`specifications’ use of the word ‘module’ as a basis for their holding.” (Pl.’s Resp. at 2.) But this
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`argument is undercut by the fact that the cited cases recite—and presumably follow—the
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`fundamental rule of law that requires claims to be read in view of the specification. Beneficial
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`Innovations, Inc., 2010 U.S. Dist. LEXIS 35784, at *15 (“the specification [is] the best guide to
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`the meaning of a disputed term”); C2 Communs. Techs., Inc., 2008 U.S. Dist. LEXIS 46942, at
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`*10 (“A patent’s claims must be read in view of the specification, of which they are a part.”); see
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`also Roy-G-Biv, 2009 U.S. Dist. LEXIS 127428, at *24 (“[T]he Court finds that the specification
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`locates the component code in the motion component module.”).
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`Here, unlike in the cases cited by Invensys, the specifications provide no context to
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`determine what meaning should apply to “input module” and “output module,” and dictionary
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`definitions without more do not provide definiteness. Invensys cites a collection of dictionaries
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`for the notion that a module is a part of a software package or package of electrical components
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`“that performs a particular task” or that can “provide a complete function to a system.” (Pl.’s
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`Resp. at 3, 4.) But these definitions are completely functional. In other words, Invensys’s
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`definition would cover every software package or package of electrical components that
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`performs the functions recited in the claims.2 This implicates § 112(f). Moreover, the only
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`argument raised by Invensys as to whether its patents sufficiently describe any structure
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`corresponding to the “input module” and “output module” is an identification of an analog-to-
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`2 Invensys concedes that the dictionary definitions are broad. (Pl.’s Resp. at 4.)
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`2
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 6 of 11 PageID #: 4466
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`digital converter and digital-to-analog converter. (Pl.’s Resp. at 3.) But Invensys provides no
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`reasons for how those structures are “clearly linked” to the functions recited in the claim.
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`Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir.
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`2005). Without corresponding structure, “input module” and “output module” are indefinite.
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`B.
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`“Processing Device” Does Not Recite Sufficient Structure.
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`Invensys does not deny that the term “device,” by itself, does not recite structure.
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`Instead, Invensys argues that adding “processing” to “device” makes a “processor,” but it fails to
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`cite anything in the ’646 or ’854 specifications clearly linking the structure of a processor with
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`“processing device,” which does not appear in either specification—a fact also not disputed by
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`Invensys. The only passage from a specification cited by Invensys to support its position, Col. 4,
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`ll. 47-65 of the ’646 patent, refers to a “neural network processor” but it does not clearly link that
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`alleged structure to the functions recited by the claim language (i.e., sending a drive signal,
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`receiving a sensor signal, and determining flow rate). Moreover, when Invensys was tasked with
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`providing a construction of “processing device,” it did not choose “processor.” (Dkt. No. 105-1
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`at 11.) Without a sufficient recitation of structure, and without corresponding structure disclosed
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`in the specification, “processing device” renders the claims (and the respective dependent
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`claims) indefinite.
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`Claim 15 of the ’854 patent is also invalid because it consists of a single means element
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`“processing device,” which impermissibly covers every conceivable means for achieving the
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`stated result. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). Invensys’s only rebuttable to this
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`argument is that In re Hyatt is inapplicable because “processing device” is allegedly not a
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`means-plus-function limitation, (Pl.’s Resp. at 6), but Invensys fails to comment on In re Hyatt’s
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`applicability in the event the Court determines that “processing device” is a means-plus-function
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`limitation.
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`3
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 7 of 11 PageID #: 4467
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`II.
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`“DETERMINE THE FLOWRATE,” “MAINTAINS OSCILLATION,” AND
`“SYSTEM DISTURBANCE” ARE NOT AMENABLE TO CONSTRUCTION.
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`A.
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`The Terms “Determine The Flow Rate” and “Maintain Oscillation” Must
`Distinguish Invensys’s Claims From The Prior Art.
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`Invensys argues that there is no requirement that a particular claim element distinguish
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`over the prior art. While that is certainly true as a general statement, it has no applicability here.
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`First, as stated in Defendants’ opening brief, the ’646 patent itself makes it clear that the
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`determination of the flow rate in the prior art is different from the determination in the patented
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`flowmeter. (’646 patent at 51:36-52:11.) Indeed, Invensys expressly argued, in construing this
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`language in response to Micro Motion’s petition for inter partes review of this patent, that “it is
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`plainly unreasonable to interpret the claims of the patent so broadly as to cover the very
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`technology it criticizes and upon which it explicitly suggests improvement.” (See Defs.’ Br. at 8
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`& Ex. B.) But second, and more important, the remaining elements of the ’646 claims are
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`standard features of every flowmeter. Invensys attempts to dispute this by suggesting that prior
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`art analog drive Coriolis flowmeters do not have a “digital controller, processing device, and
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`processing systems,” but the ’646 claims make no mention of anything “digital.” A proper
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`reading of the ’646 patent shows that the only possible basis to distinguish the claimed invention
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`from the prior art is the “determining the flow rate” element. Accordingly, this claim term is
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`insolubly ambiguous because there is no way to determine when a flowmeter is covered by the
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`claims and when it is not.
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`The same result applies to the claim term “maintains oscillation” and its variants. For
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`example, the ’761 patent claims that it performs better during aeration—and, in particular, when
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`the flowtube transitions from substantially empty to substantially full—than “traditional”
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`flowmeters. But the claims do not recite this alleged improvement. Instead, just as with the term
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`“determine the flow rate,” the specification shows that both the prior art analog flowmeter and
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`4
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 8 of 11 PageID #: 4468
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`the allegedly inventive flowmeter oscillate during the transition of the flowmeter from
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`substantially empty to substantially full. (’761:52:3-21.) Invensys concedes that Dr. Direen’s
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`experiments showed that the analog drive flowmeter technically “maintained oscillation.” (Pl.’s
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`Resp. at 7-8.) Thus, “maintains oscillation” is broad enough to cover both the traditional analog
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`and the claimed flowmeter—an insoluble ambiguity.
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`B.
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`The ’854 Patent Does Not Define “System Disturbance.”
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`Invensys does not argue that “system disturbance” has an ordinary meaning to one of
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`skill in the art. The specification of the ’854 patent does not provide a definition for “system
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`disturbance” beyond suggesting that it occurs when the flowmeter measurements become
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`“unstable.” (’854:29:15-18) Invensys points to two-phase flow as an example of a system
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`disturbance, but it is not clear whether the claim requires transitioning to a new drive mode
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`whenever the controller detects two-phase flow or only in certain two-phase conditions. And, it
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`is not clear what other conditions qualify as system disturbances.
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`Invensys attempts to cure the deficiencies in the specification by pointing to extrinsic
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`hearsay evidence.3 Even if this evidence were admissible, however, it is not relevant because it
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`does not even use the term “system disturbance.” Accordingly, it is unclear to a skilled artisan
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`as to when a system is or is not subjected to a system disturbance, and when, if there is a system
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`disturbance, the system transitions to a different drive mode.
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`3 Invensys contends that the evidence is being offered “only to show the types of
`conditions those in the industry would have considered to be a ‘system disturbance,’” (Pl.’s
`Resp. at 9 n.8), but that is the truth of the matter asserted—i.e., that “system disturbance” is well
`understood in the industry.
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`5
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 9 of 11 PageID #: 4469
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`III.
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`INVENSYS’S PATENT CLAIMS IMPERMISSIBLY CLAIM BOTH A SYSTEM
`AND A METHOD.
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`The claims that recite both apparatus and method limitations are invalid as indefinite.
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`For example, claim 36 of the ’136 patent, which first recites “a control and measurement system”
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`(a structure) and then recites “wherein the control and measurement system uses digital
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`processing to adjust…” (a method step), is indefinite because it is unclear whether infringement
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`occurs when the system is created or when the user uses digital processing with the system.
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`Invensys argues that human beings are not capable of “digital processing” and therefore
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`the limitation “uses digital processing” could only refer to a structure. (Pl.’s Resp. at 10 n.10.)
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`However, human beings can certainly use a system to digitally process something, just as they
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`can use a device to “transmit[] the trellis encoded frames” as in Rembrandt Data Techs., LP v.
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`AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011). Under Invensys’s theory, the phrase in
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`Rembrandt could have only referred to a structure because a human being cannot transmit
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`signals. Yet, the Rembrandt court found that the limitation was a method claim, despite the
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`absence of the term “user.” Id. Invensys’s mixed system and method claims are likewise
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`indefinite.
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`IV. CONCLUSION
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`For the foregoing reasons, the defendants respectfully request this Court grant their
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`Motion for Summary Judgment and issue an Order providing that the identified Invensys patent
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`claims are invalid as indefinite as a matter of law.
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`6
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 10 of 11 PageID #: 4470
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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 Defendant Emerson Electric
`Co. and Defendant and Counterclaim-
`Plaintiff Micro Motion, Inc.
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`Dated: April 24, 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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`7
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`Case 6:12-cv-00799-JRG Document 153 Filed 04/24/14 Page 11 of 11 PageID #: 4471
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 24, 2014, I electronically filed the foregoing document with
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`the Clerk of Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`I also certify that I caused to be mailed, via Federal Express, two binders containing the
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`foregoing, including referenced exhibits, to the Court’s attention pursuant to the Fourth
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`Amended Docket Control Order. (Dkt. No. 103.) I further certify that I caused to be mailed, via
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`Federal Express, the foregoing, including referenced exhibits, on disk along with a hard copy to
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`the Court’s appointed technical advisor, Mr. Brucculeri, pursuant to the Fourth Amended Docket
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`Control Order. (Id.)
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`/s/ Kadie M. Jelenchick
`Kadie M. Jelenchick
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`8