`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Case No. 6:12-CV-00799
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
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`Plaintiff,
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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 ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT
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`Defendant Micro Motion, Inc. (“Micro Motion”)1 hereby responds to
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`Plaintiff’s Original Complaint (“Complaint”) as follows:
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`PARTIES
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`1.
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`Micro Motion lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this Paragraph and therefore denies them.
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`1 Invensys Systems, Inc. (“Invensys”) incorrectly identifies Micro Motion Inc.,
`USA as a Defendant in this action. The correct name is Micro Motion, Inc.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 2 of 12 PageID #: 440
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`2.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`3.
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`Micro Motion denies that its name is “Micro Motion Inc., USA” and
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`affirmatively states that its correct name is “Micro Motion, Inc.” Micro Motion admits
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`that it is a Colorado corporation with its principal place of business being at 7070
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`Winchester Circle, Boulder, Colorado 80301, and that it is a wholly-owned subsidiary of
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`Emerson Electric Co. (“Emerson”). Micro Motion also admits that certain of its products
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`are sold, offered for sale, and used in this District. Micro Motion otherwise denies the
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`remaining allegations in this Paragraph.
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`JURISDICTION
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`4.
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`Micro Motion admits that Invensys purports to bring this action under
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`Title 35 of the United States Code.
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`5.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`6.
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`Micro Motion admits that it conducts business in Texas. Micro Motion
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`otherwise denies the remaining allegations in this Paragraph.
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`VENUE
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`7.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. Micro Motion admits that
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`it resides in this District. Micro Motion otherwise denies the remaining allegations in this
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`Paragraph.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 3 of 12 PageID #: 441
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`BACKGROUND
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`8.
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`Micro Motion lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this Paragraph and therefore denies them.
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`9.
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`Micro Motion lacks knowledge or information sufficient to form a belief
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`about the truth of the allegations in this Paragraph and therefore denies them.
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`10. Micro Motion admits that it is a wholly-owned subsidiary of Emerson.
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`Micro Motion also admits that in or around 2006, it released certain Coriolis flowmeters
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`having a Micro Motion enhanced core processor and/or Micro Motion Model 2400S
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`transmitters. Micro Motion otherwise denies the remaining allegations in this Paragraph.
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`11.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. Micro Motion denies that
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`it has facilities in this District. Micro Motion lacks knowledge or information sufficient
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`to form a belief about the truth of the remaining allegations in this Paragraph and
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`therefore denies them.
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`FIRST CLAIM
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`(Alleged Patent Infringement of the ’646 Patent)
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`12. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-11 of the Complaint.
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`13. Micro Motion admits that U.S. Patent No. 7,124,646 (“the ’646 patent”)
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`states on its face that (a) its title is “Correcting for Two-Phase Flow in a Digital
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`Flowmeter,” (b) it issued on October 24, 2006, (c) the named inventors are Manus P.
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`Henry and Maria Jesus De La Fuente, and (d) Invensys is the assignee. Micro Motion
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`also admits that a copy of what purports to be the ’646 patent is attached to the Complaint
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 4 of 12 PageID #: 442
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`as Exhibit A. Micro Motion denies that the ’646 patent was duly and legally issued. As
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`for the remaining allegations, Micro Motion lacks knowledge or information sufficient to
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`form a belief as to their truth and therefore denies them.
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`14.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`15.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`16.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`SECOND CLAIM
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`(Alleged Patent Infringement of the ’761 Patent)
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`17. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-16 of the Complaint.
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`18. Micro Motion admits that U.S. Patent No. 7,136,761 (“the ’761 patent”)
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`states on its face that (a) its title is “Digital Flowmeter,” (b) it issued on November 14,
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`2006, (c) the named inventors are Manus P. Henry, David W. Clarke, and James H.
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`Vignos, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
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`purports to be the ’761 patent is attached to the Complaint as Exhibit B. Micro Motion
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`denies that the ’761 patent was duly and legally issued. As for the remaining allegations,
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 5 of 12 PageID #: 443
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`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
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`and therefore denies them.
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`19.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`20.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`21.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`THIRD CLAIM
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`(Alleged Patent Infringement of the ’136 Patent)
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`22. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-21 of the Complaint.
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`23. Micro Motion admits that U.S. Patent No. 6,311,136 (“the ’136 patent”)
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`states on its face that (a) its title is “Digital Flowmeter,” (b) it issued on October 30,
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`2001, (c) the named inventors are Manus P. Henry, David W. Clarke, and James H.
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`Vignos, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
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`purports to be the ’136 patent is attached to the Complaint as Exhibit C. Micro Motion
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`denies that the ’136 patent was duly and legally issued. As for the remaining allegations,
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`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
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`and therefore denies them.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 6 of 12 PageID #: 444
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`24.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`25.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`26.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`FOURTH CLAIM
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`(Alleged Patent Infringement of the ’854 Patent)
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`27. Micro Motion repeats and incorporates herein by reference its responses to
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`Paragraphs 1-26 of the Complaint.
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`28. Micro Motion admits that U.S. Patent No. 7,505,854 (“the ’854 patent”)
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`states on its face that (a) its title is “Startup Techniques for a Digital Flowmeter,” (b) it
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`issued on March 17, 2009, (c) the named inventors are Manus P. Henry and Mayela E.
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`Zamora, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
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`purports to be the ’854 patent is attached to the Complaint as Exhibit D. Micro Motion
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`denies that the ’854 patent was duly and legally issued. As for the remaining allegations,
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`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
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`and therefore denies them.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 7 of 12 PageID #: 445
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`29.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`30.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`31.
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`No response is required from Micro Motion to the extent that the
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`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
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`response is required, Micro Motion denies the allegations in this Paragraph.
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`DEMAND FOR A JURY TRIAL
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`32.
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`The allegations in this Paragraph do not call for a response from Micro
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`Motion. However, as indicated below, Micro Motion desires a trial by jury on all issues
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`so triable and respectfully requests the same.
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`AFFIRMATIVE DEFENSES
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`33. Micro Motion has not infringed, contributed to the infringement of, or
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`induced the infringement of any valid and enforceable claim of the ’646, ’761, ’136, and
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`’854 patents (collectively, “patents-in-suit”) either literally or under the doctrine of
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`equivalents.
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`34.
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`The claims of the patents-in-suit are invalid for failing to comply with one
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`or more of the statutory requirements set forth in Title 35 of the United States Code,
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`including at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`35.
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`The Complaint fails to state a claim upon which relief can be granted.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 8 of 12 PageID #: 446
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`36.
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`Invensys’s claim for damages, if any, against Micro Motion are statutorily
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`limited by 35 U.S.C. §§ 286, 287, and/or 288.
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`37.
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`Invensys’s claims are barred from relief under the applicable statute of
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`limitations.
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`38.
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`Upon information and belief, Invensys is barred, in whole or in part, under
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`principles of equity, including without limitation, laches, waiver, and/or estoppel.
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`39.
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`Invensys is not entitled to injunctive relief because any alleged injury is
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`not immediate or irreparable, and/or because Invensys has an adequate remedy at law.
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`40.
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`By virtue of statements made, amendments made, or positions taken
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`during the prosecution of the applications for the patents-in-suit and/or any related
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`patents or patent applications, Invensys is estopped from construing any claim of the
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`patents-in-suit to cover or include, either literally or under the doctrine of equivalents,
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`any of Micro Motion’s products, systems, or processes.
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`COUNTERCLAIMS
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`Micro Motion asserts the following Counterclaims against Invensys and
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`alleges as follows:
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`PARTIES
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`1.
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`Micro Motion is a Colorado corporation having a principal place of
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`business at 7070 Winchester Circle, Boulder, Colorado 80301.
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`2.
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`Upon information and belief, Invensys is a Massachusetts corporation
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`having a principal place of business at 10900 Equity Drive, Houston, Texas 77041.
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`JURISDICTION AND VENUE
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 9 of 12 PageID #: 447
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`3.
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`This action arises under Title 35 of the United States Code. This Court,
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`therefore, has jurisdiction over the subject matter of this action pursuant to 28 U.S.C.
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`§§ 1331 and 1338(a). As shown by the Complaint and the Affirmative Defenses and
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`Counterclaims raised by Micro Motion herein, this action presents an actual justiciable
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`controversy with respect to the alleged infringement and validity of the patents-in-suit.
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`4.
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`Invensys has subjected itself to the personal jurisdiction of this Court for
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`purposes of the Counterclaims against it, and by way of the Complaint, has asserted that
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`venue is proper in this District.
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`COUNT I
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`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
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`5.
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`Micro Motion realleges and incorporates by reference, as if fully set forth
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`herein, the allegations contained in preceding Paragraphs 1-4.
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`6.
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`Invensys, as the purported sole holder of the entire right, title, and interest
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`in the patents-in-suit, has sued Micro Motion in the present action, alleging infringement
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`of one or claims of the patents-in-suit.
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`7.
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`Micro Motion denies that it has infringed, contributed to the infringement
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`of, or induced the infringement of any valid and enforceable claim of the patents-in-suit
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`either literally or under the doctrine of equivalents.
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`8.
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`There exists, therefore, an actual justiciable controversy between Micro
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`Motion and Invensys with respect to the non-infringement of any valid and enforceable
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`claim of the patents-in-suit.
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`9.
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`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C.
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`§§ 2201
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 10 of 12 PageID #: 448
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`et seq., Micro Motion seeks a declaratory judgment that it has not infringed, contributed
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`to the infringement of, or induced the infringement of any valid and enforceable claim of
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`the patents-in-suit either literally or under the doctrine of equivalents.
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`COUNT II
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`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
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`10. Micro Motion realleges and incorporates by reference, as if fully set forth
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`herein, the allegations contained in preceding Paragraphs 1-4.
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`11.
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`Upon information and belief, Invensys alleges that each and every claim
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`of the patents-in-suit is valid.
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`12. Micro Motion asserts that each and every claim of the patents-in-suit is
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`invalid for failing to comply with one or more of the statutory requirements of
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`patentability set forth in at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`13.
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`There exists, therefore, an actual justiciable controversy between Micro
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`Motion and Invensys with respect to the invalidity of each and every claim of the patents-
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`in-suit.
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`14.
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`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C.
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`§§ 2201
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`et seq., Micro Motion seeks a declaratory judgment that each and every claim of the
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`patents-in-suit is invalid.
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`PRAYER FOR RELIEF
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`WHEREFORE, Micro Motion denies that Invensys is entitled to any relief
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`as prayed for in the Complaint or otherwise, and accordingly, respectfully prays for entry
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`of a judgment:
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 11 of 12 PageID #: 449
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`
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`A.
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`Dismissing the Complaint with prejudice and denying Invensys all relief
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`requested in the Complaint;
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`B.
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`That Micro Motion has not infringed, contributed to the infringement of,
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`or induced infringement of, and is not infringing, contributing to the infringement of, or
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`inducing infringement of any valid claim of the patents-in-suit;
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`C.
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`D.
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`That the claims of the patents-in-suit are invalid;
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`Enjoining Invensys and its officers, agents, servants, employees, attorneys,
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`parents, subsidiaries, affiliates, divisions, successors, assigns, and all persons in privity or
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`active concert or participation with anyone described in this Paragraph, from directly or
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`indirectly asserting infringement against, or instituting any further action for infringement
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`of the patents-in-suit against Micro Motion, their subsidiaries, affiliates, or any of their
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`customers, agents, successors, or assigns;
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`E.
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`That the Court find this case exceptional pursuant to 35 U.S.C. § 285 and
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`award Micro Motion its reasonable attorneys’ fees and costs; and
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`F.
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`Awarding to Micro Motion such other and further relief as the Court may
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`deem just and proper under the circumstances.
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`DEMAND FOR JURY TRIAL
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`Micro Motion desires a trial by jury on all issues so triable and
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`respectfully requests the same.
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`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 12 of 12 PageID #: 450
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`Dated: January 10, 2013
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`OF COUNSEL
`Linda E.B. Hansen, Wisconsin Bar No. 1000660
`Richard S. Florsheim, Wisconsin Bar No. 1015905
`Jeffrey N. Costakos, Wisconsin Bar No. 1008225
`Kadie M. Jelenchick, Wisconsin Bar No. 1056506
`Matthew J. Shin, Wisconsin 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
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`rflorsheim@foley.com
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`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 10, 2013, I electronically filed the foregoing
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`document with the Clerk of Court using the CM/ECF system which will send notification
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`of such filing via electronic mail to all counsel of record.
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`/s/ Guy N. Harrison
`Guy N. Harrison
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`Respectfully submitted,
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`/s/ Guy N. Harrison
`Guy N. Harrison
`State Bar No. 00000077
`Harrison Law Firm
`217 N. Center Street
`Longview, Texas 75606
`Phone: (903) 758-7361
`Fax: (903) 753-9557
`Email: guy@gnhlaw.com
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`cj-gnharrison@att.net
`Attorney for Defendant and
`Counterclaim-Plaintiff Micro
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`Motion, Inc.