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Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 1 of 12 PageID #: 439
`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`
`Case No. 6:12-CV-00799
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`
`MICRO MOTION, INC.’S ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO PLAINTIFF’S ORIGINAL COMPLAINT
`
`Defendant Micro Motion, Inc. (“Micro Motion”)1 hereby responds to
`
`
`
`
`
`
`
`
`
`Plaintiff’s Original Complaint (“Complaint”) as follows:
`
`PARTIES
`
`1.
`
`Micro Motion lacks knowledge or information sufficient to form a belief
`
`about the truth of the allegations in this Paragraph and therefore denies them.
`
`
`1 Invensys Systems, Inc. (“Invensys”) incorrectly identifies Micro Motion Inc.,
`USA as a Defendant in this action. The correct name is Micro Motion, Inc.
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 2 of 12 PageID #: 440
`
`2.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`3.
`
`Micro Motion denies that its name is “Micro Motion Inc., USA” and
`
`affirmatively states that its correct name is “Micro Motion, Inc.” Micro Motion admits
`
`that it is a Colorado corporation with its principal place of business being at 7070
`
`Winchester Circle, Boulder, Colorado 80301, and that it is a wholly-owned subsidiary of
`
`Emerson Electric Co. (“Emerson”). Micro Motion also admits that certain of its products
`
`are sold, offered for sale, and used in this District. Micro Motion otherwise denies the
`
`remaining allegations in this Paragraph.
`
`JURISDICTION
`
`4.
`
`Micro Motion admits that Invensys purports to bring this action under
`
`Title 35 of the United States Code.
`
`5.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`6.
`
`Micro Motion admits that it conducts business in Texas. Micro Motion
`
`otherwise denies the remaining allegations in this Paragraph.
`
`VENUE
`
`7.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. Micro Motion admits that
`
`it resides in this District. Micro Motion otherwise denies the remaining allegations in this
`
`Paragraph.
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 3 of 12 PageID #: 441
`
`BACKGROUND
`
`8.
`
`Micro Motion lacks knowledge or information sufficient to form a belief
`
`about the truth of the allegations in this Paragraph and therefore denies them.
`
`9.
`
`Micro Motion lacks knowledge or information sufficient to form a belief
`
`about the truth of the allegations in this Paragraph and therefore denies them.
`
`10. Micro Motion admits that it is a wholly-owned subsidiary of Emerson.
`
`Micro Motion also admits that in or around 2006, it released certain Coriolis flowmeters
`
`having a Micro Motion enhanced core processor and/or Micro Motion Model 2400S
`
`transmitters. Micro Motion otherwise denies the remaining allegations in this Paragraph.
`
`11.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. Micro Motion denies that
`
`it has facilities in this District. Micro Motion lacks knowledge or information sufficient
`
`to form a belief about the truth of the remaining allegations in this Paragraph and
`
`therefore denies them.
`
`FIRST CLAIM
`
`(Alleged Patent Infringement of the ’646 Patent)
`
`12. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-11 of the Complaint.
`
`13. Micro Motion admits that U.S. Patent No. 7,124,646 (“the ’646 patent”)
`
`states on its face that (a) its title is “Correcting for Two-Phase Flow in a Digital
`
`Flowmeter,” (b) it issued on October 24, 2006, (c) the named inventors are Manus P.
`
`Henry and Maria Jesus De La Fuente, and (d) Invensys is the assignee. Micro Motion
`
`also admits that a copy of what purports to be the ’646 patent is attached to the Complaint
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 4 of 12 PageID #: 442
`
`as Exhibit A. Micro Motion denies that the ’646 patent was duly and legally issued. As
`
`for the remaining allegations, Micro Motion lacks knowledge or information sufficient to
`
`form a belief as to their truth and therefore denies them.
`
`14.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`15.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`16.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`SECOND CLAIM
`
`(Alleged Patent Infringement of the ’761 Patent)
`
`17. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-16 of the Complaint.
`
`18. Micro Motion admits that U.S. Patent No. 7,136,761 (“the ’761 patent”)
`
`states on its face that (a) its title is “Digital Flowmeter,” (b) it issued on November 14,
`
`2006, (c) the named inventors are Manus P. Henry, David W. Clarke, and James H.
`
`Vignos, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
`
`purports to be the ’761 patent is attached to the Complaint as Exhibit B. Micro Motion
`
`denies that the ’761 patent was duly and legally issued. As for the remaining allegations,
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 5 of 12 PageID #: 443
`
`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
`
`and therefore denies them.
`
`19.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`20.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`21.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`THIRD CLAIM
`
`(Alleged Patent Infringement of the ’136 Patent)
`
`22. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-21 of the Complaint.
`
`23. Micro Motion admits that U.S. Patent No. 6,311,136 (“the ’136 patent”)
`
`states on its face that (a) its title is “Digital Flowmeter,” (b) it issued on October 30,
`
`2001, (c) the named inventors are Manus P. Henry, David W. Clarke, and James H.
`
`Vignos, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
`
`purports to be the ’136 patent is attached to the Complaint as Exhibit C. Micro Motion
`
`denies that the ’136 patent was duly and legally issued. As for the remaining allegations,
`
`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
`
`and therefore denies them.
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 6 of 12 PageID #: 444
`
`24.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`25.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`26.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`FOURTH CLAIM
`
`(Alleged Patent Infringement of the ’854 Patent)
`
`27. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-26 of the Complaint.
`
`28. Micro Motion admits that U.S. Patent No. 7,505,854 (“the ’854 patent”)
`
`states on its face that (a) its title is “Startup Techniques for a Digital Flowmeter,” (b) it
`
`issued on March 17, 2009, (c) the named inventors are Manus P. Henry and Mayela E.
`
`Zamora, and (d) Invensys is the assignee. Micro Motion also admits that a copy of what
`
`purports to be the ’854 patent is attached to the Complaint as Exhibit D. Micro Motion
`
`denies that the ’854 patent was duly and legally issued. As for the remaining allegations,
`
`Micro Motion lacks knowledge or information sufficient to form a belief as to their truth
`
`and therefore denies them.
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 7 of 12 PageID #: 445
`
`29.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`30.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`31.
`
`No response is required from Micro Motion to the extent that the
`
`allegations in this Paragraph are not directed to Micro Motion. To the extent that a
`
`response is required, Micro Motion denies the allegations in this Paragraph.
`
`DEMAND FOR A JURY TRIAL
`
`32.
`
`The allegations in this Paragraph do not call for a response from Micro
`
`Motion. However, as indicated below, Micro Motion desires a trial by jury on all issues
`
`so triable and respectfully requests the same.
`
`AFFIRMATIVE DEFENSES
`
`33. Micro Motion has not infringed, contributed to the infringement of, or
`
`induced the infringement of any valid and enforceable claim of the ’646, ’761, ’136, and
`
`’854 patents (collectively, “patents-in-suit”) either literally or under the doctrine of
`
`equivalents.
`
`34.
`
`The claims of the patents-in-suit are invalid for failing to comply with one
`
`or more of the statutory requirements set forth in Title 35 of the United States Code,
`
`including at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`35.
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 8 of 12 PageID #: 446
`
`36.
`
`Invensys’s claim for damages, if any, against Micro Motion are statutorily
`
`limited by 35 U.S.C. §§ 286, 287, and/or 288.
`
`37.
`
`Invensys’s claims are barred from relief under the applicable statute of
`
`limitations.
`
`38.
`
`Upon information and belief, Invensys is barred, in whole or in part, under
`
`principles of equity, including without limitation, laches, waiver, and/or estoppel.
`
`39.
`
`Invensys is not entitled to injunctive relief because any alleged injury is
`
`not immediate or irreparable, and/or because Invensys has an adequate remedy at law.
`
`40.
`
`By virtue of statements made, amendments made, or positions taken
`
`during the prosecution of the applications for the patents-in-suit and/or any related
`
`patents or patent applications, Invensys is estopped from construing any claim of the
`
`patents-in-suit to cover or include, either literally or under the doctrine of equivalents,
`
`any of Micro Motion’s products, systems, or processes.
`
`COUNTERCLAIMS
`
`
`
`Micro Motion asserts the following Counterclaims against Invensys and
`
`alleges as follows:
`
`PARTIES
`
`1.
`
`Micro Motion is a Colorado corporation having a principal place of
`
`business at 7070 Winchester Circle, Boulder, Colorado 80301.
`
`2.
`
`Upon information and belief, Invensys is a Massachusetts corporation
`
`having a principal place of business at 10900 Equity Drive, Houston, Texas 77041.
`
`JURISDICTION AND VENUE
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 9 of 12 PageID #: 447
`
`3.
`
`This action arises under Title 35 of the United States Code. This Court,
`
`therefore, has jurisdiction over the subject matter of this action pursuant to 28 U.S.C.
`
`§§ 1331 and 1338(a). As shown by the Complaint and the Affirmative Defenses and
`
`Counterclaims raised by Micro Motion herein, this action presents an actual justiciable
`
`controversy with respect to the alleged infringement and validity of the patents-in-suit.
`
`4.
`
`Invensys has subjected itself to the personal jurisdiction of this Court for
`
`purposes of the Counterclaims against it, and by way of the Complaint, has asserted that
`
`venue is proper in this District.
`
`COUNT I
`
`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
`
`5.
`
`Micro Motion realleges and incorporates by reference, as if fully set forth
`
`herein, the allegations contained in preceding Paragraphs 1-4.
`
`6.
`
`Invensys, as the purported sole holder of the entire right, title, and interest
`
`in the patents-in-suit, has sued Micro Motion in the present action, alleging infringement
`
`of one or claims of the patents-in-suit.
`
`7.
`
`Micro Motion denies that it has infringed, contributed to the infringement
`
`of, or induced the infringement of any valid and enforceable claim of the patents-in-suit
`
`either literally or under the doctrine of equivalents.
`
`8.
`
`There exists, therefore, an actual justiciable controversy between Micro
`
`Motion and Invensys with respect to the non-infringement of any valid and enforceable
`
`claim of the patents-in-suit.
`
`9.
`
`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 10 of 12 PageID #: 448
`
`et seq., Micro Motion seeks a declaratory judgment that it has not infringed, contributed
`
`to the infringement of, or induced the infringement of any valid and enforceable claim of
`
`the patents-in-suit either literally or under the doctrine of equivalents.
`
`COUNT II
`
`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
`
`10. Micro Motion realleges and incorporates by reference, as if fully set forth
`
`herein, the allegations contained in preceding Paragraphs 1-4.
`
`11.
`
`Upon information and belief, Invensys alleges that each and every claim
`
`of the patents-in-suit is valid.
`
`12. Micro Motion asserts that each and every claim of the patents-in-suit is
`
`invalid for failing to comply with one or more of the statutory requirements of
`
`patentability set forth in at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`13.
`
`There exists, therefore, an actual justiciable controversy between Micro
`
`Motion and Invensys with respect to the invalidity of each and every claim of the patents-
`
`in-suit.
`
`14.
`
`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201
`
`et seq., Micro Motion seeks a declaratory judgment that each and every claim of the
`
`patents-in-suit is invalid.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Micro Motion denies that Invensys is entitled to any relief
`
`as prayed for in the Complaint or otherwise, and accordingly, respectfully prays for entry
`
`of a judgment:
`
`

`
`Case 6:12-cv-00799-JRG Document 16 Filed 01/10/13 Page 11 of 12 PageID #: 449
`
`
`
`A.
`
`Dismissing the Complaint with prejudice and denying Invensys all relief
`
`requested in the Complaint;
`
`
`
`B.
`
`That Micro Motion has not infringed, contributed to the infringement of,
`
`or induced infringement of, and is not infringing, contributing to the infringement of, or
`
`inducing infringement of any valid claim of the patents-in-suit;
`
`
`
`
`
`C.
`
`D.
`
`That the claims of the patents-in-suit are invalid;
`
`Enjoining Invensys and its officers, agents, servants, employees, attorneys,
`
`parents, subsidiaries, affiliates, divisions, successors, assigns, and all persons in privity or
`
`active concert or participation with anyone described in this Paragraph, from directly or
`
`indirectly asserting infringement against, or instituting any further action for infringement
`
`of the patents-in-suit against Micro Motion, their subsidiaries, affiliates, or any of their
`
`customers, agents, successors, or assigns;
`
`
`
`E.
`
`That the Court find this case exceptional pursuant to 35 U.S.C. § 285 and
`
`award Micro Motion its reasonable attorneys’ fees and costs; and
`
`
`
`F.
`
`Awarding to Micro Motion such other and further relief as the Court may
`
`deem just and proper under the circumstances.
`
`DEMAND FOR JURY TRIAL
`
`
`
`Micro Motion desires a trial by jury on all issues so triable and
`
`respectfully requests the same.
`
`
`
`
`
`

`
`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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`
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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
`
`Motion, Inc.

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