Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 1 of 15 PageID #: 4781
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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
`MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS
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`4819-3834-1403.
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`

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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 2 of 15 PageID #: 4782
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`TABLE OF AUTHORITIES ......................................................................................................... iii 
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1 
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`BACKGROUND ................................................................................................................ 1 
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`LEGAL STANDARD ......................................................................................................... 2 
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`I. 
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`II. 
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`III. 
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`IV. 
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`V. 
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`B. 
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`DISCUSSION ..................................................................................................................... 3 
`Defendants’ counsel diligently investigated the prior art, but did not
`A. 
`uncover the evidence showing that Howard Derby had developed a digital
`prototype that anticipated most of the asserted claims until May, 2014. ................ 3 
`The Digital Prototype is highly important information because it
`anticipates most of the asserted claims and renders the remainder of the
`asserted claims obvious........................................................................................... 7 
`Invensys will not be prejudiced by the supplementation because ample
`time remains in fact discovery. ............................................................................... 8 
`A continuance is not necessary because ample fact discovery time
`remains, and Defendants would even be willing to grant Invensys a short
`extension of the discovery deadline to take two depositions as to the
`Digital Prototype. .................................................................................................... 9 
`
`C. 
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`D. 
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`CONCLUSION ................................................................................................................. 10 
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`ii
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`

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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 3 of 15 PageID #: 4783
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`TABLE OF AUTHORITIES
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`Cases 
`Alt v. Medtronic, Inc., No. 2:04-CV-370, 2006 U.S. Dist. LEXIS 4435
`(E.D. Tex. Feb. 1, 2006) ......................................................................................................... 2, 3
`Baseload Energy, Inc. v. Roberts, 619 F.3d 1357 (Fed. Cir. 2010) ................................................ 7
`Computer Acceleration Corp. v. Microsoft Corp., 481 F. Supp. 2d 620 (E.D. Tex. 2007) ............ 9
`Datatreasury Corp. v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 U.S. Dist. LEXIS
`144906 (E.D. Tex. Jan. 19, 2010) ............................................................................................... 7
`Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988) ...................................... 7
`Lear, Inc. v. Adkins, 395 U.S. 653 (1969) ...................................................................................... 7
`Mass Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284 (E.D. Tex. 2008) ...................... 7
`Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-CV-565-TJW-CE, 2011 U.S. Dist.
`LEXIS 48376 (E.D. Tex. May 5, 2011) ...................................................................................... 6
`Nidec Corp. v. LG Innotek Co., No. 6:07-CV-108-LED-JDL, 2009 U.S. Dist. LEXIS
`106667 (E.D. Tex. Sept. 2, 2009) ............................................................................................... 7
`Public Health Equip. & Supply Co. v. Clarke Mosquito Control Prods., 410 Fed. Appx.
`738 (5th Cir. 2010) ...................................................................................................................... 9
`S&W Enters., L.L.C. v. Southtrust Bank of Ala., 315 F.3d 533 (5th Cir. 2003) ............................. 3
`STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845 (E.D. Tex. 2004) ...................... 3
`Statutes 
`35 U.S.C. § 311(b) .......................................................................................................................... 8
`35 U.S.C. § 315(e)(2) ...................................................................................................................... 8
`Rules 
`P.R. 3-1 ........................................................................................................................................... 1
`P.R. 3-3 ........................................................................................................................................... 1
`P.R. 3-6(b) ............................................................................................................................... 1, 2, 3
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`iii
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 4 of 15 PageID #: 4784
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`I.
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`INTRODUCTION
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`Pursuant to P.R. 3-6(b), Defendants Micro Motion, Inc. and Emerson Electric Co. request
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`that the Court enter an order permitting Defendants to supplement their invalidity contentions to
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`reflect new evidence of a digital prototype Coriolis flow meter developed by Howard Derby
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`(“Digital Prototype”) that anticipates most of the asserted patent claims and renders the
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`remainder of the asserted claims obvious.
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`II.
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`BACKGROUND
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`Plaintiff Invensys Systems, Inc. initiated this lawsuit by filing an original complaint on
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`October 22, 2012 asserting infringement of four patents. (Dkt. No. 1.) On January 31, 2013,
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`Invensys filed its amended complaint alleging infringement of a total of seven patents. (Dkt. No.
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`25.) On July 17, 2013, Invensys served its P.R. 3-1 infringement contentions as to Defendants.
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`On September 13, 2013, Defendants served their P.R. 3-3 invalidity contentions.
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`Since the inception of this case, Defendants’ counsel has diligently investigated the prior
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`art that relates to the Invensys patents-in-suit, but did not uncover the evidence of Mr. Derby’s
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`development of the Digital Prototype until May, 2014. As described below, Defendants’ counsel
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`discovered evidence of conception and possibly of reduction to practice prior to November 1997
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`of a digital prototype controller that might have used digital signal processing to generate a drive
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`signal on April 22, 2014, while preparing a Micro Motion employee for an upcoming 30(b)(6)
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`deposition. (See Declaration of Jeffrey N. Costakos (“Costakos Decl.”) ¶ 4.) In the weeks
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`following April 22, counsel interviewed another Micro Motion engineer and a former Micro
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`Motion consultant, which led to the discovery of information relating to the conception,
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`reduction to practice and features of the Digital Prototype, including approximately 500 pages of
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`relevant documents. Defendants promptly advised plaintiff’s counsel of these new discoveries
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`and produced the newly-discovered relevant documents on May 20 and May 23. On May 24,
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 5 of 15 PageID #: 4785
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`Defendants provided plaintiff’s counsel with a detailed supplement to their invalidity contentions
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`addressing the Digital Prototype. (Declaration of Richard S. Florsheim (“Florsheim Decl.”) ¶ 7,
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`Ex. C (Defendants’ proposed supplementation to invalidity contentions).) On May 28, 2014,
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`counsel for Defendants met-and-conferred with plaintiff’s counsel to discuss whether plaintiff
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`would consent to the Court’s granting of Defendants’ motion for leave to supplement their
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`invalidity contentions, to which Plaintiff did not consent. (Id. ¶ 8.) Defendants now seek leave
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`pursuant to P.R. 3-6(b) to supplement their invalidity contentions to incorporate the important
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`new evidence and basis of invalidity.
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`As further explained below, the Digital Prototype is highly important information
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`because it anticipates most of the asserted claims and renders the remainder obvious. Invensys
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`will not be prejudiced if Defendants are permitted to supplement their invalidity contentions to
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`reflect the Digital Prototype prior art because there is ample time remaining before the close of
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`fact discovery for plaintiff to depose the two witnesses with firsthand knowledge of the
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`conception and reduction to practice of the Digital Prototype. Indeed, Invensys had not sought to
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`take any individual depositions prior to the date of the meet-and-confer, and, as of the date of
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`filing of this motion, had not taken a single substantive deposition. Invensys has, in fact, noticed
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`the depositions of those two witnesses, setting one to take place on July 8 and asking Defendants
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`to arrange a date for the other. (Florsheim Decl. ¶ 9.) Moreover, Defendants would be willing to
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`grant Invensys a short extension of the discovery deadline, if necessary, to take those two
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`depositions as to the Digital Prototype.
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`III.
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`LEGAL STANDARD
`
`A party must obtain “the Court’s leave on a good cause showing to modify the Patent
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`Rule’s deadlines.” Alt v. Medtronic, Inc., No. 2:04-CV-370, 2006 U.S. Dist. LEXIS 4435, at
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`*4-5 (E.D. Tex. Feb. 1, 2006) (citing STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d
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`
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`2
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`

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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 6 of 15 PageID #: 4786
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`845, 849 (E.D. Tex. 2004)). Patent Rule 3-6(b) expressly incorporates the good cause standard of
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`Fed. R. Civ. P. 16. See P.R. 3-6(b) (amendment or supplementation to infringement or invalidity
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`contentions “may be made only by order of the Court, which shall be entered only upon a
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`showing of good cause”).
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`A trial court has broad discretion in allowing scheduling order modifications. Medtronic,
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`2006 U.S. Dist. LEXIS 4435, at *5. Four factors are relevant to this analysis: (1) the explanation
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`for the failure to meet the deadline; (2) the importance of the thing that would be excluded; (3)
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`potential prejudice in allowing the thing that would be excluded; and (4) the availability of a
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`continuance to cure such prejudice. Id. at *5-6 (citing S&W Enters., L.L.C. v. Southtrust Bank of
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`Ala., 315 F.3d 533, 535-36 (5th Cir. 2003)).
`
`IV.
`
`DISCUSSION
`
`A.
`
`Defendants’ counsel diligently investigated the prior art, but did not uncover
`the evidence showing that Howard Derby had developed a digital prototype
`that anticipated most of the asserted claims until May, 2014.
`
`Defendants’ counsel began its investigation of whether Micro Motion itself had
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`developed any anticipatory prior art as early as November 30, 2012. (Costakos Decl. ¶ 2.) On
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`that date, counsel met with a number of Micro Motion employees, including Micro Motion
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`engineers Craig McAnally and Rick Maginnis, to go over the history of Micro Motion’s
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`development of Coriolis flow meters that employed digital signal processing. (Id.; Declaration of
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`Craig McAnally (“McAnally Decl.”) ¶¶ 1-2; Declaration of Richard Maginnis (“Maginnis
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`Decl.”) ¶¶ 1-2.) Neither of those Micro Motion engineers had any recollection of Micro Motion
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`having actually designed or built any flow meter controller prior to November 26, 1997 that
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`generated a drive signal using digital signal processing. (McAnally Decl. ¶¶ 2-3; Maginnis Decl.
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`¶¶ 5-8.)
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`3
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 7 of 15 PageID #: 4787
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`Following that meeting, Defendants’ counsel continued to investigate potential prior art.
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`For example, one prior art Micro Motion patent issued in 1990 to Paul Romano. (Costakos Decl.
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`¶ 3.) That patent, U.S. Pat. No. 4,934,196, disclosed the use of digital signal processing both to
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`determine the mass flow rate and to generate the signals to drive the flow tube oscillation.1 (Id.)
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`Defendants’ counsel sought evidence of the reduction to practice of the inventions described in
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`the Romano patent, but, due to the passage of time between that work (in the late 1980s and early
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`1990s) and the filing of the complaint in 2012, very little evidence remained in existence.2 (Id.)
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`Defendants’ counsel received and produced to plaintiff’s counsel numerous Micro
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`Motion documents, including documents from Mr. Maginnis and Mr. McAnally’s files, during
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`2013. However, none of those documents showed that Micro Motion had actually reduced to
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`practice any flow meter controller prior to November 26, 1997 that generated a drive signal using
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`digital signal processing. (Florsheim Decl. ¶ 10.)
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`On April 22, 2014, defendants’ counsel met with Mr. Maginnis in connection with a Rule
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`30(b)(6) deposition noticed by Invensys. (Costakos Decl. ¶ 4.) Mr. Maginnis first joined Micro
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`Motion on September 30, 1997. (Maginnis Decl. ¶ 1.) He was hired to commercialize a new
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`Coriolis flowmeter product using digital signal processing technology. (Id.) He stated that he had
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`a prototype that used digital signal processing to control the drive signal, but that prototype was
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`not built until 1998 – after the November 1997 filing date of the plaintiff’s patent application.
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`(Id. ¶¶ 3-4.) When he was asked whether he was aware whether anyone at Micro Motion had
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`1 Indeed, on June 2, 2014, the United States Patent and Trademark Office Patent Trial and Appeal Board
`(PTAB) relied on the Romano patent, among others, in deciding that Micro Motion had demonstrated a
`reasonable likelihood that all but four of the asserted claims in the Invensys patents in the original
`complaint were invalid. Based on this finding, the PTAB instituted four inter partes review (IPR)
`proceedings regarding the patentability of those claims.
`2 Although the accused products in this case were introduced in 2006, Invensys did not file its complaint
`until 2012.
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`4
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 8 of 15 PageID #: 4788
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`built an earlier prototype that used digital signal processing, he said he believed there was an
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`earlier prototype known as the “fishbowl” but that he did not know the details of that prototype.
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`(Id. ¶ 4; see also Costakos Decl. ¶ 4.) Mr. Maginnis also did some further investigation and
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`located a schematic that predated his employment. (Maginnis Decl. ¶ 3.) Investigation has shown
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`that the work in that schematic was performed at Micro Motion by Tony Pankratz (a Micro
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`Motion employee) and Howard Derby (a former consultant for Micro Motion). (Id.)
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`After uncovering this initial information about the Digital Prototype, Defendants’ counsel
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`acted diligently to learn additional facts and to bring these facts to the attention of opposing
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`counsel. (Florsheim Decl. ¶¶ 2-8; Costakos Decl. ¶¶ 4-7.) The week of April following the April
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`23 meeting with Mr. Maginnis was consumed by preparations for and attendance at the May 1
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`Markman hearing in this matter, so Defendants’ counsel was first able to schedule an interview
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`of Mr. Pankratz the following week. (Florsheim Decl. ¶ 4.) During those two weeks, Defendants’
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`counsel first learned that there were additional documents that would evidence the conception
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`and actual reduction to practice prior to November 1997 of a Coriolis flow meter controller that
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`used digital signal processing to control a drive signal and that a former consultant to Micro
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`Motion, Howard Derby, was responsible for designing the circuit and writing the code relating to
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`the Digital Prototype. (Id. ¶ 5.)
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`An interview of Mr. Derby was scheduled and conducted on May 22, 2014. (Florsheim
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`Decl. ¶ 6; Costakos Decl. ¶ 5.) Between May 7, 2014 and May 22, 2014, in connection with
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`those interviews, Defendants’ counsel received approximately 500 pages of additional
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`documents from Micro Motion corroborating the conception and reduction to practice of the
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`Digital Prototype. (Costakos Decl. ¶ 6.) All of those documents were produced to opposing
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`counsel on May 20 and May 23. (Id.) Defendants also supplemented their Rule 26(a) disclosures
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`5
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 9 of 15 PageID #: 4789
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`to specifically identify Mr. Pankratz and Mr. Derby as having knowledge of this subject. (Id.
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`¶ 7.) Simultaneously with the examination of those documents and the interviews of Mr.
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`Pankratz and Mr. Derby, Defendants’ counsel prepared supplemental invalidity contentions
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`reflecting the information they were learning. (Florsheim Decl. ¶ 6.) Those supplemental
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`invalidity contentions, including seven claim charts covering all 55 of the asserted patent claims
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`and running a total of 109 pages in length, took over a week to draft and were served on
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`opposing counsel on May 24, 2014. (Id. ¶ 7 & Ex. C.)
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`Thus, despite the diligent investigation of prior art conducted by Defendants’ counsel, it
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`did not uncover the evidence of Mr. Derby’s development of the Digital Prototype until May,
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`2014 through a series of interviews that were triggered by information discovered during the
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`course of preparing Mr. Maginnis on April 23 for an upcoming 30(b)(6) deposition. This Court
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`has previously held that the discovery of new information during the course of preparing a
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`witness for a deposition justified that party’s request to amend or supplement its invalidity
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`contentions. Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-CV-565-TJW-CE, 2011 U.S. Dist.
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`LEXIS 48376, at *15-17 (E.D. Tex. May 5, 2011) (permitting defendant to amend its invalidity
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`contentions by adding an anticipating prior use by a deposition witness of a prior art device,
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`where the anticipating prior use was first discovered by counsel while preparing the witness for
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`his deposition).
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`Moreover, Defendants’ counsel acted diligently by promptly advising plaintiff’s counsel
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`of the new information and serving supplemental invalidity contentions less than two weeks
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`after first interviewing the first witness who had firsthand knowledge of its conception and actual
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`reduction to practice. Where, as here, a party takes significant efforts within a matter of weeks to
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`inform opposing counsel of new invalidity contentions, diligence exists. See Datatreasury Corp.
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`6
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`

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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 10 of 15 PageID #: 4790
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`v. Wells Fargo & Co., No. 2:06-CV-72 DF, 2010 U.S. Dist. LEXIS 144906, at *30 (E.D. Tex.
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`Jan. 19, 2010) (reasonable diligence found even where plaintiff provided proposed amended
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`contentions to opposing counsel two months after notifying opposing counsel of intent to amend
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`contentions to add new instrumentalities); Nidec Corp. v. LG Innotek Co., No. 6:07-CV-108-
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`LED-JDL, 2009 U.S. Dist. LEXIS 106667, at *5-6 (E.D. Tex. Sept. 2, 2009) (sufficient diligence
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`for good cause shown where plaintiff provided notice of its intent to amend its contentions
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`“within weeks” after new information was disclosed by defendant and where plaintiff filed a
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`motion for leave to amend nine days after defendant rejected its proposal).
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`B.
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`The Digital Prototype is highly important information because it anticipates
`most of the asserted claims and renders the remainder of the asserted claims
`obvious.
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`Information that invalidates the claims of patents being asserted in litigation is obviously
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`highly important to the proper outcome of the litigation. Mass Engineered Design, Inc. v.
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`Ergotron, Inc., 250 F.R.D. 284, 286 (E.D. Tex. 2008) (“The exclusion of invalidity contentions
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`is highly important as exclusion would prohibit [defendant] from asserting an invalidity
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`defense.”). In addition, facilitating the introduction of such evidence promotes the highly
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`important public policy of promoting challenges to invalid patents. See, e.g., Baseload Energy,
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`Inc. v. Roberts, 619 F.3d 1357, 1361-62 (Fed. Cir. 2010); Diamond Scientific Co. v. Ambico,
`
`Inc., 848 F.2d 1220, 1225 (Fed. Cir. 1988); Lear, Inc. v. Adkins, 395 U.S. 653, 656 (1969) (there
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`is a strong federal policy favoring free competition in ideas which do not merit patent
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`protection).
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`The Digital Prototype is particularly important evidence in this case. Because of the
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`estoppel effect arising from the USPTO’s grant of the inter partes reviews defendants have filed
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`at the USPTO as to all seven of the asserted Invensys patents, the nature and number of the
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`pieces of prior art Defendants will be able to rely on at the trial of this matter as to asserted
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`7
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`

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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 11 of 15 PageID #: 4791
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`patent claims for which inter partes review is instituted and completed will be limited. 35 U.S.C.
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`§ 315(e)(2) (petitioner in an inter partes review of a claim that results in a final written decision
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`may not assert in a civil action that the claim is invalid on any ground that the petitioner raised or
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`reasonably could have raised during that inter partes review). However, inter partes reviews can
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`be based only on patents and printed publications, 35 U.S.C. § 311(b), so the estoppel provision
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`does not apply to other types of prior art— including prior inventions such as the Digital
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`Prototype that are not patents or printed publications.
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`The Digital Prototype will likely be the most important piece of such prior art available to
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`Defendants at trial. Defendants will be able to show, through both the testimony of witnesses and
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`documentary evidence, that the Digital Prototype was conceived before the December 11, 1996
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`date Invensys claims as its date of conception for six of its seven asserted patents. (Florsheim
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`Decl. ¶ 2, Ex. B at 6-7.) In fact, Defendants will be able to show that the detailed schematic for
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`the controller of the Digital Prototype was drawn not later than December 7, 1996. (Id. ¶ 2, Ex. A
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`(schematic, filed herewith under seal).) Defendants will also be able to show, again through both
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`the testimony of witnesses and documentary evidence, that the Digital Prototype was reduced to
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`practice before the November 26, 1997 filing date of the earliest of the Invensys patent
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`applications. Further, Defendants will be able to show that the Digital Prototype anticipated over
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`30 of the 55 asserted claims, and that it, alone or in combination with details taught in other
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`references, renders all of the remaining asserted claims invalid for obviousness. (Id. ¶ 7, Ex. C.)
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`C.
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`Invensys will not be prejudiced by the supplementation because ample time
`remains in fact discovery.
`
`As noted above, Invensys has been aware of Defendants’ intent to supplement its
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`invalidity contentions since May 24, 2014, when Defendants provided to plaintiff’s counsel a
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`detailed supplement to their invalidity contentions addressing the Digital Prototype. Fact
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`8
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 12 of 15 PageID #: 4792
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`discovery will not close in this case until July 16, 2014 (Dkt. No. 103 at 3) — more than seven
`
`weeks after plaintiff received this information, allowing ample time for Invensys to take
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`discovery as to the Digital Prototype. See Public Health Equip. & Supply Co. v. Clarke
`
`Mosquito Control Prods., 410 Fed. Appx. 738, 741 (5th Cir. 2010); Computer Acceleration
`
`Corp. v. Microsoft Corp., 481 F. Supp. 2d 620, 626 (E.D. Tex. 2007). Thus, Defendants’
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`proposed supplemental invalidity contentions will not require any modification to the existing
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`docket control order. (Dkt. No. 103.)
`
`More importantly, at the time plaintiff’s counsel received this information, it had not yet
`
`taken a single deposition of Micro Motion on any technical issues. (Costakos Decl. ¶ 8.) Indeed
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`the first such deposition—the 30(b)(6) deposition of Mr. Maginnis—was not and is not
`
`scheduled to occur until June 12 or 13. (Id.) That deposition was originally scheduled for May 22
`
`or 23, but was postponed at plaintiff’s request prior to Micro Motion’s disclosure of the Digital
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`Prototype. (Id.) Any claim of prejudice on the part of Invensys is undermined by its own decision
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`to wait until the last few weeks of fact discovery to begin taking depositions on technical issues.
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`Computer Acceleration, 481 F. Supp. 2d at 626 (the fact that plaintiff had not yet taken a single
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`deposition of a Microsoft witness indicated that any prejudice was not great). The fact that trial is
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`set for October 13, 2015—more than sixteen months from now—further weakens any claim of
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`prejudice by Invensys.
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`D.
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`A continuance is not necessary because ample fact discovery time remains,
`and Defendants would even be willing to grant Invensys a short extension of
`the discovery deadline to take two depositions as to the Digital Prototype.
`
`As discussed above, in light of the current stage of the case, Defendants’ proposed
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`supplementation to their invalidity contentions would not require modifying the existing docket
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`control order. (Dkt. No. 103.) With more than five weeks remaining until the close of fact
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`discovery, ample time remains for plaintiff to take the depositions of Mr. Pankratz and Mr.
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`9
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 13 of 15 PageID #: 4793
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`Derby. In fact, plaintiff has proposed to take Mr. Pankratz’s deposition on July 8 and has
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`requested that Defendants arrange a time and place for Mr. Derby’s deposition before the cut-off
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`of fact discovery. (Florsheim Decl. ¶ 9.) But, if the Court decides to continue dates in the docket
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`control order for these two depositions, since trial is more than sixteen months away, there is
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`sufficient room to do so. Before taking that course of action, Defendants offer that they are
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`willing to allow plaintiff to take the depositions of Mr. Pankratz and Mr. Derby up to a week
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`after the close of all other fact discovery on July 16, 2014, which would minimize any disruption
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`to the current schedule.
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`V.
`
`CONCLUSION
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`Defendants have shown diligence in investigating and bringing to Invensys’s attention
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`the Digital Prototype and the invalidity theory upon which it is based. The new evidence
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`anticipates most of the asserted patent claims and renders the remainder obvious; therefore it is
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`highly important information to the just resolution of this litigation. Invensys is not prejudiced by
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`delay because it was notified of the new evidence with more than seven weeks remaining in fact
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`discovery. Moreover, although a continuance is not necessary, Defendants would be willing to
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`allow a one week extension of the discovery period for Invensys to take two depositions as to the
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`Digital Prototype.
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`For the foregoing reasons, the Court should grant Defendants leave to supplement their
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`invalidity contentions.
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`10
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 14 of 15 PageID #: 4794
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`Respectfully submitted,
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`/s/ Jason A. Berta
`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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`Jason A. Berta, IL Bar No. 6295888
`Foley & Lardner LLP
`321 North Clark Street, Suite 2800
`Chicago, Illinois 60654
`Phone: (312) 832-4500
`Fax: (312) 832-4700
`Email: jberta@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: June 10, 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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`11
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`Case 6:12-cv-00799-JRG Document 163 Filed 06/10/14 Page 15 of 15 PageID #: 4795
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 10, 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. I also certify that on June 10, 2014 I served via
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`electronic mail to all counsel of record Exhibit A, which is to be filed under seal with the
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`foregoing document.
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`/s/ Jason A. Berta
`Jason A. Berta
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`This is to certify that Exhibit A, attached to the Declaration of Richard S. Florsheim and
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`filed in support of the foregoing document, should be filed under seal because it contains
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`material designated as confidential under the protective order approved and entered in this case
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`as Protective Order (Dkt. No. 66).
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`/s/ Jason A. Berta
`Jason A. Berta
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`12