Case 6:12-cv-00799-JRG Document 163-1 Filed 06/10/14 Page 1 of 3 PageID #: 4796
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`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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` Case No. 12-CV-00799-LED
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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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`DECLARATION OF JEFFREY N. COSTAKOS
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`I, Jeffrey N. Costakos, declare as follows:
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`1.
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`I am a partner in the law firm of Foley & Lardner LLP and am a member of the
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`team representing Emerson and Micro Motion in the above captioned matter.
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`2.
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`As it relates to the above captioned matter, my colleagues and I began our
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`investigation of whether Micro Motion itself had developed any anticipatory prior art as early as
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`November 30, 2012. On that date, I met with a number of Micro Motion employees, including
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`Micro Motion engineers Craig McAnally and Rick Maginnis, to go over the history of Micro
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`Motion’s development of Coriolis flow meters that employed digital signal processing (“DSP”).
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`4835-1921-1547.
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`Case 6:12-cv-00799-JRG Document 163-1 Filed 06/10/14 Page 2 of 3 PageID #: 4797
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`We did not learn at that meeting of any prior art Micro Motion flowmeters that used DSP to
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`generate a drive signal.
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`3.
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`Following that meeting, I and other members of the team continued to investigate
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`potential prior art. For example, one prior art Micro Motion patent issued in 1990 to
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`Paul Romano. That patent, U.S. Pat. No. 4,934,196, disclosed the use of digital signal
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`processing both to determine the mass flow rate and to generate the signals to drive the flow
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`tube oscillation. We sought evidence of the reduction to practice of the inventions described
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`in the Romano patent, but, due to the passage of time between that work (in the late 1980s and
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`early 1990s) and the filing of the complaint in 2012, very little evidence remained in existence.
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`4.
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`On April 22, 2014, I met with Mr. Maginnis in connection with a Rule 30(b)(6)
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`deposition noticed by Invensys. While preparing Mr. Maginnis, I learned that others at Micro
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`Motion, prior to Mr. Maginnis’s employment, may have worked on flowmeter controllers that
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`used digital signal processing to generate a drive signal. Mr. Maginnis did some further
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`investigation and found a schematic from 1996 that corroborated this information. In the weeks
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`that followed, I and others on the team continued to investigate this earlier work.
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`5.
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`On May 22, 2014, my colleagues and I scheduled and I participated in an
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`interview of Mr. Howard Derby, a former consultant for Micro Motion who was responsible for
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`designing the circuit and writing the code relating to a digital prototype Coriolis flow meter
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`(“Digital Prototype”) that was created prior to 1997.
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`6.
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`Between May 7, 2014 and May 22, 2014, in connection with those interviews, the
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`Foley team received approximately 500 pages of additional documents from Micro Motion and
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`Mr. Derby corroborating the conception and reduction to practice of the Digital Prototype. I
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`instructed another member of the Foley team to produce all of those documents to opposing
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`2
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`Case 6:12-cv-00799-JRG Document 163-1 Filed 06/10/14 Page 3 of 3 PageID #: 4798
`Case 6:12—cv—OO799—JRG Document 163-1 Filed 06/10/14 Page 3 of 3 Page|D #: 4798
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`counsel. All of those documents were produced on opposing counsel on May 20, 2014 and May
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`23, 2014.
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`7.
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`I instructed another member of the Foley team to supplement Defendants’ Rule
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`26(a) disclosures to specifically identify Mr. Pankratz and Mr. Derby as having knowledge of
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`this subject. The supplemental initial disclosures were served upon opposing counsel on May 20,
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`2014.
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`8.
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`At the time plaintiff’ s counsel received this information——May 20 and May 23—it
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`had not yet taken a single deposition of Micro Motion on any technical issues. The first such
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`deposition——the 30(b)(6) deposition of Mr. Maginnis—was not and is not scheduled to occur
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`until June 12 or 13. That deposition was originally scheduled for May 22 or 23, but was
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`postponed at plaintiffs request prior to Micro Motion’s disclosure of the Digital Prototype.
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`Invensys did not seek any individual depositions until May 30, 2014.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Dated: June 5, 2014
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`Milwaukee, Wisconsin