Case 6:12-cv-00799-JRG Document 163-2 Filed 06/10/14 Page 1 of 3 PageID #: 4799
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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 RICHARD S. FLORSHEIM
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`Pursuant to 28 U.S.C. § 1746, I, Richard S. Florsheim, 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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`Attached hereto as Exhibit A (filed under seal) is a Micro Motion schematic dated
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`December 7, 1996 which provides evidence that Micro Motion had conceived of a controller for
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`a Coriolis flowmeter that used digital signal processing to generate a drive signal by that date.
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`That December 7, 1996 date predates December 11, 1996, which is the earliest date that Invensys
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`4829-4137-9099.
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`Case 6:12-cv-00799-JRG Document 163-2 Filed 06/10/14 Page 2 of 3 PageID #: 4800
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`has identified in its interrogatory answers as its claimed dated of conception for all but a handful
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`of the 55 claims it has asserted against defendants. See the Ex. B attached hereto.
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`3.
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`I first learned of the existence of this schematic on April 23, 2014. I obtained a
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`copy of this schematic on April 24, and set about trying to identify and arrange an interview of a
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`Micro Motion engineer who might have firsthand knowledge as to the genesis of this drawing
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`and as to whether the device depicted in the schematic was ever built and actually used in
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`conjunction with a flowtube to generate a drive signal for a Coriolis flowmeter.
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`4.
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`Most of my time the following week (April 28-May 2) was consumed with
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`preparing for and appearing at the Markman hearing in this matter, which was held on May 1.
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`5.
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`I was able to arrange for an interview of the Micro Motion engineer (who I had
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`learned was Tony Pankratz) for the following week. I obtained additional documents that
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`included evidence regarding the conception and reduction to practice of the digital prototype that
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`embodied the circuitry shown in the December 1996 schematic and had a first telephone
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`interview with Mr. Pankratz that week. I first learned of the involvement of a former consultant
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`to Micro Motion, Howard Derby, with that digital prototype on that call.
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`6.
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`During the week of May 12, I and others analyzed the documents we received the
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`prior week and that week regarding the digital prototype, and on May 22, we were able to
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`interview Howard Derby, who was able to explain some of the newly-discovered documents to
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`us, and to identify yet further relevant documents. I instructed another member of the Foley team
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`to produce these newly discovered documents to plaintiff’s counsel that same week. Among
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`those documents were pages from Mr. Pankratz’s laboratory notebooks dated in March through
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`May 1997 which evidenced the reduction to practice of the digital prototype. Simultaneously, we
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`began drafting supplemental invalidity contentions based on this newly discovered evidence,
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`Case 6:12-cv-00799-JRG Document 163-2 Filed 06/10/14 Page 3 of 3 PageID #: 4801
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`including over 100 pages of claim charts that compared the digital prototype to all 55 of the
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`claims of the seven patents Invensys has asserted against defendants.
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`7.
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`On May 24, I emailed those supplemental invalidity contentions – a copy of
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`which is attached hereto as Ex. C -- to plaintiff’s counsel, and asked for a “meet and confer” to
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`discuss whether Invensys would agree that we could inform the Court that Invensys did not
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`oppose a motion by defendants for leave to amend their invalidity contentions.
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`8.
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`That “meet and confer” was held on May 28, 2014. Plaintiff’s counsel declined to
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`consent to the granting of defendants’ motion for leave to amend their invalidity contentions.
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`9.
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`On May 30, 2014, Invensys served noticed of deposition on defendants’ counsel,
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`which, among other things, asked to schedule the deposition of Mr. Pankratz for July 8, 2014,
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`and asked defendants’ counsel to try to arrange a date for the deposition of Mr. Derby.
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`10.
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`I asked for all the documents we received from Micro Motion prior to April 2014
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`that referred to Mr. Derby or to the C32 processor shown in the December 1996 schematic and
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`reviewed them to determine whether there were any documents that reflected that Mr. Derby or
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`Mr. Pankratz had actually designed, made or used a prototype controller for a Coriolis flowmeter
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`that used digital signal processing to generate a drive signal prior to November 1997. I did not
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`see any documents that reflected that information.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Dated: June 4, 2014
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`Milwaukee, Wisconsin
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