Case 6:12-cv-00799-JRG Document 221-1 Filed 09/05/14 Page 1 of 3 PageID #: 6385
`Case 6:12—cv—00799—JRG Document 221-1 Filed 09/05/14 Page 1 of 3 Page|D #: 6385
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`EXHIBIT 1
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`EXHIBIT 1 
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`Case 6:12-cv-00799-JRG Document 221-1 Filed 09/05/14 Page 2 of 3 PageID #: 6386
`ATTORNEYS AT LAW
`
`FOLEY & L ARDN ER LLP
`
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`September 5, 2014
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-LED
`
`
`
`Re:
`
`
`Dear Judge Davis:
`
`
`
` In Invensys’s August 25, 2014 responsive letter brief, (Dkt. No. 216-1), Invensys either
`admits to or does not dispute the following facts: (1) that P.R. 3-1 required Invensys to identify
`“separately for each asserted claim” each accused product, see P.R. 3.1(b); (2) that on July 15, 2013,
`Invensys served its P.R. 3-1 infringement contentions in which Invensys purportedly described the
`Micro Motion products it accuses of infringement, (see Defs.’ 8/7/07 Ltr., Dkt. No. 208-1 at 1); (3)
`that on July 12, 2014, Invensys served a Rule 26(a) supplement less than 5 days before the close of
`fact discovery; (4) that the Rule 26(a) supplement “updated” the description of the Micro Motion
`products it accuses of infringement, (Dkt. No. 216-1 at 2); (5) that P.R. 3-6(b) requires a party to
`obtain the Court’s leave with a showing of good cause to amend or supplement its P.R. 3-1
`infringement contentions; and (6) that Invensys has never sought the Court’s leave to amend its
`infringement contentions. Under these facts alone, the Court should summarily strike Invensys’s
`Rule 26(a) supplemental disclosures. Invensys failed to comply with P.R. 3-6(b) because its
`“updated” accused products description intends to amend that which was disclosed in Invensys’s
`infringement contentions. Invensys’s attempt to explain why this situation should be an exception to
`the rule boils down to two arguments, both of which fail.
`
`I.
`
`INVENSYS’S RULE 26(A) DISCLOSURES IMPROPERLY ENLARGE THE
`UNIVERSE OF ACCUSED PRODUCTS
`
`Invensys’s “updated” description of accused products provided in the Rule 26(a) supplement
`enlarges the scope of its infringement contentions in three major ways as described below.
`Invensys’s arguments to the contrary (and its attempt to avoid seeking leave of Court to amend) are
`not only incorrect, but also inconsequential. As admitted by Invensys, the “product names” listed in
`its descriptions are “exemplary,” (Dkt. No. 216-1 at 1), and therefore do not constitute the full
`universe of accused products alleged by Invensys.
`
`A. Smart Meter Verification capability. Invensys’s “updated” description accuses
`instrumentalities that “employ[] ‘Smart Meter Verification,’” whereas the original description from
`the contentions does not mention Smart Meter Verification at all. (Dkt. No. 208-1 at 1, 2.) The scope
`of this new claim is unclear. Invensys has not communicated whether it is now accusing of
`infringement the capability of Smart Meter Verification or merely the enhanced core processors that
`may utilize Smart Meter Verification. If it is the former, then Invensys has belatedly broadened the
`scope of its infringement case without satisfying P.R. 3-1(c)’s requirement to “identify[] specifically
`
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`4813-5360-0286.
`
`

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`Case 6:12-cv-00799-JRG Document 221-1 Filed 09/05/14 Page 3 of 3 PageID #: 6387
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`FOLEY & L ARDN ER LLP
`September 5, 2014
`Page 2
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`where each element of each asserted claim is found” in the accused products. This broadening is
`unfairly prejudicial to Defendants because the operability of Smart Meter Verification was never
`addressed by the parties during discovery.
`
`B. Products that utilize a Blackfin 533 microprocessor. Invensys’s “updated” description
`accuses instrumentalities that “use[] the same microprocessor included in the enhanced core
`processor,” whereas the original description from the contentions do not. (Dkt. No. 208-1 at 1, 2.)
`Micro Motion’s enhanced core processor utilizes the Blackfin 533 microprocessor, which is a
`common, high-performance general purpose processor used in many products that otherwise do not
`utilize an enhanced core processor. If Invensys is now alleging infringement by all products that
`employ a Blackfin 533 microprocessor, its infringement case has been broadened dramatically
`without any information “identifying specifically where each element of each asserted claim is
`found,” as required by P.R. 3-1(c).
`
`C. Model Nos. 2200S, FMT, 7950 and 7951. Invensys specifically added these transmitters
`and controller models to its “updated” description of accused products, even though none of them
`were identified in its infringement contentions, and none of them are interoperable with Micro
`Motion’s accused 800 enhanced core processor.
`
`II.
`
`INVENSYS HAS NOT SHOWN GOOD CAUSE TO AMEND ITS CONTENTIONS
`
`Invensys’s “good cause” argument consists of the notion that it is allegedly not “unusual” or
`“improper” to wait until the last two months of fact discovery to begin taking depositions, coupled
`with finger-pointing at Defendants’ own document production. Proving good cause—Invensys’s
`burden—requires much more. See S&W Enters. v. Southtrust Bank of Ala., 315 F.3d 533, 535 (5th
`Cir. 2003). Invensys has not provided any evidence regarding when it discovered the new
`information, why it failed to timely move to amend its contentions, or the importance of the
`amendments, all of which are factors considered in a “good cause” inquiry. See id. at 536. Invensys’s
`vague reference to “frequent meet and confers” fails to demonstrate that there is no prejudice to
`Defendants in allowing Invensys’s amendment. Finally, Invensys’s argument that Defendants should
`have raised these issues over a year ago presumes Defendants can read the minds of Invensys or its
`counsel in order to preempt Invensys from amending its infringement contentions by way of its Rule
`26(a) supplement less than 5 days before the close of fact discovery.
`
`For the reasons stated herein and in Defendants’ opening letter brief, (Dkt. No. 208-1), Micro
`Motion and Emerson respectfully request permission to file a motion to strike Plaintiff Invensys’s
`July 12, 2014 “Supplemental Disclosures,” which improperly seek to broaden the universe of
`accused products under the auspices of a Rule 26 supplement.
`
`Very truly yours,
`
`/s/ Kadie M. Jelenchick
`
`KMJ: jab
`cc: all counsel of record (by ECF)