Case 6:12-cv-00799-JRG Document 226-1 Filed 09/17/14 Page 1 of 4 PageID #: 6473
`Case 6:12—cv—00799—JRG Document 226-1 Filed 09/17/14 Page 1 of 4 Page|D #: 6473
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`EXHIBIT 1
`
`EXHIBIT 1 
` 
`
`

`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Re:
`
`
`
`
`Dear Judge Davis:
`
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-LED
`
`Case 6:12-cv-00799-JRG Document 226-1 Filed 09/17/14 Page 2 of 4 PageID #: 6474
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`
`ATTORNEYS AT LAW
`
`FOLEY & L ARDN ER LLP
`
`
`September 17, 2014
`
`
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`
`
`Micro Motion requests guidance from the Court on how to handle several proposed amended
`claims, which Invensys has contingently requested to add in the seven inter partes review
`proceedings currently pending in the U.S. Patent and Trademark Office. Specifically, Micro Motion
`requests guidance on how to proceed regarding the contingent amended claims in the upcoming
`expert reports, which are due on October 3, 2014.
`
`As this Court knows, Micro Motion filed seven IPR requests, all of which were instituted by
`the PTO. As a result of those IPRs, the PTO found that ten of the sixteen claims asserted by
`Invensys in this litigation are likely unpatentable. On August 18, 2014, Invensys filed contingent
`requests to amend five of the eight claims pending in the first four IPRs. Invensys has also indicated
`an intention to amend the claims pending in the three other IPRs, but it has not yet done so
`(Invensys’s deadline for filing a proposed contingent amendment in these IPRs is October 10, 2014).
`In all seven IPRs, the PTO will not decide whether to consider the proposed amended claims unless
`it decides that the original claims are unpatentable. Final decisions on the first four IPRs are not
`expected until June 2015, and final decisions on the three remaining IPRs are not expected until
`August 2015.
`
`On October 3, 2014, the parties to this lawsuit are required to exchange their expert reports
`on issues that they bear the burden of proof. Thus, on August 28, 2014, Micro Motion proposed to
`Invensys that, given the contingent nature of the proposed claims, the parties defer any discussion of
`those claims until after they are allowed by the PTO, if that ever occurs. However, Invensys
`responded on September 5, 2014, that it intends to include opinions about the contingent amended
`claims for at least the first four IPRs in its opening infringement expert report. Micro Motion does
`not think this is appropriate, and therefore seeks the Court's guidance on the proper course of action.
`
`Micro Motion believes it is inappropriate to include opinions about the contingent claims at
`this time at least because:
`
`
`
`
`
`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.
`
`4848-6149-3022.
`
`

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`Case 6:12-cv-00799-JRG Document 226-1 Filed 09/17/14 Page 3 of 4 PageID #: 6475
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`
`FOLEY & L ARDN ER LLP
`September 17, 2014
`Page 2
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`1. The claims do not yet exist – and may never exist.
`2. No discovery has taken place regarding the new limitations in the contingent claims.
`3. Invensys has not complied with the Local Rules requiring infringement contentions as to
`these claims, which differ from the presently asserted claims in ways that Invensys argues, in
`the IPR’s, will make them patentable even if the PTO decides the existing claims are not
`patentable. Before serving amended infringement contentions, Invensys would be required
`to seek leave, which it has not done. See Local Patent Rule 3-6(b). Such leave should be
`denied because adding different claims at this late date in the proceedings would significantly
`prejudice Micro Motion. See Sybase, Inc. v. Vertica Sys., Civ. No. 6:08-cv-24, 2009 U.S.
`Dist. LEXIS 110775 (E.D. Tex. Nov. 30, 2009) (denying, based on prejudice, request to
`supplement infringement contentions by adding new claims from related patent).
`4. The claim terms added to the contingent claims would raise claim construction issues that
`have not yet been considered and resolved by the Court. For example, one of the proposed
`amended claims requires that the drive maintains “stable” oscillation of the flowtube.
`“Stable” is an ambiguous term, which has not been construed by the Court.
`5. Micro Motion has not had an opportunity to search for prior art that may be relevant to the
`new contingent claims. As indicated above, the claims were first proposed on August 18,
`2014, and Invensys did not indicate that it intended to include the claims in its reports until
`September 5, 2014 – less than one month before the reports are due.
`6. For three of the IPRs, Invensys has indicated an intention to amend the claims, but it has not
`yet done so. Thus, the parties will need to consider the remaining contingent claims at some
`later date. Of course, Micro Motion cannot search for new prior art for these claims until it
`knows what the proposed amendments are.
`7. The damages period for the new amended claims would run from the date of issue – i.e.,
`some date in the future. It would be nearly impossible to render a reasonable royalty opinion
`based on a future hypothetical negotiation date.
`8. The chances of these amended claims ever being allowed by the PTO are slim. As of this
`date, the PTO has allowed a party to amend claims in only one IPR, out of more than one
`hundred final decisions. Thus, requiring the parties to issue reports on these claims at this
`time would likely be a waste of time and expense.
`9. This would also be a waste of the Court's time. Presumably, if the amended claims are
`included in reports, they may also be the subject of summary judgment and Daubert motions.
`It will be a waste of everyone’s time to consider motions directed to claims that may never
`come into existence.
`
`For these reasons, Micro Motion requests guidance from the Court on how to proceed
`regarding the contingent amended claims in the upcoming expert reports, which are due on
`October 3, 2014.
`
`
`
`

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`Case 6:12-cv-00799-JRG Document 226-1 Filed 09/17/14 Page 4 of 4 PageID #: 6476
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`FOLEY & L ARDN ER LLP
`September 17, 2014
`Page 3
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`Sincerely,
`
`/s/ Jeffrey N. Costakos
`
`Jeffrey N. Costakos
`
`JNC:jrb
`
`cc: all counsel of record (by ECF)