Case 6:12-cv-00799-LED Document 231 Filed 10/10/14 Page 1 of 5 PageID #: 6593
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-799-LED
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`and
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`Defendants.
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`MICRO MOTION INC., USA,
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`v.
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`Counterclaim-Plaintiff,
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`INVENSYS SYSTEMS, INC.’S MOTION TO DEFER REBUTTAL INVALIDITY
`EXPERT REPORT ON DEFENDANTS’ NEW PRIOR ART REFERENCES
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`EAST\83696337.4
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`Case 6:12-cv-00799-LED Document 231 Filed 10/10/14 Page 2 of 5 PageID #: 6594
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`Plaintiff Invensys Systems, Inc. (“Invensys”) requests permission to defer preparing a
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`rebuttal report addressing the newly asserted prior art references in Defendants Emerson Electric
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`Co.’s and Micro Motion, Inc.’s (collectively “Defendants”) invalidity report. If the Court allows
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`Defendants to assert these new references, Invensys will promptly take any necessary discovery
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`and prepare a rebuttal report addressing them.
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`BACKGROUND
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`Defendants filed their original invalidity contentions on September 13, 2013. On June
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`10, 2014, Defendants filed their Motion for Leave to Supplement Invalidity Contentions, ECF
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`No. 163. Defendants’ supplemental invalidity contentions seek to add as new prior art references
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`prototype flowmeters Defendants claim to have developed. The schematics for those prototypes
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`were apparently forgotten in a filing cabinet for almost a decade, and Defendants made no
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`meaningful effort to locate them (even though they were in the office of Richard Maginnis, one
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`of the two witnesses Defendants identified in their original transfer motion). The Court has not
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`yet ruled on Defendants’ motion to supplement invalidity contentions (which is fully briefed).
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`On September 25, 2014, Defendants served amended invalidity contentions, which also
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`sought to add Defendants’ prototypes as new references, ostensibly on the basis of Local Patent
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`Rule 3-6(a)(2). Contemporaneously with this motion, Invensys is filing a motion to strike
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`Defendants’ amended invalidity contentions.
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`In sum, because Defendants sought to add the
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`exact same references in their supplemental invalidity contentions two months before the Court
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`issued its claim construction order, Defendants cannot have a good faith belief that the claim
`construction order had any bearing on the relevance of those references.1 See LOCAL PAT. R. 3-
`6(a)(2).
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`1 Additional details concerning Defendants’ belated and improper attempts to add these new
`references are set forth in Invensys’s briefing on Defendants’ Motion for Leave to Supplement
`Invalidity Contentions and Invensys’s Motion to Strike Defendants’ Amended Invalidity
`Contentions. See Pl.’s Resp. in Opp’n to Defs.’ Mot. for Leave to Supplement Invalidity
`Contentions, ECF No. 169; Pl.’s Sur-reply in Opp’n to Defs.’ Mot. for Leave to Supplement
`Invalidity Contentions, ECF No. 187; Pl.’s Motion to Strike Defs.’ Am.
`Invalidity
`Contentions, ECF No. ___.
`To avoid burdening the Court with duplicative briefing,
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`EAST\83696337.4
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`1
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`Case 6:12-cv-00799-LED Document 231 Filed 10/10/14 Page 3 of 5 PageID #: 6595
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`On October 6, 2014, Defendants served their invalidity report.2 The expert report relies
`heavily on the prototype flowmeters to which Invensys has objected.
`Invensys’s rebuttal
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`invalidity report is due in approximately five weeks, on November 19, 2014. See 5th Am Docket
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`Control Order at 3, ECF No. 212.
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`ARGUMENT
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`Invensys should not be required to respond to invalidity arguments based on new prior art
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`references when the Court has not authorized Defendants to supplement or amend their invalidity
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`contentions. Defendants’ were not diligent in locating these references, adding them at this late
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`stage in the case would prejudice Invensys, and Defendants’ attempt to rely on Local Patent Rule
`3-6(a)(2) is baseless.3
`expert report to address references that Defendants did not properly disclose. In fact, it will be
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`Invensys should not be required to spend time and money preparing an
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`completely unnecessary for Invensys to address these references if the Court denies Defendants’
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`motion to supplement and grants Invensys’s motion to strike. Accordingly, Invensys should not
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`be required to address the prototypes in its rebuttal expert report unless and until the Court rules
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`that Defendants can rely on the prototype references.
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`Moreover, preparing a rebuttal report on these references will require significant time,
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`effort, and expense. For example, it is unclear whether Defendants have even produced all
`documents relevant to the prototypes. In their amended invalidity contentions,4 Defendants cited
`numerous documents that were never mentioned in any previous contentions.
`In addition,
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`Defendants now claim that one of their prototypes was incorporated into a commercial product
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`Invensys’s response, sur-reply, motion to strike, and the supporting exhibits for those briefs
`are incorporated herein by reference
`2 The parties’ mutually agreed to extent the deadlines for initial expert reports.
`3 As set forth in Invensys’s Motion to Strike Defendants’ Amended Invalidity Contentions,
`Defendants’ reliance on Local Patent Rule 3-6(a)(2) is a disingenuous attempt to evade the
`good cause standard for amendments under Rule 3-6(b) (which Defendants know they cannot
`satisfy).
`4 Invensys has moved to strike the amended invalidity contentions because it is not proper under
`Local Patent Rule 3-6(a)(2). See supra note 3.
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`2
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`Case 6:12-cv-00799-LED Document 231 Filed 10/10/14 Page 4 of 5 PageID #: 6596
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`called the Altus and thus was not suppressed, abandoned, or concealed. Because Defendants did
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`not disclose the relevance of the Altus to their invalidity case before the close of fact discovery,
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`and have not produced any new documents relating to the Altus since filing their amended
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`invalidity contentions, it appears that Defendants have not produced all documents relevant to
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`the Altus. And as discussed in detail in Invensys’s Motion to Compel and for Sanctions, ECF
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`No. 167, Defendants have a history of failing to meet their discovery obligations. Finally, as
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`discussed in Invensys’s response to Defendants’ motion to supplement
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`their
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`invalidity
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`contentions, if Defendants had timely disclosed the prototypes instead of waiting until near the
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`end of fact discovery, Invensys might have chosen to assert different claims.
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`In summary, Invensys should not be required to prepare a rebuttal expert report
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`addressing prior art that was not properly disclosed. Because Defendants’ new prototype
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`references should be stricken, preparing a rebuttal report addressing those references would be a
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`waste of Invensys’s time and money.
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`Indeed, this expense will be considerable in light of the
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`significant new discovery that Defendants’ prototypes will require.
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`CONCLUSION
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`For the foregoing reasons, Invensys requests that the Court defer requiring Invensys to
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`prepare a rebuttal report addressing the newly asserted prior art references in Defendants’
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`invalidity report.
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`Dated: October 10, 2014
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`Respectfully submitted,
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`Dawn M. Jenkins
`State Bar No. 24074484
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
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`EAST\83696337.4
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`3
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`Case 6:12-cv-00799-LED Document 231 Filed 10/10/14 Page 5 of 5 PageID #: 6597
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`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Dawn.Jenkins@dlapiper.com
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`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`Todd S. Patterson
`DLA PIPER LLP
`401 Congress Ave., Suite 2500
`Austin, TX 78701-3799
`Telephone: 512.457.7017
`Facsimile: 512.721.2217
`todd.patterson@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
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`CERTIFICATE OF CONFERENCE
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`On October 10, 2014, Jeffrey Johnson, counsel for Invensys, conferred with Jeffrey
`Costakos, counsel for Defendants, about the relief requested in this motion, and Mr. Costakos
`stated that he was opposed to the requested relief.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on October 10, 2014, all counsel of record who are deemed
`to have consented to electronic service are being served with a copy of this document via the
`Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served
`by facsimile transmission and/or first class mail.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`EAST\83696337.4
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`4