Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 1 of 12 PageID #: 6604
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Plaintiff,
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`Case No. 6:12-cv-00799-LED
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`INVENSYS SYSTEMS, INC.,
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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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`MICRO MOTION, INC.’S AND EMERSON ELECTRIC CO.’S RESPONSE BRIEF IN
`OPPOSITION TO INVENSYS SYSTEMS, INC.’S MOTION TO DEFER INVALIDITY
`EXPERT REPORT ON DEFENDANTS’ NEW PRIOR ART REFERENCES
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 2 of 12 PageID #: 6605
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`Invensys’s request to be excused from responding to Defendants’ strong digital prototype
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`prior art is not justified by the facts, and will seriously impact the Docket Control Order in this
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`matter. Defendants disclosed this digital prototype prior art in May of 2014, shortly after
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`learning of it, and provided document and deposition discovery to Invensys in June and July of
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`2014. The Defendants’ expert report relies on the same documents produced to Invensys. There
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`can be no prejudice to require Invensys to respond to the prior art it has not only known about,
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`but has taken extensive discovery on.1
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`The Discovery Order governing this case provides “no excuses” because a party
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`“challenges the sufficiency of another party’s disclosures.” (Dkt. 53, ¶ 13.) Therefore, unless
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`and until the Court rules that the Micro Motion Digital Prototypes cannot be relied upon, that
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`prior art is in the case and the parties’ expert reports should address it. The Court should require
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`Invensys to follow the normal course and respond to Defendants’ invalidity expert reports as
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`they relate to the Micro Motion Digital Prototypes.
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`I.
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`BACKGROUND
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`Invensys initiated this lawsuit by filing an original complaint on October 22, 2012
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`asserting infringement of four patents. (Dkt. No. 1.) On January 31, 2013, Invensys filed its
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`amended complaint alleging infringement of a total of seven patents. (Dkt. No. 25.) On July 17,
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`2013, Invensys served its P.R. 3-1 infringement contentions as to Defendants. On September 13,
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`2013, Defendants served their P.R. 3-3 invalidity contentions.
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`1 In an attempt to address Invensys’s claim of prejudice, Defendants offered to delay the
`deadline for rebuttal expert reports by two weeks—which would not have disrupted the entire
`case schedule—to provide Invensys sufficient time to respond to all of Defendants’ invalidity
`arguments. Invensys did not accept the offer. Declaration of Linda E.B. Hansen (“Hansen
`Decl.”) ¶ 2.
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`1
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`4853-1216-7711.
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 3 of 12 PageID #: 6606
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`On April 22, 2014, while preparing a Micro Motion employee for an upcoming 30(b)(6)
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`deposition, Defendants’ counsel discovered evidence of the conception and possible reduction to
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`practice prior to November 1997 of a digital prototype Coriolis flow meter that appeared to have
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`used digital signal processing to generate a drive signal. (Dkt. 163 at 1.) In the following weeks,
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`Defendants’ counsel interviewed another Micro Motion engineer and a former Micro Motion
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`consultant, which led to the discovery of information showing the conception, reduction to
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`practice, and features of digital prototype Coriolis flow meters (“Digital Prototypes”) that
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`anticipate most of the asserted Invensys patent claims and render the remainder of the asserted
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`claims obvious. (Id.)
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`Defendants promptly advised Invensys’s counsel of these new discoveries by producing
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`newly-discovered relevant documents on May 20, 2014 and May 23, 2014, and by serving a
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`detailed set of Supplemental Invalidity Contentions on May 24, 2014. (Id. at 1-2; see also Dkt.
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`163-4).2 On June 10, 2014, Defendants filed their Motion for Leave to Supplement Invalidity
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`Contentions pursuant to P.R. 3-6(b) (“Motion for Leave”). (Dkt. 163.) Detailed facts relating to
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`Defendants’ counsel’s diligent investigation and disclosure of the Digital Prototype are set forth
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`in Defendants’ Motion for Leave, their reply brief filed in support thereof, and the corresponding
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`supporting declarations, all of which are incorporated herein by reference. (See e.g., id. at 3-7;
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`Dkt. 163-1, 163-2, 163-5, 163-6; Dkt. 180 at 1-3; Dkt. 180-1, 180-2, 180-3.) Defendants’ Motion
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`for Leave has been fully briefed and has not yet been ruled on by the Court.
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`2 On May 20, 2014, Defendants served supplemental initial disclosures identifying two
`witnesses, Tony Pankratz and Howard Derby, who had knowledge of the relevant work on the
`Digital Prototype. (Dkt. 163-1 ¶7.) Rick Maginnis, who was previously identified to Invensys,
`was also identified as having knowledge of the relevant work on the Digital Prototype.
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`2
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 4 of 12 PageID #: 6607
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`Defendants’ counsel’s prompt disclosure of its discovery of the Digital Prototypes
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`occurred with ample time left in fact discovery for Invensys to take discovery relating to the
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`Digital Prototypes. Indeed, Invensys took extensive discovery relating to the Digital Prototypes.
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`On July 10, 2014, Invensys took the deposition of Tony Pankratz, who worked with an outside
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`consultant, Howard Derby, on the digital prototypes. (Hansen Decl. ¶ 3.) There, Mr. Pankratz
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`testified about, among other things, a successful demonstration that he conducted of one of the
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`digital prototypes at a customer site—Cooper Industries, in Ohio—on November 7, 1996. (Id.;
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`see also Dkt. 180 at 3.) On July 29, 2014, Invensys took the deposition of Mr. Derby regarding
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`the Digital Prototypes—a deposition that was originally scheduled for July 11, 2014 but then
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`postponed until July 29th to accommodate Invensys’s request for additional time to review
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`documentation relating to the Digital Prototypes. (Dkt. 202 at 1; Hansen Decl. ¶ 4.) Mr. Derby
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`was the former consultant to Micro Motion whose retrieved electronic files contained thousands
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`of pages of material concerning the digital prototypes that were produced to Invensys in July.
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`(Hansen Decl. ¶ 4.) Invensys also took the deposition of Tamal Bose (another outside consultant
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`who worked on aspects of the Digital Prototypes) on July 1, 2014, and of Southwest Research
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`Institute (a third party subpoenaed by both Invensys and Micro Motion at whose facility one of
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`the Digital Prototypes was successfully used in June 1996) on July 10, 2014. (Id. ¶¶ 5-6.)
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`On September 25, 2014, Defendants served their Amended Invalidity Contentions
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`pursuant to P.R. 3-6(a)(2). (Id. ¶ 9.)
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`On October 6, 2014, Defendants served their expert reports. Defendants’ Invalidity
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`Expert Report of Tamal Bose, Ph.D. contained invalidity analysis of the Invensys asserted
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`patents based on, inter alia, the Digital Prototypes. (Id. ¶ 11.) The parties’ rebuttal expert
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`3
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 5 of 12 PageID #: 6608
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`reports are due on November 19, 2014 (although the parties are discussing an extended due
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`date). (Dkt. 212.)
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`On October 10, 2014, Invensys filed its Motion to Defer Rebuttal Invalidity Expert
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`Report on Defendants’ New Prior Art References. (Dkt. 231.)
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`II.
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`ARGUMENT
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`A.
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`There Is No Need for Additional Discovery Because Invensys Was Provided
`and Took Discovery on the Digital Prototypes.
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`There is no reason to delay Invensys’ rebuttal expert report on the invalidity issues raised
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`by the Digital Prototype. Invensys deposed all of the witnesses with knowledge regarding the
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`Digital Prototype by July 29, 2014. Invensys has had months to consider the testimony and the
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`evidence. There is nothing more to be done but prepare the expert report.
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`Invensys speculates that it will require additional discovery on the Digital Prototypes but
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`offers no specific examples other than their unfounded belief that “it appears that Defendants
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`have not produced all documents relevant to the Altus.” (Mot. at 3.) This speculation is not
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`supported by the facts. Invensys was made aware of Defendants’ intent to supplement its
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`invalidity contentions on May 24, 2014—with more than seven weeks remaining in fact
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`discovery—when Defendants provided a detailed supplement to their invalidity contentions
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`addressing the Digital Prototypes. (See Dkt. 163 at 9-10.)
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`Invensys had ample time during fact discovery to investigate the Digital Prototypes, and
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`it was able to do so. Invensys took the depositions of the two Micro Motion witnesses who had
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`firsthand knowledge of the development and use of the Digital Prototypes, Mr. Pankratz and Mr.
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`Derby, on July 10th and July 29th, respectively. (Hansen Decl. ¶¶ 3-4.) Invensys also took the
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`deposition of Tamal Bose on July 1, 2013, and of Southwest Research Institute on July 10, 2014.
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`(Id. ¶¶ 5-6.) Defendants produced most of the newly-discovered documents relevant to the
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`4
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 6 of 12 PageID #: 6609
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`Digital Prototypes on May 20th and May 23rd, in plenty of time prior to Invensys’s depositions
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`of Messrs. Bose, Pankratz, Derby, and Southwest Research Institute. Invensys has also been
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`provided discovery of the Altus product. Defendants produced Altus DSP sales numbers to
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`Invensys very early in the case. (MM0888153, produced 10/25/2013.) (Id. ¶ 12.) Additional
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`documents relating to the schematics of the Altus product were provided to Invensys on June 12,
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`2014 (MM1101727-36), and on June 13th Invensys took the deposition of Mr. Rick Maginnis,
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`who testified about his development work on the Altus DSP in particular. (Id. ¶¶ 7, 12.)
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`Any claim by Invensys now for additional discovery can only be the result of its own
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`litigation strategy. As of May 24, 2014, when plaintiff’s counsel received the information
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`regarding the Digital Prototypes, Invensys had only taken two depositions total (both relating to
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`email discovery), and had not yet taken a single deposition of Micro Motion on any technical
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`issues. (Id. ¶ 8.) Invensys can only blame itself for waiting until the very end of the fact
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`discovery period to pursue its investigation on technical issues. Invensys’s own delay in pursuing
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`its case undermines its claim of unfair prejudice. Computer Acceleration Corp. v. Microsoft
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`Corp., 481 F. Supp. 2d 620, 626 (E.D. Tex. 2007) (the fact that plaintiff had not yet taken a
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`single deposition of a Microsoft witness indicated that any prejudice was not great). Nor did
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`Invensys request additional time or additional discovery relating to the Digital Prototypes, even
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`though Invensys sought an extension of the expert discovery report deadline from August to
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`October. (Dkt. 182.) Invensys’s claim of prejudice is simply not consistent with the facts.
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`B.
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`Invensys’s Deferral Request Could Result in Delay That Would Be Far More
`Prejudicial to Both Parties and the Court.
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`Invensys’s request for deferral is indefinite in time. If its deferral request is granted, it
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`could result in delay that would push back the entire docket control order and possibly affect the
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`5
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 7 of 12 PageID #: 6610
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`trial date.3 In addition, if Invensys’s motion to defer were granted, that would mean that
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`Invensys would first provide an expert report without reference to the Digital Prototypes and at
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`some later date it would provide a second report on the issues raised by the Digital Prototypes.
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`That would impact expert discovery, because the parties would either need to delay the
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`deposition of their invalidity experts until both reports are filed, or the experts would be deposed
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`twice. That would impact the expert discovery deadline, as well as other deadlines in this case.
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`The only alleged prejudice identified by Invensys in its Motion would allegedly occur in
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`the event that the Court eventually disallows Defendants’ reliance on the Digital Prototypes. In
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`that situation, Invensys alleges that it would waste time and effort in responding to Defendants’
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`invalidity arguments regarding the Digital Prototypes. This argument is merely a re-hash of the
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`same prejudice argument that Invensys made in response to Defendants’ Motion for Leave. (See
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`Dkt. 169 at 11.)
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`As to Invensys’s claim that such discovery could be “wasteful,” that argument presumes
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`that the Court will both deny Micro Motion’s June 10 Motion for Leave4 and grant Invensys’s
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`October 10th motion to strike Micro Motion’s Amended Invalidity Contentions—the latter
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`motion being one that has not yet been fully briefed. In any event, the mere fact that the Court
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`3 Defendants have offered Invensys a modest two-week extension of time for rebuttal
`expert reports, which Invensys rejected. (Hansen Decl. ¶ 2), This indicates that Invensys has
`motives other than getting extra time to prepare its rebuttal report.
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`4 As fully explained in Defendants’ Motion for Leave to Supplement Invalidity
`Contentions (Dkt. 163), Defendants’ Reply in Support of Their Motion for Leave to Supplement
`Invalidity Contentions (Dkt. 180), Defendants’ Request for Leave to File Supplemental
`Authority in Support of Their Motion for Leave to Supplement Invalidity Contentions (Dkt.
`202), and Defendants’ Reply in Support of Their Request for Leave to File Supplemental
`Authority in Support of Their Motion for Leave to Supplement Invalidity Contentions (Dkt.
`218), all incorporated herein by reference to avoid duplicative briefing, Defendants should be
`allowed to rely upon the Digital Prototypes in connection with their invalidity case.
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`6
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 8 of 12 PageID #: 6611
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`has not ruled on a pending motion does not provide a party with an excuse to fail to comply with
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`the Court’s scheduling order. (Dkt. 212.)
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`Any alleged prejudice to Invensys is far outweighed by the risk of undue delay and
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`prejudice to all parties in the event that the court rules that Defendants are allowed to rely on the
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`prototypes. For example, if the Court were to grant Invensys’s deferral request, and then later
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`rules against Invensys on either of the two pending motions, holding that Defendants can rely on
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`the prototypes, the result of granting Invensys’s motion would be a huge waste of time for both
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`parties and the court because it would require complete overhaul of the docket control order into
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`a “two-track” system. Upcoming Daubert and summary judgment deadlines would have to be
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`sidetracked to allow Invensys to “catch up” with its case in rebuttal to the Digital Prototypes.
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`This may require pushing back the trial date. Likewise, if the Court grants Invensys’s motion but
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`then later allows Defendants to rely on the Digital Prototypes, the result of Invensys’s request
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`would be the same unnecessary delay in the case.
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`C.
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`Invensys Does Not Address the Burden It Must Carry to Establish “Good
`Cause” to Modify the Docket Control Order.
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`Invensys has not established, nor even offered an explanation of the factors relating to,
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`the “good cause” needed to modify the Court’s docket control order. See Southwestern Bell
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`Telephone Co. v. City of El Paso, 346 F.3d 541, 546 (5th Cir. 2003) (In determining good cause,
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`four factors are considered: (1) the explanation for the failure to timely move for leave to amend;
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`(2) the importance of the amendment; (3) potential prejudice in allowing the amendment; and (4)
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`the availability of a continuance to cure prejudice). Invensys has not explained why the relief it
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`seeks could not have been requested sooner. As mentioned above, Invensys was notified of
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`Defendants’ intention of supplementing their invalidity contentions with information about the
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`Digital Prototypes at least as early as May 24, 2014. Invensys has known since May 24, 2014—
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 9 of 12 PageID #: 6612
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`and certainly at least since June 10th—that Micro Motion intended to rely on the digital
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`prototype prior art as an key basis for its invalidity defense. Yet its response to Micro Motion’s
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`June 10th Motion for Leave made no mention of any request to defer Invensys’s submission of
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`an invalidity expert report addressing the digital prototype prior art until after that motion was
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`resolved. Invensys had nearly five months to seek modification of the docket control order, but it
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`took no action until the middle of expert discovery.
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`Invensys also has not explained the importance of the schedule modification that it seeks.
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`Indeed, any claimed importance of Invensys’s request for deferral is undercut by the fact that it
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`waited several months to seek its requested relief. See MacLean v. McCarroll, No. 4:08-cv-059,
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`2009 U.S. Dist. LEXIS 56435, at *4-5 (E.D. Tex. July 2, 2009) (“[D]oubt is cast on the
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`importance of the amendment because of its being raised at the eleventh hour.”).
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`Invensys also does not address the potential prejudice that would result if its motion was
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`granted. As explained above, Invensys’s request would needlessly delay the case pending the
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`Court’s determination of discovery motions, thus burdening all parties and the Court with
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`additional time, effort, and expense of a longer case until trial. See Todd v. Grayson County, No.
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`4:13-CV-574, 2014 U.S. Dist. LEXIS 93497, at *5 (E.D. Tex. July 10, 2014) (motion for entry
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`of new scheduling order denied because, among other reasons, the amendment would have
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`required a trial date to be moved and would have caused unnecessary delay and additional
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`expenses to the non-moving party). This kind of prejudice cannot be cured by a continuance, as
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`the appropriate course would be to keep all aspects of the case progressing toward trial (with
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`possibly a modest extension of time for both sides’ rebuttal reports) while the Court has time to
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 10 of 12 PageID #: 6613
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`consider the pending discovery motions.5 Id. (“This Court has a heavy case load, and
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`continuances are generally not available so that the Court has adequate time to rule on motions
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`before its cases proceed to trial.”). In sum, Invensys’s brief does not sufficiently address the
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`burden it must carry to convince the Court to modify the docket control order. (Dkt. 212.) See
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`STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845, 853 (E.D. Tex. 2004) (denying
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`motion that does not address the good cause standard and is otherwise vague).
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`D.
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`Invensys’s Own Expert Reports Undermine Its Claim of Prejudice.
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`Invensys’s claim of prejudice is further undermined by the length of its own expert
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`reports. On October 6, 2014, Invensys served Defendants with three expert reports consisting of
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`more than 2,600 pages. (Hansen Decl. ¶ 10.) By contrast, the two expert reports submitted by
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`Defendants on October 6th, which total approximately 335 pages, constitute a small fraction of
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`the expert disclosures submitted by Invensys. (Id. ¶ 11.) Clearly, if Invensys expects Defendants
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`to respond to the few thousands of pages of Invensys’s expert disclosures, it logically follows
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`that Invensys cannot consider it unduly burdensome or prejudicial for it to respond to the few
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`hundred pages of Defendants’ expert disclosures.
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`III. CONCLUSION
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`For the foregoing reasons, the Court should deny Invensys’s motion to defer rebuttal
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`invalidity expert reports on Defendants’ new prior art references. A proposed order is submitted
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`herewith.
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`5 On the contrary, any potential prejudice to Invensys could be cured by a modest
`extension of the expert response date (which Defendants have already offered). (Hansen Decl.
`¶ 2.)
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 11 of 12 PageID #: 6614
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`Respectfully submitted,
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`/s/ Jason A. Berta
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Linda E.B. Hansen, WI Bar No. 1000660
`Kadie M. Jelenchick, WI Bar No. 1056506
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202
`Telephone: 414.271.2400
`Facsimile: 414.297.4900
`Email: rflorsheim@foley.com
`jcostakos@foley.com
`lhansen@foley.com
`kjelenchick@foley.com
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`Jason A. Berta, IL Bar No. 6295888
`Foley & Lardner LLP
`321 North Clark Street
`Chicago, IL 60654
`Telephone: 312.832.4500
`Facsimile: 312.832.4700
`Email: jberta@foley.com
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`Attorneys for Emerson Electric Co. and
`Micro Motion, Inc.
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`Dated: October 20, 2014
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`Guy N. Harrison, State Bar No. 00000077
`Guy Harrison Law Offices
`217 N. Center Street
`Longview, TX 75601
`Telephone: 903.758.7361
`Facsimile: 903.753.9557
`Email: guy@gnhlaw.com
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`10
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`Case 6:12-cv-00799-JRG Document 234 Filed 10/20/14 Page 12 of 12 PageID #: 6615
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 20, 2014, I electronically filed the foregoing document
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`with the Clerk of Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/ Jason A. Berta
`Jason A. Berta
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`11