Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 1 of 8 PageID #: 6810
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`
`Case No. 6:12-cv-00799-LED
`
`INVENSYS SYSTEMS, INC.,
`
`
`
`
`
`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
`
`
`
`
`
`Defendants.
`
`
`and
`
`MICRO MOTION INC., USA,
`
`
`
`Counterclaim-Plaintiff,
`
`vs.
`
`
`
`
`
`
`INVENSYS SYSTEMS, INC.,
`
`
`
`Counterclaim-Defendant.
`
`MICRO MOTION, INC.’S AND EMERSON ELECTRIC CO.’S SUR-REPLY IN
`OPPOSITION TO INVENSYS SYSTEMS, INC.’S MOTION TO DEFER INVALIDITY
`EXPERT REPORT ON DEFENDANTS’ NEW PRIOR ART REFERENCES
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 2 of 8 PageID #: 6811
`
`
`Unless the Court were to rule in favor of Invensys on both of two other pending motions,
`
`the Micro Motion prior art digital prototypes are in the case and the parties’ invalidity expert
`
`reports should address them. Invensys knew about this defense by May 2014 and had all the
`
`documents and deposed all of the key witnesses with knowledge regarding the Digital Prototypes
`
`before the end of July 2014. Invensys fails to explain why it took months to bring this issue to
`
`the Court’s attention, and it ignores the serious impact that its motion to defer would have on the
`
`Docket Control Order in this matter. Invensys has not established, or even fully addressed, the
`
`“good cause” needed to grant its requested relief. Invensys’s motion to defer its invalidity expert
`
`report should be denied.
`
`I.
`
`Invensys Has Not Justified the Five Month Delay in Seeking Modification of the
`Court’s Scheduling Order.
`
`Invensys does not deny that it was notified that defendants intended to rely on the Micro
`
`Motion digital prototypes on May 24, 2014. Invensys also does not deny that it did not move to
`
`modify the Court’s scheduling order with respect to its rebuttal expert reports until October 23,
`
`2014— five months later. Invensys’s five-month delay in seeking a deferral cannot be justified
`
`by the particular conduct it blames on Defendants. First, as fully explained in Defendants’
`
`briefing with respect to its Motion for Leave to Supplement Invalidity Contentions, Defendants’
`
`search for and production of information relating to the Micro Motion digital prototypes was
`
`reasonable and diligent. (See e.g., Dkt. 163 at 3-7; Dkt. 163-1, 163-2, 163-5, 163-6; Dkt. 180 at
`
`1-3; Dkt. 180-1, 180-2, 180-3.)
`
`Second, Invensys does not deny that it had the opportunity to take fact discovery
`
`regarding the prototypes, but instead challenges the dates of document production as being
`
`“misrepresented.” (Reply at 2.) The dates recited by Defendants are accurate. Micro Motion did
`
`produce most of its documents regarding the prototypes on May 20th and May 23rd (see
`
`4817-5750-4288.
`
`1
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 3 of 8 PageID #: 6812
`
`
`Costakos Decl., Dkt. 163-1 ¶¶ 5-6; Florsheim Decl., Dkt. 163-2 ¶ 6), whereas Mr. Howard
`
`Derby—a third party former consultant to Micro Motion—was unable to retrieve his documents
`
`from his old hard drives until early July (see Moran Decl., Dkt. 236-1 ¶¶ 2-3; Derby Decl., Dkt.
`
`236-2 ¶¶ 4-13). Invensys’s hairsplitting of production dates does not negate the fact—which
`
`Invensys does not deny—that it received all those documents during fact discovery and prior to
`
`its depositions of the relevant custodians. Mr. Maginnis was deposed on June 13, 2014, Mr.
`
`Pankratz and Southwest Research Institute were deposed on July 10, and Mr. Derby was deposed
`
`on July 29. (Moran Decl., Dkt. 236-1 ¶¶ 4, 11-12; Hansen Decl., Dkt. 234-1 ¶ 6.)
`
`Moreover, Invensys already took discovery regarding each of the alleged “significant
`
`differences” it identified in Defendants’ contentions. Invensys deposed Richard Maginnis on
`
`June 13, 2014, where he testified that the Altus DSP was simply a “productized” version of a
`
`digital flowmeter that had been developed before he joined Micro Motion in 1997 and that Micro
`
`Motion had sold the Altus DSP product commercially. (Maginnis Dep., Dkt. 236, Ex. 8 at 38:21-
`
`39:19, 117:11-14.) Invensys deposed Tony Pankratz on July 10, 2014, several weeks after his
`
`notebooks had been produced. (Florsheim Decl., Dkt. 163-2 ¶¶ 5-6.) While Mr. Pankratz was
`
`made available for a full seven hours, Invensys chose to depose him for only 2 hours and 20
`
`minutes. (Pankratz Dep., Dkt. 236, Ex. 9 at 3.) Mr. Pankratz testified that he had reviewed his
`
`notebooks to prepare himself for his deposition (id. at 19:6-17), and he was questioned about
`
`entries in one of his notebooks (Id. at 63:8-64:2). Mr. Pankratz also testified about the source
`
`code Mr. Derby wrote for the digital prototypes (id. at 76:4-77:11) and his successful digital
`
`prototype demonstration at Cooper Industries in Ohio in November 1996. (Id. at 80:2-20; 87:4-
`
`88:20.) Mr. Derby’s deposition was taken on July 29, 2014, more than two weeks after the
`
`electronic records retrieved from his old hard drives had been produced to counsel for Invensys.
`
`
`
`2
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 4 of 8 PageID #: 6813
`
`
`(See Moran Decl., Dkt. 236-1 ¶¶ 2-3; Derby Decl., Dkt. 236-2 ¶¶ 4-13.) Invensys also does not
`
`dispute the facts presented by Defendants in their response brief that Micro Motion produced
`
`Altus DSP sales numbers very early in the case, and additional documents relating to the
`
`schematics of the Altus product were provided to Invensys on June 12, 2014. (Dkt. 234 at 5.)
`
`The Defendants’ expert report relies on the same documents that were produced to Invensys—
`
`schematics for the C32 prototype that were produced to Invensys in May 2014 and schematics
`
`for the Altus DSP that were produced to Invensys in June. Invensys took the opportunity to
`
`depose the relevant custodians of those documents. No additional discovery is needed in order
`
`for Invensys to prepare rebuttal expert reports.
`
`II.
`
`Invensys’s Motion, if Granted, Would Have a Serious Impact on the Schedule.
`
`Invensys argues that it would be unfairly prejudiced if had to now spend time preparing
`
`an expert report addressing the digital prototypes. Invensys’s argument, however, is premised on
`
`the assumption that the Court will ultimately disallow Defendants from relying on the digital
`
`prototypes. Invensys’s claim that the prejudice to Defendants is “purely hypothetical,” is
`
`premised on that same assumption. Since the merits of Defendants’ supplementation and
`
`amendment of its invalidity contentions are addressed by the parties elsewhere, Defendants will
`
`herein incorporate by reference its briefing on that issue. (See Dkt. 234 at 6 n.4.)
`
`A grant of Invensys’s motion would seriously impact the case schedule. Invensys failed
`
`to address any of the potential scheduling problems identified by Defendants. For example,
`
`Invensys does not address, deny, or explain the logistics involved by Invensys, if its motion were
`
`granted, first providing an expert report without reference to the Digital Prototypes and at some
`
`later date it would provide a second report on the issues raised by the Digital Prototypes. Such a
`
`two-track schedule would delay the depositions of the parties’ invalidity experts until both
`
`reports are filed (or the experts would be deposed twice), which would, in turn, impact the
`
`
`
`3
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 5 of 8 PageID #: 6814
`
`
`Daubert and summary judgment deadlines in this case. Invensys does not deny that a deferral
`
`would result in a delay numerous key dates in schedule; Invensys merely argues, without
`
`explanation, that it “can accommodate” the resulting delay.1
`
`III.
`
`Invensys Has Not Established “Good Cause” For Modifying the Scheduling Order.
`
`The present motion asks the court to defer Invensys’ obligation under the current
`
`scheduling order to provide its invalidity expert report on November 19. In particular, Invensys
`
`is asking that it be permitted to file a second later invalidity expert report in the event the court
`
`were not to rule in Invensys’s favor as to both Defendants’ motion for leave to serve their May
`
`2014 supplemental invalidity contentions (Dkt. 163) and Invensys’ motion to strike Defendants’
`
`September 2014 amended invalidity contentions (Dkt. 230). The relief that Invensys seeks is to
`
`“defer”2 the deadline for the portions of its rebuttal expert report addressing the digital
`
`prototypes. Invensys’ motion failed to address the “good cause” legal standard established by
`
`this Court required to justify a modification to the Court’s scheduling orders. S.W. Bell
`
`Telephone Co. v. City of El Paso, 346 F.3d 541, 546 (5th Cir. 2003).
`
`Invensys’s attempt in its reply brief to justify its case under the good cause standard does
`
`not cure this deficiency. With respect to the first factor—explanation for the failure to timely
`
`move—Invensys does not provide a sufficient explanation as to why it delayed nearly five
`
`months in raising this issue with the Court. The contention that a “motion to defer” would have
`
`been premature five months ago ignores the facts. Micro Motion provided supplemental
`
`invalidity contentions and documents relating to the digital prototypes in May, and further
`
`
`1 Invensys’s claim of prejudice is further undermined by the length of its own expert
`reports—totaling more than 2,600 pages. (See Hansen Decl., Dkt. 234-1 ¶ 10.) Defendants
`disagree with Invensys’s claim that Invensys’s reports are supported by their prior disclosures.
`
`2 “Defer” means to “put off, delay.” Merriam-Webster, www.merriam-webster.com.
`
`
`
`4
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 6 of 8 PageID #: 6815
`
`
`documents relating to those prototypes as soon as they were retrieved from Mr. Derby’s files in
`
`July. Invensys knew full well many months ago that Defendants intended to rely on that prior art
`
`as an important part of its invalidity defense in this case. If not, why would Defendants have
`
`taken the deposition of Southwest Research Institute on these issues on July 10, and why did
`
`Invensys take Mr. Derby’s deposition on these issues on July 29? Invensys cites no case or rule
`
`of law that would have precluded Invensys from filing a motion to address the timing of its
`
`invalidity expert’s report during fact discovery, as opposed to waiting until the middle of expert
`
`discovery. Regarding the second factor—the importance of the amendment—Invensys provides
`
`no explanation as to why its expert will be unable to review the documents produced in May and
`
`July and the deposition testimony from June and July—the same materials Defendants’ expert
`
`Dr. Bose reviewed to prepare his invalidity expert’s report, which was timely served (by party
`
`stipulation) on October 6, 2014—in time to prepare his expert report. On the third factor—
`
`prejudice to Defendants—Invensys simply ignores (as explained above) the serious impact on
`
`the docket control order, which is especially apparent given that Invensys’s deferral request is
`
`indefinite in time. A grant of Invensys’s motion would result in needless delay, prejudicing both
`
`parties and the Court with drawn-out proceedings in a court system with a huge caseload.3
`
`Finally, with respect to the fourth factor, Invensys also has no explanation as to why a short
`
`continuance would or would not cure the resulting delay, especially in light of the forthcoming
`
`expert discovery deadlines, Daubert deadline, and summary judgment deadline.
`
`IV. Conclusion
`
`For the reasons stated in Defendants’ papers, the Court should deny Invensys’s motion to
`
`defer rebuttal invalidity expert reports on Defendants’ new prior art references.
`
`3 On the contrary, any potential prejudice to Invensys could be cured by a modest
`extension of the expert response date, which, as of October 27, has been agreed to by the parties.
`
`
`
`5
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 7 of 8 PageID #: 6816
`
`
`
`Dated: October 27, 2014
`
`
`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
`
`
`
`
`
`Respectfully submitted,
`
`/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
`Matthew J. Shin, WI Bar No. 1090096
`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
`mshin@foley.com
`
`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
`
`Attorneys for Emerson Electric Co. and
`Micro Motion, Inc.
`
`
`
`6
`
`

`
`Case 6:12-cv-00799-JRG Document 237 Filed 10/27/14 Page 8 of 8 PageID #: 6817
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 27, 2014, I electronically filed the foregoing document
`
`with the Clerk of Court using the CM/ECF system which will send notification of such filing via
`
`electronic mail to all counsel of record.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jason A. Berta
`Jason A. Berta