Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 1 of 7 PageID #: 9172
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`C.A. No. 6:12-cv-799-LED
`
`JURY TRIAL DEMANDED
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`§
`
`Plaintiff,
`§
`v.
`
`§
`
`
`§
`EMERSON ELECTRIC CO. and
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Defendants.
`§
`and
`
`§
`
`
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Counterclaim-Plaintiff,
`§
`v.
`
`§
`
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`
`Counterclaim-Defendant. §
`
`JOINT STATUS REPORT
`
`
`
`Pursuant to the Court’s October 31, 2014 Order (Dkt. 238), Invensys Systems, Inc.
`
`(“Plaintiff”) and Micro Motion, Inc. and Emerson Electric Co. (“Defendants”) (collectively, “the
`
`parties”) submit this joint status report concerning the Motions1 set for hearing on November 12,
`
`2014.
`
`The parties met and conferred in good faith to resolve their outstanding issues. On
`
`November 4 2014, Claudia Frost, Jeffrey Johnson, and Chris Richart, counsel for Plaintiff, and
`
`Kadie Jelenchick, Jeff Costakos and Linda Hansen, counsel for Defendants, met and conferred
`
`by telephone. On November 5, 2014, counsel for Plaintiff and Defendants again met and
`
`conferred by telephone. The parties also exchanged written proposals for compromise by e-mail.
`
`1 Defendants’ Motion for Leave to Supplement Invalidity Contentions (Docket No. 163); Plaintiff’s Motion to
`Compel and for Sanctions (Docket No. 167); Defendants’ Motion to Compel Production of Documents (Docket No.
`172); Defendants’ Renewed Motion to Transfer Venue (Docket No. 213); and Plaintiff’s Motion to Strike
`Defendants’ Amended Invalidity Contentions (Docket No. 230).
`
`
`
`C.A. No. 6:12-cv-799-LED
`
`JURY TRIAL DEMANDED
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`§
`
`Plaintiff,
`§
`v.
`
`§
`
`
`§
`EMERSON ELECTRIC CO. and
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Defendants.
`§
`and
`
`§
`
`
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Counterclaim-Plaintiff,
`§
`v.
`
`§
`
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`
`Counterclaim-Defendant. §
`
`JOINT STATUS REPORT
`
`
`
`Pursuant to the Court’s October 31, 2014 Order (Dkt. 238), Invensys Systems, Inc.
`
`(“Plaintiff”) and Micro Motion, Inc. and Emerson Electric Co. (“Defendants”) (collectively, “the
`
`parties”) submit this joint status report concerning the Motions1 set for hearing on November 12,
`
`2014.
`
`The parties met and conferred in good faith to resolve their outstanding issues. On
`
`November 4 2014, Claudia Frost, Jeffrey Johnson, and Chris Richart, counsel for Plaintiff, and
`
`Kadie Jelenchick, Jeff Costakos and Linda Hansen, counsel for Defendants, met and conferred
`
`by telephone. On November 5, 2014, counsel for Plaintiff and Defendants again met and
`
`conferred by telephone. The parties also exchanged written proposals for compromise by e-mail.
`
`1 Defendants’ Motion for Leave to Supplement Invalidity Contentions (Docket No. 163); Plaintiff’s Motion to
`Compel and for Sanctions (Docket No. 167); Defendants’ Motion to Compel Production of Documents (Docket No.
`172); Defendants’ Renewed Motion to Transfer Venue (Docket No. 213); and Plaintiff’s Motion to Strike
`Defendants’ Amended Invalidity Contentions (Docket No. 230).
`
`
`
`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 2 of 7 PageID #: 9173
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`The agreements the parties reached are set forth below. None of the pending motions were
`
`completely resolved. Agreements reached:
`
`I.
`
`Plaintiff’s Motion to Compel and for Sanctions (Dkt. No. 167)
`
`A.
`
`Email requested from Micro Motion and Emerson by Invensys
`
`Micro Motion and Emerson will produce non-privileged emails that Invensys requested,
`
`but will not produce the email custodians for further deposition.
`
`Micro Motion and Emerson will produce and stipulate to the authenticity of the non-
`
`privileged emails identified in the 7.30.2014 Email Report.
`
`Any privileged emails that are withheld that predate the parties’ agreed-upon September
`
`1, 2012 logging date will be logged.
`
`Micro Motion and Emerson are also willing to bring the custodians to trial if Invensys so
`
`requests provided that the custodian is employed by either Emerson Electric Co. or Micro
`
`Motion, Inc. and located in the United States. Further, if Micro Motion or Emerson have control
`
`or a right of control over the custodian, then Micro Motion or Emerson agree to bring the
`
`custodian to trial if requested. Micro Motion and Emerson’s agreement does not extend to
`
`custodian Chris Connor, who resides in Singapore, and disputed issues relating to Mr. Connor
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`will be raised at the November 12, 2014 hearing.
`
`B.
`
`Sales information for the period 2006-present for the 9739 MVD and the
`2200S transmitters
`
`Micro Motion will produce sales information for the period 2006-present for the 9739
`
`
`
`MVD and the 2200S transmitters.
`
`
`
`Micro Motion agrees that all sales data produced in the case is evidence that can be used
`
`at trial with an appropriate witness.
`
`Micro Motion will not object to Invensys including the newly-produced sales information
`
`
`
`2
`
`
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`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 3 of 7 PageID #: 9174
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`for the 9739 MVD and 2200S in its damages expert report. Invensys will not object to Micro
`
`Motion’s expert addressing this issue in his rebuttal report, and will work with Micro Motion to
`
`adjust the due date of this report as appropriate.
`
`The parties agree to attempt to work out a means by which each side’s damages expert
`
`will only need to be deposed once in light of the newly provided information by Micro Motion
`
`and any resultant supplementation before the expert discovery deadline.
`
` Micro Motion customer lists
`
`C.
`
`Micro Motion will allow Invensys to inspect its customer lists for the 2006 to present
`
`
`
`time period provided that it is treated like source code under the protective order.
`
`Micro Motion will not object to Invensys including information gleaned from the
`
`inspection of the customer list in its damages expert report. Invensys will not object to Micro
`
`Motion’s expert addressing this issue in his rebuttal report, and will work with Micro Motion to
`
`adjust the due date of this report as appropriate.
`
`The parties agree to attempt to work out a means by which each side’s damages expert
`
`will only need to be deposed once in light of the newly provided information by Micro Motion
`
`and any resultant supplementation before the expert discovery deadline.
`
`D. Worldwide sales information
`
`
`
`Invensys withdraws its request for this information based on Micro Motion and
`
`Emerson’s representation that the summary sales information produced to date includes sales
`
`information for all products made in the US and sold anywhere in the world.
`
`E.
`
`Related transmitter sales data
`
`
`
`Micro Motion will provide a summary of its sales information for the 700 product for the
`
`time period of 2006 until present.
`
`
`
`3
`
`
`
`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 4 of 7 PageID #: 9175
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`Micro Motion will not object to Invensys including the newly-produced sales information
`
`or information derived therefrom in its damages expert report. Invensys will not object to Micro
`
`Motion’s expert addressing this issue in his rebuttal report, and will work with Micro Motion to
`
`adjust the due date of this report as appropriate.
`
`The parties agree to attempt to work out a means by which each side’s damages expert
`
`will only need to be deposed once in light of the newly provided information by Micro Motion
`
`and any resultant supplementation before the expert discovery deadline.
`
`F. Motion for Sanctions
`
`
`
`In light of the above agreements, Invensys will withdraw its pending motion for sanctions
`
`with respect to Micro Motion. Invensys reserves its rights to raise these issues at the appropriate
`
`time in connection with any assertion that this is an exceptional case. As for Emerson, Invensys
`
`will withdraw its pending motion for sanctions as to requests for relief 3-8 in the conclusion
`
`section of its motion (Dkt. No. 167, at page 15), but reserves its rights to raise the issues in its
`
`pending motion for sanctions at the appropriate time in connection with any assertion that this is
`
`an exceptional case should the Court not declare it exceptional at this juncture. Requests for
`
`relief 1 and 2 remain extant.
`
`As a result of the agreements set forth in sections I.A.-F., the only issue remaining for
`
`resolution at this time from the Motion to Compel and for Sanctions (Dkt. No. 167) are requests
`
`for relief 1 and 2 described in section I.F. and the Chris Connor dispute set forth in I.A above.
`
`II. Defendants’ Motion to Compel Production of Documents (Dkt. No. 172)
`
`
`
`The parties were unable to reach agreement with respect to this motion. Micro Motion
`
`and Emerson were willing to discuss the scope of the alleged waiver with respect to the Dickson
`
`document referred to in the Shore Chan pleading.
`
`
`
`4
`
`
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`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 5 of 7 PageID #: 9176
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`
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`Invensys agreed that, reserving all rights and without waiver of any privilege, it would
`
`not object to defendants use of the statement in Shore Chan’s pleadings (set forth within the box
`
`drawn thereon by Defendants in their motion to compel, Dkt. No. 172, at page 3) on the basis of
`
`privilege.
`
`III. Defendants’ Renewed Motion to Transfer Venue (Dkt. No. 213)
`
`The parties were unable to reach agreement with respect to this motion.
`
`Plaintiff’s Motion to Strike Defendants’ Amended Invalidity Contentions
`(Dkt. No. 230)
`
`The parties were unable to reach agreement with respect to this motion. As to this
`
`
`
`IV.
`
`
`
`
`motion and the motion for leave to supplement (Dkt. No. 163), the Defendants proposed that
`
`Invensys withdraw this motion and that the Defendants withdraw their Motion to Exclude and
`
`Strike Certain Paragraphs of the Expert Report on Infringement of Prof. Jeffrey J. Rodriguez
`
`(Dkt. No. 239), which was filed approximately two hours before the November 4 meet and
`
`confer and which Invensys believes is in any event not in compliance with the Court’s rules.
`
`Invensys was not prepared to consider this proposal.
`
`Defendants’ Motion for Leave to Supplement Invalidity Contentions (Dkt. No. 163)
`
`The parties were unable to reach agreement with respect to this motion.
`
`5
`
`V.
`
`
`
`
`
`
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`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 6 of 7 PageID #: 9177
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`Dated: November 5, 2014
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`/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
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Dawn.Jenkins@dlapiper.com
`
`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
`
`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
`
`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
`
`
`6
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`
`
`Case 6:12-cv-00799-LED Document 241 Filed 11/05/14 Page 7 of 7 PageID #: 9178
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`
`
`
`
`/s/ Kadie M. Jelenchick
`Linda E.B. Hansen, WI Bar 1000660
`Richard S. Florshein, WI Bar 1015905
`Jeffrey N. Costakos, WI Bar 1008225
`Kadie M. Jelenchick, WI Bar 1056506
`FOLEY & LARDNER LLP
`777 East Wisconsin Ave.
`Milwaukee, WI 53202
`Telephone: 414.271.2400
`Facsimile: 414.297.4900
`lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`
`Jason A. Berta, IL Bar 6295888
`321 North Clark St., Suite 2800
`Chicago, IL 60654
`Telephone: 312.832.4500
`Facsimile: 312.832.4700
`jberta@foley.com
`
`Guy N. Harrison, TX Bar 00000077
`Guy Harrison Law Offices
`217 N. Center St.
`Longview, TX 75601
`Telephone: 903.758.7361
`Facsimile: 903.753.9557
`guy@gnhlaw.com
`
`ATTORNEYS FOR MICRO MOTION,
`INC. and EMERSON ELECTRIC CO.
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that on November 5, 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.
`
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`
`
`
`
`
`7
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