Case 6:12-cv-00799-JRG Document 259 Filed 01/26/15 Page 1 of 5 PageID #: 9441
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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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`§§
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`§
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`§§
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`§
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`§§
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`§
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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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`Defendants.
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`PLAINTIFF INVENSYS SYSTEMS, INC.’S MOTION TO COMPEL DEFENDANTS TO
`COMPLY WITH ¶ 3 OF THE DISCOVERY ORDER
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`

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`Case 6:12-cv-00799-JRG Document 259 Filed 01/26/15 Page 2 of 5 PageID #: 9442
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`Plaintiff Invensys Systems, Inc. (“Invensys”) requests that the Court compel Defendants
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`Emerson Electric Co. and Micro Motion, Inc. (collectively “Defendants”) to comply with ¶ 3 of
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`the Discovery Order, ECF No. 53, which limits both sides to five testifying experts. Defendants
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`have designated eight testifying experts and should be ordered to withdraw their last three expert
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`witnesses (i.e., Dr. Keith Ugone, Dr. Edward Blair, and one of Bill Graber, Joel Weinstein, or
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`Richard Maginnis) or otherwise immediately designate the five expert witnesses who will testify
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`at trial.
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`BACKGROUND
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`Paragraph 3 of the Discovery Order governing this case expressly provides that “[e]ach
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`side is limited to five testifying expert witnesses.” On October 6, 2014, Defendants served two
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`expert reports, one for Dr. Tamal Bose, their invalidity expert, and one for Dr. Harry Direen,
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`their testing expert. On December 5, 2014, Defendants served a report for Dr. Sidman, their
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`non-infringement expert, and Rule 26(a)(2)(C) expert disclosures for three employees—Graber,
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`Weinstein, and Maginnis—bringing Defendants’ total number of experts to six. Finally, on
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`December 23, 2014, Defendants served reports for Dr. Blair, a survey expert, and Dr. Ugone,
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`their damages expert. This gives Defendants a total of eight testifying experts, three more than
`permitted under the Discovery Order.1
`During the parties’ meet-and-confer, Defendants expressed the view that the Discovery
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`Order did not require them to choose their five testifying experts until trial.
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`Invensys does not
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`agree with this interpretation.
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`1 Defendants have been aware of this problem for some time.
`In July 2014, when the parties
`were discussing amending the Docket Control Order, Defendants asked Invensys to agree that
`employee experts would not count against the five-expert limit in the Discovery Order in
`See
`exchange for the short extension Invensys had requested.
`Invensys did not agree.
`Invensys’s Reply in Supp. of Its Mot. to Am. Docket Control Order at 3-4, ECF No. 194; see
`also Joint Mot. to Am. Docket Control Order, ECF No. 211 (which was agreed to by the
`parties and does not exempt employee-experts from the five-expert limit in the Discovery
`Order).
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`

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`Case 6:12-cv-00799-JRG Document 259 Filed 01/26/15 Page 3 of 5 PageID #: 9443
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`ARGUMENT
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`Besides making the trial more efficient and manageable, the Discovery Order’s limitation
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`on the number of testifying experts is intended to reduce pre-trial costs and waste of judicial
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`resources by limiting the scope of expert discovery and the number of Daubert motions the
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`Court must hear. Neither pre-trial purpose is served if a party can serve as many expert reports
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`as it wants and then wait until immediately before trial to select the five it will actually call at
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`trial. (Indeed, Invensys has been forced to file letter briefs regarding six of Defendants’ experts.)
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`Moreover, Defendants’ interpretation of the Discovery Order is inconsistent with their
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`own conduct. For example, in his expert report, Dr. Ugone relies on the reports or disclosures of
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`six of Defendants’ other experts (i.e., Dr. Direen, Dr. Sidman, Dr. Blair, and Messrs. Graber,
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`Weinstein, and Maginnis). Thus, if Defendants intend to present Dr. Ugone at trial, they will
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`also be required to present expert testimony from all six of these other experts as well for a total
`of seven experts.2
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`CONCLUSION
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`For
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`the foregoing reasons,
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`Invensys respectfully requests that
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`the Court compel
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`Defendants to comply with the five-expert limit in ¶ 3 of the Discovery Order and withdraw the
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`last three expert witnesses they have offered or otherwise immediately designate their five
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`testifying expert witnesses.
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`Dated: January 26, 2015
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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
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`2 Defendants have also taken the position that Graber, Weinstein, and Maginnis may only offer
`lay opinion testimony under Federal Rule of Evidence 701, not 702.
`Invensys agrees that
`witnesses who will only offer lay opinions are not covered by ¶ 3 of the Discovery Order. But
`Defendants should still identify the five witnesses who will provide Rule 702 testimony now,
`not immediately before trial.
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`

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`Case 6:12-cv-00799-JRG Document 259 Filed 01/26/15 Page 4 of 5 PageID #: 9444
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`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
`
`Courtney Stewart
`State Bar No. 24042039
`Todd S. Patterson
`State Bar No. 24060396
`DLA Piper LLP
`401 Congress Ave., Suite 2500
`Austin, TX 78701-3799
`Telephone: 512.457.7017
`Facsimile: 512.721.2217
`courtney.stewart@dlapiper.com
`todd.patterson@dlapiper.com
`
`J. Mark Mann
`State Bar No. 12926150
`Mann | Tindel | Thompson
`300 W. Main Street
`Henderson, TX 75652
`Telephone: 903.657.8540
`Fax: 903.657.6003
`Tyler Office: 903.596.0900
`Mark@TheMannFirm.com
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`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
`
`

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`Case 6:12-cv-00799-JRG Document 259 Filed 01/26/15 Page 5 of 5 PageID #: 9445
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`CERTIFICATE OF CONFERENCE
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`On December 12, 2014, Claudia Wilson Frost, counsel for Invensys, conferred with
`Linda Hansen, counsel for Defendants, about the relief requested in this motion, and Ms. Hansen
`stated that she 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 January 26, 2015, 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