Case 6:12-cv-00799-JRG Document 261-1 Filed 01/26/15 Page 1 of 4 PageID #: 9457
`Case 6:12—cv—00799—JRG Document 261-1 Filed 01/26/15 Page 1 of 4 Page|D #: 9457
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`EXHIBIT A
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`EXHIBIT A
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`

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`Case 6:12-cv-00799-JRG Document 261-1 Filed 01/26/15 Page 2 of 4 PageID #: 9458
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`DLA Piper LLP (US)
`1000 Louisiana Street, Suite 2800
`Houston, Texas 77002-5005
`www.dlapiper.com
`
`Claudia Wilson Frost
`claudia.frost@dlapiper.com
`T 713.425.8450
`F 713.300.6050
`
`January 26, 2015
`
`The Honorable Rodney Gilstrap
`U.S. District Court for the Eastern District of Texas
`211 W. Ferguson
`Tyler, Texas 75702
`
`Re:
`
`C.A. No. 6:12-cv-799-JRG; Invensys Systems, Inc. v. Emerson Electric Co., et al.
`
`Dear Judge Gilstrap:
`
`Invensys requests permission to file a motion to strike the expert report of Dr. Tamal
`Bose, Defendants’ invalidity expert, on certain subjects and to preclude Defendants from
`offering those opinions at trial. Dr. Bose’s report should be stricken under Daubert and Rule 37
`to the extent that he: 1) relies on Defendants’ C31 and C32 prototypes, contrary to the Court’s
`ruling that Defendants could not use their prototypes as prior art references, 2) uses claim
`constructions that differ from the constructions adopted by the Court, 3) relies on the Astrom
`reference, which was not included in Defendants’ Preliminary Election of prior art references,
`and 4) relies on the expert report of Dr. Harry Direen, which is unreliable and should also be
`stricken.1
`
`I.
`
`The Court Has Previously Ruled That Defendants Cannot Rely on the C31 and C32
`Prototypes as Prior Art References.
`
`Dr. Bose’s report relies extensively on Defendants’ prototypes, even though the Court has
`previously ruled that Defendants could not use their prototypes as prior art references because
`they were not timely disclosed.2 The Court should enforce its previous decision and strike all of
`Dr. Bose’s invalidity opinions that rely on the prototypes.
`
`II.
`
`Dr. Bose Fails to Apply the Court’s Claim Constructions.
`
`In forming several of his invalidity opinions, Dr. Bose fails to apply the Court’s claim
`constructions or relies on claim construction positions the Court has previously rejected. For
`example, the independent claims from which both claim 12 of the ʼ761 Patent and claim 9 of the
`ʼ906 depend recite an “output module.” The Court construed “output module” as a means-plus-
`
`1 Invensys is also seeking permission to file summary judgment motions on Defendants’
`invalidity defenses based on the C31 and C32 prototypes, enablement, written description, and
`anticipation and obviousness of claim 23 of the ʼ062 Patent.
`2 Dr. Bose’s expert report was prepared before the November hearing at which the Court
`excluded the prototypes.
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`

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`Case 6:12-cv-00799-JRG Document 261-1 Filed 01/26/15 Page 3 of 4 PageID #: 9459
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`**
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`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Two
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`function element and identified the corresponding structure as the “digital-to-analog (‘D/A’)
`convertors (515) of Figure 5.” Order at 10, ECF No. 203. But during his deposition Dr. Bose
`admitted that “[t]he way I’ve used the term over there [i.e., in his report] is a system or a device
`that will create an output signal.” He also testified that: “Output module is something that
`creates an output signal. So it could be a device. It could be a program. It could be some kind
`of system that provides—creates a signal output.” Dr. Bose’s opinions based on an incorrect
`interpretation of the claims are irrelevant and would not aid the jury in deciding any of the issues
`in this case. See Chicago Mercantile Exchange, Inc. v. Tech. Research Grp., LLC, 782 F. Supp.
`2d 667, 673 (N.D. Ill. 2011) (holding that testimony “predicated upon a mistaken construction”
`of the patent is “irrelevant to the issues that will be decided at trial”); see also Liquid Dynamics
`Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006) (excluding evidence based on
`an incorrect claim construction was appropriate); cf. Imperium (IP) Holdings, Inc. v. Apple, Inc.,
`No. 4:11-CV-163, 2013 WL 322053, at *4 (E.D. Tex. Jan. 28, 2013) (“If Defendants attempt to
`present arguments that are inconsistent with the court’s claim construction analysis, the issue can
`be addressed through motions to strike expert testimony . . . .”).
`
`III.
`
`Defendants Failed to Properly Disclose the Astrom Reference.
`
`On September 13, 2013, Defendants served Invensys with their Invalidity Contentions,
`which included Astrom (a textbook). On December 17, 2013, Defendants served their
`Preliminary Election of Asserted Prior Art, which did not include Astrom. On September 3,
`2014, almost a year later, Defendants served their Final Election of Asserted Prior Art, which
`attempted to reintroduce the Astrom reference. Dr. Bose also relied on the previously abandoned
`Astrom reference in his expert report, which was served on October 6, 2014.
`
`The Court’s Docket Control Order expressly states that Defendants’ Final Election of
`Asserted Prior Art “shall identify no more than 6 asserted prior art references per patent from
`among the 12 prior art references previously identified for that particular patent.” 5th Am.
`Docket Control Order at 4, ECF No. 212 (emphasis added). Defendants’ attempt to slip Astrom
`back into their Final Election and Dr. Bose’s report, after dropping it from their Preliminary
`Election, is a blatant violation of the Court’s Docket Control Order. Moreover, Invensys relied
`on Defendants’ Preliminary Election of Asserted Prior Art in making its own Final Election of
`Asserted Claims. Allowing Defendants to reclaim previously abandoned references at this stage
`of the case would prejudice Invensys. Accordingly, the Court should strike all of Dr. Bose’s
`invalidity opinions that rely on the Astrom reference.
`
`IV.
`
`Dr. Bose Relied on Dr. Direen’s Report, Which Is Unreliable.
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`Dr. Direen’s report is unreliable for the reasons set forth in Invensys’s letter brief
`requesting permission to file a motion to strike that report (filed contemporaneously herewith).
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`

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`Case 6:12-cv-00799-JRG Document 261-1 Filed 01/26/15 Page 4 of 4 PageID #: 9460
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`**
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`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Three
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`If Dr. Direen’s report is stricken, then any of Dr. Bose’s opinions that rely on Dr. Direen’s report
`should be stricken as well.
`
`For the foregoing reasons, Invensys requests permission to file a motion to strike Dr.
`Bose’s report and exclude his testimony to the extent he: 1) relies on Defendants’ C31 and C32
`prototypes, 2) uses claim constructions that differ from the constructions adopted by the Court,
`3) relies on the Astrom reference, and 4) relies on Dr. Direen’s expert report.
`
`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`
`cc:
`
`All Counsel of Record (via ECF)