Case 6:12-cv-00799-JRG Document 264-1 Filed 01/26/15 Page 1 of 4 PageID #: 9477
`Case 6:12—cv—00799—JRG Document 264-1 Filed 01/26/15 Page 1 of 4 Page|D #: 9477
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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 264-1 Filed 01/26/15 Page 2 of 4 PageID #: 9478
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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 respectfully requests permission to file a motion to strike the “Rebuttal Expert
`Report of Michael D. Sidman, Ph.D.” (“Report”) and to exclude from trial any testimony by
`Dr. Sidman regarding non-infringement of Invensys’s asserted patents to the extent it relies upon
`(1) incorrect claim constructions and (2) undisclosed factual information. Invensys also requests
`permission to file a motion to strike the untimely non-infringement opinions offered in
`Dr. Sidman’s second report denominated “Rebuttal Expert Report of Michael D. Sidman, Ph.D.
`Relating to Alleged Damages” (“ Second Report”) and to exclude related trial testimony by
`Dr. Sidman.
`
`I.
`
`Failure to Apply the Correct Claim Constructions
`
`Dr. Sidman relies upon incorrect claim constructions that are contrary to the Court’s
`claim construction order. For instance, Dr. Sidman defines the term “complete cycle” to mean
`“one and only one complete cycle,” a construction the Court expressly rejected: “Accordingly,
`the claim is not limited as the Defendants argue.” Dkt. 203, at pp. 22-23. Dr. Sidman further
`argues that the term “configured to” means configured to provide a specific result “during
`Id. at p. 8 (rejecting
`flowmeter operation,” a construction which the Court also rejected.
`Defendants’ proposal of “adding words to the exact disputed claim language”). Under the
`Federal Rules of Evidence (“FRE”), expert testimony is only admissible if it is relevant and
`reliable. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 147-149 (1999). “[E]vidence based
`upon a mistaken construction of a patent is irrelevant.” Chicago Mercantile Exch., Inc. v. Tech.
`Research Grp., LLC, 782 F. Supp. 2d 667, 673 (N.D. Ill. 2011). It is therefore appropriate to
`exclude all of Dr. Sidman’s expert opinions which are based on an incorrect claim construction.
`See Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006)
`(district court did not abuse its discretion by excluding expert testimony based on an incorrect
`claim construction).
`
`

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`Case 6:12-cv-00799-JRG Document 264-1 Filed 01/26/15 Page 3 of 4 PageID #: 9479
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`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Two
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`II.
`
`Failure to Disclose Factual Support Underlying Expert Opinions
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`Federal Rule of Civil Procedure 26(a)(2)(B)(i)-(ii) requires an expert to disclose the
`“basis and reasons” for his opinions as well as the “facts and data considered.” Dr. Sidman’s
`Report is replete with factual statements for which he provides no support at all. For example,
`Dr. Sidman states without citation that Defendants disable a particular software function by
`default at the factory, but that users can turn it on for selected models. He also describes without
`citation the consistency of “mass flow rate error” in various flowtube sizes. The remaining
`unsupported statements are too numerous to list here in full. When he was asked about certain
`unsupported statements in his report, Dr. Sidman reflexively referred to conversations with
`Mr. McAnally, the details of which he could not remember and, in any event, which could not
`possibly provide support for his statements.1 Without a full disclosure of the facts and data on
`which he relied, it is impossible to judge the reliability of Dr. Sidman’s expert opinions and
`methodology. See Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc)
`(holding that the party seeking to admit expert testimony must prove its reliability); Brown v. Ill.
`Cent. R.R., 705 F.3d 531, 536 (5th Cir. 2013) (“To establish reliability under Daubert, an expert
`bears the burden of furnishing some objective, independent validation of his methodology.”)
`(quotations and alterations omitted). As a result, any unsupported opinions by Dr. Sidman must
`be excluded as unreliable.
`
`III.
`
`Failure to Offer Timely Non-Infringement Opinions
`
`Invensys served its infringement and damages expert reports on October 6, 2014. Two
`months later on December 5, 2014, Defendants served Dr. Sidman’s non-infringement expert
`report. Defendants sought and obtained an extension of time to serve their rebuttal expert report
`concerning damages to December 23, 2014. On that date, Defendants served a rebuttal report
`from their damages expert, Dr. Ugone, as well as Dr. Sidman’s Second Report. While
`Dr. Sidman’s Second Report was denominated as a report “relating to alleged damages,” it
`amounts to nothing more than a second non-infringement report. In the deposition relating to his
`Second Report, Dr. Sidman had to admit that it contained additional, new opinions concerning
`non-infringement.
`
`1 Indeed, during his deposition Dr. Sidman professed a general unfamiliarity with his sources of
`factual
`information. Dr. Sidman admitted to numerous discrepancies in the list of
`“MATERIALS CONSIDERED,” a list incorporated into his Report, which he also admitted
`he did not prepare himself or review prior to his deposition. He barely recognized the exhibits
`to his Report (he only did so because they were labeled “exhibits” and included in a stack with
`his Report on top), and he resorted to calling details in figures “superfluous” when he could
`not explain them or identify which portions of the figures he ostensibly created.
`
`

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`Case 6:12-cv-00799-JRG Document 264-1 Filed 01/26/15 Page 4 of 4 PageID #: 9480
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`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Three
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`The new non-infringement opinions in Dr. Sidman’s Second Report are unjustifiably late
`under the Court’s Docket Control Order and should be excluded on that basis. The most
`egregious example of Dr. Sidman’s untimely-disclosed opinions relates to Smart Meter
`Verification (“SMV”), a feature of the accused products included in Invensys’ infringement
`expert report. Dr. Sidman was certainly aware of the infringement allegations with respect to
`SMV, because he addressed them throughout his initial Report, disagreeing with the conclusions
`of Invensys’ expert. When asked during his Second Report deposition, Dr. Sidman admitted that
`he could have provided all of the new non-infringement opinions in his initial Report.
`Dr. Sidman further admitted that he had access to all of the materials necessary to form his new
`opinions, including the report of Invensys’ damages expert, while he was preparing his initial
`Report. According to Dr. Sidman, he did not provide these opinions in his initial Report because
`he had not yet been asked to do so by Foley & Lardner. Such an excuse cannot support late
`disclosure of expert testimony. At a minimum, Dr. Sidman’s opinions concerning SMV should
`be struck from his Damages Report.
`
`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`
`cc:
`
`All Counsel of Record (via ECF)