Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 1 of 6 PageID #: 9500
`Case 6:12—cv—00799—JRG Document 267-1 Filed 01/26/15 Page 1 of 6 Page|D #: 9500
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`EXHIBIT A
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`EXHIBIT A
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`

`
`Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 2 of 6 PageID #: 9501
`
`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 summary judgment motion on Defendants’
`affirmative defenses of: 1) anticipation and obviousness based on Defendants’ C31 and C32
`prototypes, 2) lack of enablement, and 3) insufficient written description.
`
`I.
`
`The Court Has Previously Ruled That Defendants Cannot Rely on Their Prototypes
`as Prior Art References.
`
`On November 14, 2014, the Court ruled that Defendants cannot use their C31 and C32
`prototypes as prior art references because they were not timely disclosed. All of Defendants’
`§§ 102 and 103 defenses to claims 24 and 36 of the ʼ136 Patent, claims 1 and 20 of the ʼ854
`Patent, claims 1, 4, and 8 of the ʼ594 Patent, and claim 13 of the ʼ062 Patent depend on those
`prototypes. Accordingly, Invensys is entitled to summary judgment on Defendants’ §§ 102 and
`103 defenses to those claims.1
`
`II.
`
`The Asserted Claims of the ʼ646 and ʼ761 Patents Are Enabled.
`
`A patent’s specification must “disclose information sufficient to enable those skilled in
`the art to make and use the claimed invention.” Moba, B.V. v. Diamond Automation, Inc., 325
`F.3d 1306, 1321 (Fed. Cir. 2003). Some experimentation is permissible, as long as it is not
`undue. See id. Enablement is a question of law that may be based on underlying factual
`determinations. See id.
`
`1 Invensys has also moved to strike and exclude the opinions of Defendants’ invalidity expert,
`Dr. Bose, that rely on the prototypes. Dr. Bose’s expert report was prepared before the
`November hearing at which the Court excluded the prototypes. Without Dr. Bose’s opinions,
`Defendants cannot prove anticipation or obviousness of these claims. See Alexsam, Inc. v. IDT
`Corp., 715 F.3d 1336, 1347-48 (Fed. Cir. 2013).
`
`

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`Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 3 of 6 PageID #: 9502
`
`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Two
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`A.
`
`A Skilled Artisan Would Understand the Claims and How to Practice Them.
`
`During claim construction, Defendants were granted permission to file a summary
`judgment motion asserting that several terms of the patents-in-suit were indefinite. See Defs.’
`Mot. for Summ. J. of Indefiniteness, ECF No. 144. The Court denied Defendants’ summary
`judgment motion on every term, disposing of Defendants’ indefiniteness defense. See Order at
`26-29, ECF No. 203. Defendants’ argument in their invalidity contentions and Dr. Bose’s expert
`report that all the asserted claims of the ʼ646 Patent and claim 12 of the ʼ761 Patent are not
`enabled largely mirrors their indefiniteness arguments. That is, Defendants essentially argue that
`these claims are not enabled because a skilled artisan would not understand what it means to
`“determine the flow rate” or “maintain oscillation.” The Court has already rejected those
`arguments, and Defendants should not be allowed to reurge them under the guise of enablement.
`
`B.
`
`The Specification Discloses How to Make and Use the Claimed Flowmeters.
`
`the ʼ646 Patent’s
`large portions of
`ignores
`Defendants’ enablement argument
`specification. Defendants argue that the asserted claims of the ʼ646 Patent are not enabled
`because sections K and N of the specification do not explain how the patented Coriolis
`flowmeter measures the flow rate during batching from empty. But other sections of the
`specification, titled “Drive Signal Generation” and “Measurement Generation,” explain in detail
`how the claimed Coriolis flowmeter determines the flow rate, including specific embodiments,
`references to the drawings, and equations. See ʼ646 Pat. 20:59-22:31. Defendants have offered
`no evidence suggesting that a skilled artisan reading the entire specification (not just isolated
`excerpts) and following those teachings would be unable to determine the flow rate as claimed.
`
`Similarly, Defendants conclusorily suggest that claim 12 of the ʼ761 Patent is not enabled
`because a skilled artisan could not determine how the flowtube maintains oscillation during a
`transition. Again, however, Defendants ignore the ʼ761 Patent’s explanation of how to generate
`a digital drive signal as well as the detailed disclosure of the mechanical and electronic
`components of the claimed flowmeter. See ʼ761 Pat. 9:6-10:9, 11:44-12:55, 20:56-21:67. And
`again Defendants have offered no evidence that a skilled artisan reading the entire specification
`would be unable to build a flowmeter capable of maintaining oscillation during a transition.
`
`III.
`
`The Written Description of the Patents-in-Suit Is More Than Sufficient.
`
`A patent’s specification must contain a written description of the invention sufficient to
`assure a skilled artisan that the inventor had possession of the invention at the time of the
`application. See Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir.
`2012).
`“Compliance with the written description requirement is a question of fact but is
`
`

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`Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 4 of 6 PageID #: 9503
`
`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Three
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`amenable to summary judgment in cases where no reasonable fact finder could return a verdict
`for the nonmoving party.” Id. (quotations omitted).
`
`A.
`
`Defendants Largely Reiterate Arguments the Court Has Already Rejected.
`
`Defendants’ arguments that all the asserted claims of the ʼ646 Patent, claim 12 of the
`ʼ761 Patent, claim 24 of the ʼ136 Patent, and claim 9 of the ʼ906 Patent are not adequately
`described are largely the same as the indefiniteness and claim construction positions the Court
`has previously rejected. Defendants’ written description defense should be rejected for the same
`reasons.
`
`B.
`
`The Descriptions in the Patents’ Specifications Are Extensive and Detailed.
`
`Defendants’ written description defense suffers from the same defects as their
`enablement defense. See supra Part II.B. For example, Defendants’ assertion that the ʼ646
`Patent fails to disclose how the flow rate or apparent flow rate is determined during a transition
`relies on only a few selected passages from the specification and ignores the extensive and
`detailed disclosures explaining how the patented Coriolis flowmeters work. See ʼ646 Pat. 20:59-
`22:31.
`
`Likewise, the specifications of the ʼ761 and ʼ906 Patents2 clearly explain how to generate
`a digital drive signal, which a skilled artisan considering the entire specification would
`understand can be used in batching operations. See ʼ761 Pat. 20:56-21:67; ʼ906 Pat. 20:22-
`21:26.
`In addition, the specifications contain extensive descriptions of a PI control algorithm,
`which is one way of modifying the drive signal. See ʼ761 Pat. 25:58-30:20; ʼ906 Pat. 25:1-29:3.
`Defendants’ claim that the ʼ761 and ʼ906 Patents do not disclose a digital control system is even
`more tenuous. Ten columns of the specifications are devoted to describing the digital control
`system, including references to the drawings, specific embodiments, and equations. See ʼ761
`Pat. 11:44-22:31; ʼ906 Pat. 11:29-21:55. This is sufficient to provide an adequate written
`description as a matter of law. See Streck, 665 F.3d 1286-87; see also Spine Solutions, Inc. v.
`Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1313-14 (Fed. Cir. 2010).
`
`Defendants also appear to take the position that the ʼ136 Patent’s description is
`inadequate because the ʼ646 Patent acknowledges that even the patented flowmeters do not
`provide perfect accuracy. But as explained in Invensys’s claim construction briefs, none of its
`patents, including the ʼ136 Patent, claim a flowmeter with absolutely no error rate. Because the
`
`2 Defendants assert that the written descriptions in the ʼ761 and ʼ906 Patents are inadequate for
`the same reasons.
`
`

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`Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 5 of 6 PageID #: 9504
`
`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Four
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`ʼ136 Patent describes the accuracy of the flowmeter that is actually claimed, the specification is
`adequate.
`
`the same sections of the patents Defendants rely on for their written
`In addition,
`description argument disclose test results showing that
`the patented Coriolis flowmeters
`outperformed prior art flowmeters. The inventor could not have performed these tests unless he
`had possession of the invention.
`
`C.
`
`The Alleged Discrepancies Between the Provisional and Non-Provisional
`Patent Applications Are Irrelevant
`to the Sufficiency of
`the Written
`Description.
`
`Defendants also assert that there are discrepancies between the provisional application for
`the ʼ646 Patent and the non-provisional application. While this might raise a question as to the
`proper priority date for the ʼ646 Patent (which Defendants have not argued), it does not raise
`doubts as to the sufficiency of the patent’s written description. There is nothing improper about
`amending a provisional application, nor does the amendment imply any inadequacy, even if it
`improves the original description. In fact, the amended application supersedes the original.
`
`Going even farther afield, Defendants also argue that the ʼ136 Patent’s written
`description is inadequate because it supposedly differs from the provisional application for the
`ʼ646 Patent. It is entirely unclear how the provisional application for a different patent could
`affect the validity of the ʼ136 Patent. The ʼ136 Patent does not even claim priority to the ʼ646
`Patent.
`
`IV.
`
`Defendants’ Should Not Be Allowed to Rely on Facts That Should Have Been
`Disclosed During Discovery.
`
`Defendants refused to provide adequate discovery on the factual bases for their
`affirmative defenses.
`In particular, Defendants’ 30(b)(6) representative on this issue, Richard
`Maginnis, admitted that he was not prepared to testify about the factual basis of any of the
`affirmative defenses Defendants had pled,
`including their § 112 defenses. Accordingly,
`Defendants should not be allowed to raise factual disputes or submit evidence in support of their
`affirmative defenses in response to this letter brief, to any motion for summary judgment, or at
`trial, if those facts were not properly disclosed during discovery.
`
`For the foregoing reasons, Invensys requests permission to file a summary judgment
`motion on Defendants’ affirmative defenses of: 1) anticipation and obviousness based on
`Defendants’ C31 and C32 prototypes, 2) lack of enablement, and 3) insufficient written
`description.
`
`

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`Case 6:12-cv-00799-JRG Document 267-1 Filed 01/26/15 Page 6 of 6 PageID #: 9505
`
`The Honorable Rodney Gilstrap
`January 26, 2015
`Page Five
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`cc:
`
`All Counsel of Record (via ECF)
`
`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost