Case 6:12-cv-00799-JRG Document 270-1 Filed 01/26/15 Page 1 of 5 PageID #: 9522
`Case 6:l2—c:v—OO799—JRG Document 270-1 Filed 01/26/15 Page 1 of 5 Page|D #: 9522
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Case 6:12-cv-00799-JRG Document 270-1 Filed 01/26/15 Page 2 of 5 PageID #: 9523
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`FOLEY & L ARDN ER LLP
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`January 26, 2015
`
`The Honorable Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`100 East Houston Street
`Marshall, TX 75670
`
`ATTORNEYS AT LAW
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`Re:
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-JRG
`Dear Judge Gilstrap:
`Pursuant to the Docket Control Order, as amended (Dkt. No. 244-9), Defendants,
`Emerson Electric Co. and Micro Motion, Inc. (collectively, “Micro Motion”), respectfully
`request permission to file a Daubert motion to exclude and strike the opinions and testimony of
`Plaintiff Invensys Systems, Inc.’s (“Invensys”) technical expert, Dr. Christopher D. Rahn,
`because, inter alia, he is not qualified as an expert in the area which is the subject matter of his
`testimony.1
`All of Dr. Rahn’s opinions on the subject of patent validity address issues that turn on
`what a person of ordinary skill in the relevant art would have considered anticipatory or obvious
`in approximately 1997-1998 or what that person would have understood from reading the
`Invensys patents. However, Dr. Rahn fails to meet Daubert’s minimum requirements to testify
`about such matters because he is not a person of ordinary skill in the art of digital Coriolis flow
`meters. Dr. Rahn’s opinions about alleged copying by Micro Motion and other secondary
`considerations of nonobviousness should also be excluded because has no specialized knowledge
`about those topics, and his testimony will not assist the trier of fact.
`I.
`AN EXPERT’S OPINION SHOULD BE EXCLUDED IF HE IS NOT QUALIFIED
`AS AN EXPERT IN THE AREA WHICH IS THE SUBJECT MATTER OF THE
`WITNESS’S TESTIMONY
`Rule 702 of the Federal Rules of Evidence requires that an expert have “scientific,
`technical, or other specialized knowledge” in the area for which testimony is proffered. See Fed.
`R. Evid. 702; Watkins v. Telsmith, Inc., 121 F.3d 984, 991 (5th Cir. 1997) (citing Daubert v.
`Merrell Dow Pharms., Inc., 509 U.S. 579 (1993)). No matter how credentialed an expert may
`be, an expert’s testimony must be limited to his specific area of expertise. For example, in
`Watkins – a products liability case involving belt conveyors – the plaintiff’s expert was properly
`excluded because he lacked specialized knowledge about the design of belt conveyors; his
`general civil engineering background and personal observations of conveyors were not
`sufficiently qualifying. Watkins, 121 F.3d at 987, 991-92.
`This general rule of law applies with full force to proposed expert testimony in a patent
`infringement case. The Federal Circuit has held that “where an issue calls for consideration of
`
`1 The opinions that are the subject of this request are set forth in the Expert Report of Dr. Christopher D. Rahn
`Regarding Validity of Invensys Patents dated December 5, 2014.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`4846-1129-2705.
`
`

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`evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to
`allow a witness to testify on the issue who is not qualified as a technical expert in the art.”
`Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008). The issues of
`anticipation, obviousness, indefiniteness, written description, and enablement of the Invensys
`patents – topics covered by Dr. Rahn in his expert report – are all evaluated from the perspective
`of a person of ordinary skill in the art of digital Coriolis flow meters. Because Dr. Rahn does not
`have the relevant technical expertise in Coriolis flow meters, and therefore he is not qualified to
`testify about such matters, it would be an abuse of discretion to allow him to do so. Id.; see also
`Proveris Sci. Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1268 (Fed. Cir. 2008); Flex-Rest, LLC
`v. Steelcase, Inc., 455 F.3d 1351, 1360 (Fed. Cir. 2006).
`II.
`DR. RAHN IS NOT QUALIFIED TO OPINE AS TO WHAT A POSITA OF
`DIGITAL CORIOLIS FLOW METERS WOULD HAVE UNDERSTOOD FROM
`THE INVENSYS PATENTS AND RELEVANT PRIOR ART
`A.
`The Pertinent Art In This Case Is Digital Coriolis Flow Meters
`In an apparent effort to cast Dr. Rahn as knowledgeable about what a POSITA might
`have thought, Invensys attempts to define the relevant “art” to which the Invensys patents relate
`as “digital signal processing and dynamic control of vibrational systems such as Coriolis mass
`flow meters and the like.” Rahn Rpt. at 7-8. This definition is too broad. As explained below,
`under Federal Circuit law, the pertinent art in this case more narrowly applies specifically to
`digital Coriolis mass flow meters.
`In determining the relevant art for purposes of defining the POSITA, courts consider “the
`prior art, the problems giving rise to the invention, and the invention itself.” Mintz v. Dietz &
`Watson, Inc., 679 F.3d 1372, 1376 (Fed. Cir. 2012). When applied to the patents-in-suit, these
`three factors make clear that the art should be limited to digital Coriolis mass flow meters. First,
`the prior art establishes that the pertinent art is Coriolis flow meters. For example, there are 42
`patents cited on the face of the ’136 Patent.2 At least 36 of those 42 prior art patents relate
`directly to Coriolis mass flow meters, and many include the words “Coriolis” and/or “mass flow”
`or “mass flowmeter” in their titles and abstracts. Moreover, each prior art patent that formed the
`grounds upon which Inter Partes Review of the ’136 Patent was petitioned and instituted relates
`specifically to Coriolis flow meters.
`The second factor relied upon in Mintz – the “problems giving rise to the invention” –
`makes clear that the relevant art is digital Coriolis flow meters. The “Background” and
`“Summary” sections of the ’136 Patent specification discuss traditional Coriolis flow meters and
`how the claimed invention “provides a digital flowmeter” which offer “a number of advantages
`over traditional, analog approaches.” See ’136 Pat. 1:22-65. Inventor Dr. Manus Henry
`explained during a deposition that his work was directed at doing “a purely digital
`implementation” of the “analogue Coriolis flowmeter.” See 5/7/2014 Henry Dep. 17:16-25:6.
`The third factor relied upon in Mintz – the invention itself – conclusively defines the
`pertinent art as digital Coriolis flow meters. Asserted claims 24 and 36 of the ’136 patent are
`
`2 Five of the six other patents-in-suit claim priority to the ’136 patent and/or to the same provisional application
`from which the ’136 Patent claims priority. In addition, for purposes of its damages case Invensys has not
`distinguished infringement of one patent-in-suit from any other patent-in-suit.
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`directed to a “digital flowmeter comprising … a vibratable conduit … a driver … a sensor …
`and a control and measurement system … to generate a measurement of a property of material
`flowing through … .” It is undisputed that these recited claim elements are the components of a
`standard digital Coriolis flow meter, not just any “vibrational system.” Other extrinsic evidence,
`including the background and experience of the typical employees that work at companies like
`Micro Motion and Foxboro with these devices, further establish that digital Coriolis flow meters
`– not “digital signal processing and dynamic control of vibrational systems” – as the pertinent
`art.
`
`B.
`
`Dr. Rahn Lacks Relevant Knowledge, Skill, Experience, Training, Or
`Education Respecting Digital Coriolis Flow Meters
`Dr. Rahn is not himself a person of ordinary skill in the art of digital Coriolis flow
`meters, or, for that matter, any Coriolis flow meters. Whatever his credentials may be in the
`general area of “electromechanical systems” and “vibration of structures” – as stated in his
`expert report – Dr. Rahn admitted at his deposition that: (1) he has never designed a Coriolis
`flow meter, (2) he has no patents on Coriolis flow meters, (3) he did not recall ever writing an
`article about Coriolis flow meters, and (4) he did not recall ever attending any meetings with any
`group whose primary focus was designing flow meters. Rahn 12/18/2014 Dep. 17:5-22; 20:2-
`21:3. Moreover, other than Manus Henry and one other unnamed colleague, Dr. Rahn did not
`recall ever having a single conversation about Coriolis flow meters with anyone. Id. at 30:12-20.
`In fact, prior to working on this case, he had never seen in person a Micro Motion or Invensys
`Coriolis flow meter, or even heard of Micro Motion or Invensys. Id. at 33:12-24; 34:8-35:6;
`39:16-22.
`It is unequivocal that Dr. Rahn has no knowledge, skill, experience, training, or education
`relating specifically to Coriolis flow meters, let alone any such experience during the time
`leading up to the 1997-1998 earliest filing date of the Invensys patents. His general expertise in
`“digital signal processing” is not sufficient. See e.g., Extreme Networks, Inc. v. Enterasys
`Networks, Inc., Nos. 2009-1325, -1346, 2010 U.S. App. LEXIS 20433, at *16 (Fed. Cir. Sep. 30,
`2010) (nonprecedential) (“General experience in a related field may not suffice when experience
`and skill in specific product design are necessary to resolve patent issues.”). Dr. Rahn is more of
`a “hired gun” and less of a person whose opinions in the courtroom concerning digital Coriolis
`flow meters would withstand the same scrutiny that it would among peers in that field. See
`Watkins, 121 F.3d at 991. Accordingly, his testimony should be excluded.
`III.
`DR. RAHN SHOULD NOT BE PERMITTED TO OPINE ON COPYING OR
`OTHER SECONDARY INDICIA
`Dr. Rahn opines on the alleged copying of the claimed invention on the part of Micro
`Motion and other secondary indicia of nonobviousness such as unexpected results and praise by
`others. He brings no specialized expertise on these issues. In fact, Dr. Rahn’s only testimony in
`this respect is to cherry-pick passages of particular documents (emails, deposition passages,
`internal memoranda), restate what the documents state themselves, and opine in the same manner
`that Invensys’s counsel can argue in closing. Alleged expert testimony “will not help the trier of
`fact when it offers nothing more than what lawyers for the parties can argue in closing
`arguments.” United States v. Frazier, 387 F.3d 1244, 1262-63 (11th Cir. 2004). The jury does
`not need an expert narrator.
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`

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`Case 6:12-cv-00799-JRG Document 270-1 Filed 01/26/15 Page 5 of 5 PageID #: 9526
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`FOLEY & L ARDN ER LLP
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`cc: all counsel of record (by ECF)
`
`Sincerely,
`/s/ Jeffrey N. Costakos