Case 6:12-cv-00799-JRG Document 280-1 Filed 02/12/15 Page 1 of 5 PageID #: 9573
`Case 6:12—cv—00799—JRG Document 280-1 Filed 02/12/15 Page 1 of 5 Page|D #: 9573
`
`EXHIBIT A
`
`EXHIBIT A
`
`

`
`Case 6:12-cv-00799-JRG Document 280-1 Filed 02/12/15 Page 2 of 5 PageID #: 9574
`
`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
`
`February 12, 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:
`
`Defendants’ argument for striking the expert report of Invensys’s infringement expert,
`Dr. Jeffrey Rodriguez, and excluding his testimony lack merit: 1) Defendants waived any
`complaints they may have had about the sufficiency of Invensys’s infringement contentions by
`waiting a year to raise them; 2) any problems with Invensys’s infringement contentions are
`attributable to Defendants’ failure to provide full discovery concerning their source code; 3) Dr.
`Rodriguez’s testimony will help the jury understand Defendants’ internal technical and sales
`documents; and 4) Dr. Rodriguez’s opinions on convoyed sales are only intended to show that
`the various components of the accused products make up a single functional unit.
`
`I.
`
`Any Alleged Defects in Invensys’s Infringement Contentions Do Not Support
`Striking Dr. Rodriguez’s Expert Report.
`
`A.
`
`Defendants Waived Their Complaints About the Infringement Contentions.
`
`Invensys’s infringement contentions expressly notified Defendants that Invensys would
`be relying on Defendants’ source code to prove infringement. Defendants essentially admit that
`they have been aware of the alleged defects in these contentions since at least October 2013,
`when they produced their source code and Invensys did not amend its infringement contentions.
`See Defs.’ Ltr. Br. at 2, ECF No. 269-1. But Defendants waited nine months, until two days
`before the close of fact discovery, to voice those complaints, which they then buried in an
`interrogatory response. Defendants did not seek to resolve this matter in a timely manner (e.g.,
`by contacting counsel for Invensys and requesting supplemental contentions), instead asserting
`that
`the alleged deficiencies in Invensys’s infringement contentions were “fatal
`to its
`infringement case” after it was too late for Invensys to remedy these alleged defects.1 Defs.’
`
`1 In contrast,
`invalidity
`their
`to supplement
`Invensys objected to Defendants’ attempt
`contentions less than a week after they were served. See Defs.’ Mot. for Leave to Supplement
`Invalidity Contentions at 1-2, ECF No.163.
`Invensys filed its motion to strike Defendants’
`amended contentions within three weeks of being served. See Pl.’s Mot. to Strike Defs.’ Am.
`Invalidity Contentions at 1-2, ECF No. 230.
`
`

`
`Case 6:12-cv-00799-JRG Document 280-1 Filed 02/12/15 Page 3 of 5 PageID #: 9575
`
`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Two
`
`Resp. to Pl.’s 2d Set of Interrogatories (Nos. 6-15) at 18. And as discussed below, Defendants’
`were also playing games with source code discovery up until the final days of fact discovery.
`See infra Part I.B.
`
`The Court addressed similar conduct in Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d
`815 (E.D. Tex. 2006). In Orion, the patentee, Orion, served its infringement contentions a year
`before the accused infringer, Toyota, raised any complaints about their sufficiency. See id. at
`816. Instead, of attempting to timely resolve the dispute over the scope of Orion’s infringement
`allegations, “Toyota opted to wait to clarify the issue until such time that it could claim prejudice
`if the PICs were not read as narrowly as it wanted.” Id. at 817. The Court rejected Toyota’s
`attack on Orion’s expert and condemned Toyota’s gamesmanship: “A defendant cannot lay
`behind the log until late in the case and then claim it lacks notice as to the scope of the case or
`the infringement contentions. . . . [T]he burden of notice the Patent Rules place on plaintiffs is
`intended to be a shield for defendants, not a sword.” Id. at 818; accord Fenner Invs., Ltd. v.
`Hewlett-Packard Co., No. 6:08-CV-273, 2010 WL 786606, at *3 (E.D. Tex. Feb. 26, 2010);
`Honeywell Int’l, Inc. v. Acer Am. Corp., 655 F. Supp. 2d 650, 656-57 (E.D. Tex. 2009).
`
`Like the defendant in Orion, Defendants made a tactical decision to lay behind the log
`until late in the case (two days before the close of fact discovery) so that they could claim
`“prejudice.” Even then Defendants chose to bury their complaints in an interrogatory response
`instead of seeking to resolve the issue. Defendants’ manufactured complaints about Dr.
`Rodriguez’s report should not be countenanced.2
`
`B.
`
`Defendants Never Provided Full Discovery Regarding Their Source Code.
`
`Defendants never provided Invensys with a witness who could answer Invensys’s
`questions about the source code. Any deficiencies in Invensys’s infringement contentions are
`attributable to Defendants’ failure to provide complete discovery regarding their source code.
`
`Topic 4 of Invensys’s March 9, 2014, 30(b)(6) deposition notice to Micro Motion
`specifically covered source code for the accused products. Defendants originally designated
`Richard Maginnis on this topic (and many others), but there was insufficient time to cover this
`topic during the one day Maginnis was available for deposition. Accordingly, counsel for
`Defendants promised to produce another witness to testify about Defendants’ source code.
`
`2 In addition, on November 4, 2104, Defendants filed a motion to strike Dr. Rodriguez’s report
`on the same grounds they now raise in their letter brief. See generally id. On November 12,
`the Court struck Defendants’ motion and directed them to file a letter brief on this issue. See
`Tr. of Mot. Hr’g 64:9-14 (Nov. 12, 2014). Defendants waited an additional two months before
`filing their letter brief.
`
`

`
`Case 6:12-cv-00799-JRG Document 280-1 Filed 02/12/15 Page 4 of 5 PageID #: 9576
`
`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Three
`
`Two days before the close of fact discovery, Defendants finally produced Craig
`McAnally. Defendants insisted that McAnally was not appearing as a 30(b)(6) representative
`(despite their representations at Maginnis’s deposition), but did state that “McAnally is the
`person at Micro Motion most knowledgeable about the source code, and he will be able to testify
`authoritatively about it.” Contrary to Defendants’ representations, McAnally had no information
`about a number of subjects and referred many questions to Paul Hays. Hays is apparently a
`Micro Motion employee, even though he was never listed on Defendants’ Rule 26 disclosures.
`Defendants ignored Invensys’s requests for a date to depose Hays.
`
`Because Defendants did not provide a witness who could testify about their source code,
`Invensys was unable to update its infringement contentions.
`(To prepare his report, Dr.
`Rodriguez had to pour over the code to find the relevant sections.) Thus, any deficiencies in
`Invensys’s disclosure of its source code theories are a problem of Defendants’ own making.
`
`II.
`
`Dr. Rodriguez’s Opinions on Inducement and Collateral Sales Are Proper.
`
`To prove inducement, Invensys must show that Defendants knew that their products
`infringed the patents-in-suit. Invensys intends to make this showing using Defendants’ internal
`technical and sales documents. Some of those documents may not be readily accessible to lay
`jurors.
`It is appropriate for an expert like Dr. Rodriguez to explain the meaning and import of
`technical documents to the jury. See FED. R. EVID. 702 (expert testimony is admissible to “help
`the trier of fact to understand the evidence”); see also Kershaw v. Sterling Drug, Inc., 415 F.2d
`1009, 1011 (5th Cir. 1969) (an expert witness could explain scientific articles used to show the
`defendant’s knowledge).
`
`The purpose of Dr. Rodriguez’s report on convoyed, collateral, and derivative sales is
`merely to demonstrate that, even though Defendants sometimes sell “transmitters” and “sensors”
`separately, both are necessary to create an operational flowmeter.3 That is, the flowtubes,
`sensors, processor, drivers, and other components of the flowmeter are all part of a single device
`and have no independent use. Defendants do not argue that Dr. Rodriguez lacks the
`qualifications necessary to identify the components of an operational flowmeter. Dr. Rodriguez
`is not purporting to and will not offer at trial any opinion regarding customers’ preferences for
`different types of Coriolis flowmeters.
`
`For the foregoing reasons, Invensys respectfully requests that the Court deny Defendants
`permission to file a motion to strike Dr. Rodriguez’s expert report and exclude his testimony.
`
`3 Defendants use “sensor” to refer to the flowtubes and the sensors and “transmitter” to refer to
`the flowmeter’s user interface. The processor, which measures the flowrate and generates the
`drive signal, may be in either the “transmitter” or the “sensor,” depending on the model.
`
`

`
`Case 6:12-cv-00799-JRG Document 280-1 Filed 02/12/15 Page 5 of 5 PageID #: 9577
`
`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Four
`
`cc:
`
`All Counsel of Record (via ECF)
`
`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost