Case 6:12-cv-00799-JRG Document 281-1 Filed 02/12/15 Page 1 of 5 PageID #: 9581
`Case 6:12—cv—00799—JRG Document 281-1 Filed 02/12/15 Page 1 of 5 Page|D #: 9581
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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 281-1 Filed 02/12/15 Page 2 of 5 PageID #: 9582
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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
`
`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:
`
`The Court should deny Defendants’ request for permission to file a Daubert motion
`seeking to exclude the opinions of Invensys’ validity expert, Dr. Christopher D. Rahn, Ph.D.
`I.
`Dr. Rahn is Imminently Qualified to Offer His Expert Opinions Concerning Validity.
`Dr. Rahn received his Ph.D.
`in Mechanical Engineering from the University of
`California, Berkeley and is a Professor of Mechanical Engineering and Director of the
`Mechatronics1 Research Laboratory at Pennsylvania State University. He has been a professor of
`mechanical and electrical engineering for more than twenty years and has authored more than
`200 books and publications. While his general credentials are impressive, Dr. Rahn also
`possesses deep knowledge in the principles and fields of study especially relevant to Coriolis
`flowmeters and the problems solved by the Invensys patents-in-suit, including fluid flow,
`vibration control, and digital signal processing (“DSP”). He has conducted extensive research
`into the behavior of axially moving materials (including fluid flow along a flowtube) in response
`to vibrating structures and made use of vibration actuators, digital-to-analog converters, analog-
`to-digital converters, and sensors similar to those used in Coriolis flowmeters. Dr. Rahn also
`possesses significant experience with control systems and DSP techniques. For example, he has
`developed control algorithms to control vibration in structures with axially flowing materials and
`used digital filtering techniques to minimize the impact of noise on measured sensor signals.
`A.
`According to Defendants’ Expert, Dr. Rahn is a POSITA
`Each of the technical experts retained by the parties to opine on infringement or validity
`agrees that the qualifications of a person of ordinary skill in the art (“POSITA”) would include at
`least (1) a master’s degree in electrical engineering or the equivalent education in work
`experience and (2) three or four years of experience or post-graduate education in DSP and
`control theory.2 Dr. Rahn’s experience as a professor of electrical engineering and extended
`
`1 The field of mechatronics includes mechanical engineering, electrical engineering, and control systems technology.
`2 Defendants’ offhand dismissal of Dr. Rahn’s “general expertise” in the “related field” of DSP, Ltr. Br. at 3, is
`especially puzzling given that Defendants’ non-infringement and invalidity experts both opine that those credentials
`are essential to a POSITA.
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`Case 6:12-cv-00799-JRG Document 281-1 Filed 02/12/15 Page 3 of 5 PageID #: 9583
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`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Two
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`research into electromechanical systems clearly exceeds the first requirement. And his extensive
`research using DSP techniques and control systems more than satisfies the second requirement.
`Unlike the expert excluded in Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 Fed.
`App’x 709 (Fed. Cir. 2010), on which Defendants rely, Dr. Rahn easily meets his own definition
`of a POSITA. See id. at 715 (excluding expert’s testimony because she opined that POSITA
`would hold a bachelor’s degree in computer science or equivalent experience, and she held only
`an associate’s degree). To these qualifications, Defendants’ invalidity expert Dr. Bose adds the
`requirement of “familiarity with the operation of Coriolis flowmeters.” Dr. Rahn clearly has such
`familiarity for at least the reasons stated above. Moreover, Dr. Rahn testified that, independently
`of this litigation, he has (1) authored papers on foundational
`issues important
`to Coriolis
`flowmeters, (2) modeled the components of Coriolis flowmeters, including flow tubes, actuators,
`and sensors; (3) discussed Coriolis flowmeter design and functionality with at
`least one
`university colleague that he can recall; and (4) kept a prototype Coriolis flowmeter on his desk to
`demonstrate vibration.3 By comparison, Defendants’ non-infringement expert (and their validity
`expert in the inter partes reviews), Dr. Sidman, boasts as his Coriolis experience only a single
`three-day course he taught to Defendants’ Coriolis flowmeter engineers, in which he trained
`them to use the modeling platforms MATLAB and SIMULINK.
`In sum, Dr. Rahn’s qualifications exceed the level of ordinary skill in the art, even
`according to Defendants’ own expert. Daubert does not require, as Defendants seem to suggest,
`Ltr. Br. at 3, that a person of ordinary skill have designed Coriolis flowmeters, patented them, or
`written articles about them. Indeed, there is no absolute requirement that a POSITA have
`published articles or patents on any subject or designed any products whatsoever. Daubert also
`does not require the expert to have seen the specific accused and patented products prior to the
`litigation. In light of Dr. Rahn’s extensive general experience and significant research in the
`specific fields of study pertinent to Coriolis flowmeters, as well as his status as a POSITA,
`Defendants’ assertion that he is not qualified defies logic and wastes Court and party resources.
`II.
`Defendants Misstate the Law and the Scope of the Relevant Art.
`Purporting to rely on Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012),
`Defendants improperly define the scope of the relevant art as “digital Coriolis flowmeters.” Ltr.
`Br. at 2. But Defendants misconstrue Mintz, which does not hold that “the invention itself”
`should be used to define the level of ordinary skill in the art.4 Importantly, Defendants may not
`“use[] the invention to define the problem that the invention solves.” Id. at 1377. Defendants
`concede that the Invensys patents-in-suit are directed to digital Coriolis flowmeters and point to
`this fact as “conclusively defin[ing] the pertinent art.” Ltr. Br. at 2. But it cannot be correct that a
`
`3 Rahn Dep. Tr. (Dec. 18, 2014) at 17:23-19:15, 23:18-24:9, 30:23-32:16, 42:6-17.
`4 Mintz references “the invention itself” only in the course of describing the factual relationship between the prior art
`and the patented invention, not in stating the legal factors for the level of ordinary skill in the art. Id. at 1376.
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`Case 6:12-cv-00799-JRG Document 281-1 Filed 02/12/15 Page 4 of 5 PageID #: 9584
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`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Three
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`POSITA must possess knowledge of the claimed invention itself—if that were true, then every
`patented invention would be inherently obvious to a POSITA. By limiting the scope of the
`relevant art to the actual invention, Defendants engage in the same impermissible hindsight that
`the Federal Circuit criticized in Mintz. Id. at 1377-80. Defendants also misconstrue Watkins v.
`Telesmith, Inc., 121 F.3d 984 (5th Cir. 1997), which is distinguishable. The expert in that
`products liability case was not excluded by the District Court because he lacked “specialized
`knowledge about the design of belt conveyors,” Ltr. Br. at 1, but because he lacked experience in
`the relevant discipline of mechanical engineering. 121 F.3d at 988. On appeal, the Fifth Circuit
`found the expert’s methodology unreliable because, among other reasons, he had failed to test
`any of his allegedly safer alternative designs. Id. at 992.
`A.
`The Relevant Art Extends Beyond Coriolis Flowmeters
`The principles underlying Coriolis flowmeter functionality, and therefore the relevant art,
`extend to many other devices. Defendants have repeatedly admitted as much. For example,
`Defendants cited U.S. Patent No. 4,679,947, a patent pertaining to steam systems for delivery of
`heat energy, as prior art in their invalidity contentions. The level of knowledge and experience of
`Defendants’ own experts and prior art inventors is also helpful in determining the level of
`ordinary skill.5 Mr. Derby, a named inventor of U.S. Patent No. 5,555,190, a Micro Motion
`Coriolis flowmeter patent also asserted as prior art, testified that neither he nor his co-inventor
`Dr. Bose are “Coriolis experts.”6 Indeed, Dr. Bose himself admits that he does not understand
`some of the principles of Coriolis design.7 A third co-inventor was described by Dr. Bose as
`deserving of inventor status even though he had “nothing to do with flow meters” and only
`worked on the patent’s algorithms.8 In other words, a POSITA would generally understand how
`a Coriolis flowmeter works, as well as many other devices operating on similar principles, but
`would not necessarily be a “Coriolis flowmeter” expert.
`III.
`Dr. Rahn May Opine on Secondary Considerations of Non-Obviousness.
`An expert opinion is not transformed into “attorney argument” simply because it bears on
`a legal issue, as experts are permitted to opine on the “ultimate issues.” See Fed. R. Evid. 704(a);
`see also, B. Braun Melsungen AG v. Terumo Med. Corp., 749 F. Supp. 2d 210, 222-23 (D. Del.
`2010) (denying Daubert motion to preclude expert opinions on copying, finding that concerns
`about alleged “attorney argument” went to the weight, not admissibility, of the opinions).
`Moreover, Dr. Rahn’s interpretation of Defendants’ technical documents will be helpful to the
`jury. See Fed. R. Evid. 702 (expert may “help the trier of fact to understand the evidence”).
`
`5 See Mintz, 679 F.3d at 1376 (stating that factors to consider in defining the level of ordinary skill include prior art
`solutions to problems encountered in the art and the educational level of active workers in the field).
`6 Derby Dep. Tr. (Jul. 29, 2014) at 114:13-116:2.
`7 Bose Dep. Tr. (Nov. 20, 2014) at 26:34-27:19, 28:24-30:7.
`8 Bose Dep. Tr. (Jul. 1, 2014) at 29:19-31:1.
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`

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`Case 6:12-cv-00799-JRG Document 281-1 Filed 02/12/15 Page 5 of 5 PageID #: 9585
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`The Honorable Rodney Gilstrap
`February 12, 2015
`Page Four
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`cc:
`
`All Counsel of Record (via ECF)
`
`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost