Case 6:12-cv-00799-JRG Document 288-1 Filed 02/12/15 Page 1 of 4 PageID #: 9614
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`Exhibit 1
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`Case 6:12-cv-00799-JRG Document 288-1 Filed 02/12/15 Page 2 of 4 PageID #: 9615
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`FOLEY & L ARDN ER LLP
`
`ATTORNEYS AT LAW
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
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`foley.com
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`February 12, 2015
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`The Honorable Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`100 East Houston Street
`Marshall, TX 75670
`
`Re:
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-JRG
`
`Dear Judge Gilstrap:
`Defendants Emerson Electric Co. and Micro Motion, Inc. (collectively, “Micro Motion”)
`submit this responsive letter brief in opposition to Plaintiff Invensys Systems, Inc.’s (“Invensys”)
`January 26, 2015 letter brief requesting permission to file a motion to strike and exclude the
`expert testimony of Dr. Tamal Bose on certain subjects. (See Dkt. No. 261-1.) For the reasons
`stated below, each of the grounds upon which Invensys relies to strike Dr. Bose’s testimony is
`without merit or unnecessary, and Micro Motion respectfully asks that the Court deny Invensys’s
`request in full.
`I.
`DR. BOSE DOES NOT INTEND TO RELY ON THE DIGITAL PROTOTYPES
`Invensys first requests permission to move to strike Dr. Bose’s expert opinions that rely
`on the C31 and C32 digital prototypes (“Digital Prototypes”). Dr. Bose’s report contains
`opinions about the Digital Prototypes because, at the time he prepared the report on October 6,
`2014, the Court had not yet ruled on Micro Motion’s June 10th motion to supplement its
`invalidity contentions with information relating to the Digital Prototypes. (Dkt. No. 163.) The
`Court denied that motion on November 12th. Micro Motion will abide by the Court’s ruling, and
`at trial Dr. Bose will not rely on the Digital Prototypes as evidence of invalidity. Invensys’s
`request for a Daubert motion in this respect is unnecessary.
`II.
`DR. BOSE APPLIED PROPER CLAIM CONSTRUCTION
`Invensys also requests permission to strike Dr. Bose’s report for allegedly “fail[ing] to
`apply the Court’s claim construction.” However, Invensys’s broad request is supported by a
`single example concerning Dr. Bose’s opinions as to the claim term “output module.” Invensys
`has provided absolutely no justification in its letter brief for its Daubert request to apply to any
`other claim term. See Alcatel USA, Inc. v. Cisco Sys., Inc., No. 4:00-CV-199, 2002 WL
`34357200, at *1 (E.D. Tex. May 7, 2002) (denying defendant’s objection that “failed to identify
`any specific portion of the expert report which allegedly contains improper opinions on the
`construction of claim terms”).
`As for the term “output module,” Invensys cites Dr. Bose’s deposition testimony in
`which he stated that, with respect to Claim 12 of the ’761 patent, “[an] output module is
`something that creates an output signal. So it could be a device. It could be a program. It could
`be some kind of system that provides -- creates a signal output.” Bose 11/20/2014 Dep. 13:24-
`14:3. According to Invensys, Dr. Bose’s testimony is at odds with the Court’s construction that
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
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`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
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`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`4840-7327-1585.
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`Case 6:12-cv-00799-JRG Document 288-1 Filed 02/12/15 Page 3 of 4 PageID #: 9616
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`FOLEY & L ARDN ER LLP
`Page 2
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`“output module” is a means-plus-function element providing the function of outputting the drive
`signal with the structure of a digital-to-analog (“D/A”) converter. (Dkt. No. 203 at 10, 31.)
`However, contrary to Invensys’s position, Dr. Bose specifically identifies in his report a D/A
`converter as the output module present in the invalidating prior art. On page 129 of his report—
`which describes how the Micro Motion RFT9739 Flowmeter in combination with Carpenter
`invalidate Claim 12 of the ’761 patent—Dr. Bose explains that the RFT9739 operates using a
`drive signal that is output from the transmitter to the sensor, and that Carpenter discloses that a
`“[m]ass flow instrumentation 24 may include a microprocessor which . . . also applies a drive
`signal over path 156 to driver 20 to oscillate tubes 12 and 14. A microprocessor applying a drive
`signal would use D/A converters.” (Bose Rpt. 129 (citing RFT Manual, at MM1066347,
`MM1066297-98; Carpenter, 5:49-56) (emphasis added).) Thus, Dr. Bose’s report clearly
`provides both the function and structure of the “output module” as construed by the Court.
`Invensys’s reliance on a deposition sound bite does not justify a Daubert motion that clearly
`ignores Dr. Bose’s written opinion, which will no doubt assist the trier of fact.
`Further, none of the cases cited by Invensys particularly match up with these facts. In
`Chicago Mercantile Exchange, Inc. v. Technology Research Group, LLC, 782 F. Supp. 2d 667,
`673 (N.D. Ill. 2011), the plaintiff’s expert failed to apply the rule of construction that an
`indefinite article “a” or “an” can mean “one or more” in certain circumstances—a completely
`different construction issue than the one at issue here. The footnote from Liquid Dynamics Corp.
`v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (2006), is so general that the claim construction issue
`there was not specified. Finally, Imperium (IP) Holdings, Inc. v. Apple, Inc., No. 4:11-CV-163,
`2013 WL 322053, at *4 (E.D. Tex. Jan. 28, 2013), concerned a party’s objections to a Magistrate
`Judge’s recommendations and did not involve an expert’s testimony.
`III.
`INVENSYS WILL NOT BE UNFAIRLY PREJUDICED BY MICRO MOTION’S
`RELIANCE ON ASTROM, WHICH WAS DISCLOSED TO INVENSYS AS
`EARLY AS SEPTEMBER 13, 2013
`Without providing details, Invensys alleges that it was prejudiced by Micro Motion’s
`reliance on the Astrom reference, even though Invensys admits that it knew since September 13,
`2013 that Micro Motion intended to rely on Astrom as an invalidating prior art reference. Micro
`Motion first disclosed Astrom in its invalidity contentions on September 13, 2013. Although
`Micro Motion did not disclose Astrom in its preliminary election of asserted prior art in
`December 2013, Micro Motion corrected the omission by relisting Astrom in its Final Election
`of Asserted Prior Art on September 17, 2014. Micro Motion never “abandoned” the Astrom
`reference, and Invensys does not point to any Micro Motion communication that so states. On
`the contrary, Micro Motion relied on the Astrom reference extensively in the inter partes review
`petition it filed regarding the ’062 patent in January of 2014. Moreover, Invensys claims that it
`relied on Micro Motion’s preliminary election of prior art in making its final election of asserted
`claims—but Invensys completely fails to identify what would have been different in its final
`election of asserted claims had the omission not occurred. More likely, Invensys’s stated position
`is merely a pretext—otherwise Invensys ostensibly would have moved to amend its final election
`of asserted claims shortly after September 17, 2014—but Invensys never did so or even raised
`the issue. Raising this issue for the first time after five months of doing nothing belies any
`argument of prejudice that Invensys could make.
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`Case 6:12-cv-00799-JRG Document 288-1 Filed 02/12/15 Page 4 of 4 PageID #: 9617
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`FOLEY & L ARDN ER LLP
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`In sum, Micro Motion’s omission of the Astrom reference from its preliminary election
`of prior art did not violate the spirit of the Local Patent Rules because Micro Motion previously
`disclosed Astrom to Invensys months before and because Invensys cannot realistically be
`unfairly prejudiced. Invensys’s request in this respect should be denied. Regardless, nothing in
`Invensys’s letter brief would prevent Micro Motion from using Astrom at trial for any other
`allowable purpose, such as to demonstrate the content and teachings of the other prior art
`references.
`IV.
`DR. BOSE DOES NOT INTEND TO RELY ON ANY PORTION OF DR.
`DIREEN’S REPORTS THAT ARE STRICKEN, IF ANY
`As explained in Micro Motion’s responsive letter brief (filed contemporaneously
`herewith) in opposition to Invensys’s request to file a motion to strike the expert report of Dr.
`Harry Direen, Invensys’s request should be denied and no portion of Dr. Direen’s report should
`be stricken. However, in the event that any portion of Dr. Direen’s report is stricken, then Dr.
`Bose does not intend to rely on such stricken portion. This aspect of Invensys’s Daubert motion,
`therefore, is unnecessary.
`V.
`CONCLUSION
`For at least these reasons, Micro Motion respectfully requests that Invensys’s request to
`file a Daubert motion against Dr. Bose be denied.
`
`cc: all counsel of record (by ECF)
`
`Sincerely,
`/s/ Jeffrey N. Costakos
`Jeffrey N. Costakos