Case 6:12-cv-00799-JRG Document 289-1 Filed 02/12/15 Page 1 of 5 PageID #: 9621
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`Exhibit 1
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`Case 6:12-cv-00799-JRG Document 289-1 Filed 02/12/15 Page 2 of 5 PageID #: 9622
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`ATTORNEYS AT LAW
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`FOLEY & L ARDN ER LLP
`
`
`February 12, 2015
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`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
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-JRG
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`
`
`Re:
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`Dear Judge Gilstrap:
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`
`Micro Motion submits that Invensys’s proposed motion to strike the expert reports of Dr.
`Harry Direen and exclude his testimony at trial, (Dkt. No. 262-1), should be denied as futile.
`
`Dr. Direen’s two reports covered four topics. His October report addressed (1) whether the
`Micro Motion 9739 device “maintained oscillation” of the flowtubes and (2) how well the Micro
`Motion C32 device measured flow rate during empty-to-full and full-to-empty transitions. His
`December report addressed (3) whether the accused Micro Motion 2400S product determined flow
`rate during such transitions and (4) whether the inventions claimed by some asserted claims had any
`beneficial impact on accuracy of flow rate measurement during those transitions
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`I.
`
`INVENSYS’S LETTER BRIEF OVERSTATES THE SCOPE OF THE COURT’S
`ORDER REGARDING THE C32 DEVICE AND IS THEREFORE FUTILE
`
`Invensys’s motion seeks exclusion of Dr. Direen’s testimony regarding the C32 device for all
`purposes. But the order Invensys relies upon, (Dkt. No. 248), dealt only with the use of the C32
`device as a basis for Micro Motion’s invalidity defense. Dr. Direen’s report and testimony as to the
`C32 device are also relevant to Invensys’s damages claim. Invensys’s theory is that there were no
`acceptable non-infringing alternatives to its patented inventions because the use of the patented
`inventions was necessary to get good flow rate measurements during empty-to-full transitions, and
`that Micro Motion would have been willing to pay $925 per unit for permission to use the patented
`inventions. Other testimony shows that the C32 device did not infringe most of the asserted claims
`and that Micro Motion could have gone to that existing design for an incremental cost of only about
`$15 per unit. Dr. Direen’s testing shows that the C32 device did a good job of measuring flow rate
`during the claimed transitions. His testimony will support a jury finding that the C32 device would
`have been an acceptable non-infringing alternative, which is highly relevant to Invensys’s claims for
`both lost profits and reasonable royalty. BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d
`1214 (Fed. Cir. 1993) (lost profits); Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1312
`(Fed. Cir. 2002) (“The economic relationship between the patented method and non-infringing
`alternative methods, of necessity, would limit the hypothetical negotiation.”).
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`Micro Motion’s response to Invensys’s letter brief as to its motion for summary judgment
`explains that Dr. Direen’s report and testimony remain relevant to Micro Motion’s invalidity case.
`
`
`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.
`
`4837-9159-7345.
`
`

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`Case 6:12-cv-00799-JRG Document 289-1 Filed 02/12/15 Page 3 of 5 PageID #: 9623
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`FOLEY & L ARDN ER LLP
`February 12, 2015
`Page 2
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`II.
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`INVENSYS’S MOTION AS TO THE 9739 DEVICE IS WITHOUT PROPER
`FOUNDATION AND IS THEREFORE FUTILE
`Invensys argues that Dr. Direen’s report should be stricken because Dr. Direen himself will
`not testify that the specific 9739 device he tested pre-dates the 1997 filing date of asserted patents.
`However, whether the tested 9739 device had the same 9739 drive system for oscillating the
`flowtubes that was in use prior to November 1997 is a fact, not an opinion. Micro Motion will
`present a fact witness who will testify as to those facts.
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`Unless the movant can show that the facts underlying an expert’s opinion are unsupported, a
`Daubert motion is not the proper way to challenge the correctness of those facts. Micro Chem., Inc.
`v. Lextron, Inc., 317 F.3d 1387, 1391-92 (Fed. Cir. 2003) (applying 5th Circuit law) (“it is not the
`role of the trial court to evaluate the correctness of facts underlying one expert’s testimony” – cross-
`examination, and not judicial exclusion, is the proper avenue for challenging contested underlying
`facts). Because Invensys’s proposed motion contains no showing that the undisputed facts establish
`that the 9739 device Dr. Direen tested was made after 1997, this Daubert motion cannot succeed.
`
`III. MICRO MOTION PRODUCED ALL THE DATA DR. DIREEN CONSIDERED IN
`FORMING HIS OPINIONS
`A. Micro Motion Fulfilled Its Rule 26(a)(2)(B)(ii) Obligation
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`December report of testing of the 2400S. Data files can take the form of a table or a graph.
`Dr. Direen’s report included graphs of all data he relied on. The testing reported in the December
`report related to how the 2400S device performed during empty-to-full and full-to-empty transitions.
`The data generated during that testing included other, irrelevant data – from when such transitions
`were not occurring – which Dr. Direen did not consider in reaching his opinions. Invensys now says
`it wants the data underlying Dr. Direen’s analysis in a different format; yet Invensys never asked for
`the data in a different format. Invensys’s contention that Dr. Direen’s report had to include the text
`of the source code alterations that had disabled the features in question also fails because Dr. Direen
`did not consider the text of the source code that had been used by Micro Motion in reaching his
`conclusions; he only confirmed that whatever changes Micro Motion had made to the source code
`had, in fact, disabled those features and tested the effects of eliminating those features. If Invensys
`had bothered to take Dr. Direen’s deposition (it never did), it would have found all this out.
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`October report of testing of the 9739. Here, Invensys’s complaint relates to data files that
`simply never existed in the form Invensys now says it wants. The 9739 testing was intended to
`determine whether the flowtubes of the 9739 device continued to oscillate during transitions. Dr.
`Direen determined that they did by attaching leads directly between the flowtubes and an
`oscilloscope and examining the tracings of the electrical impulses received directly from the
`flowtubes on the oscilloscope. The videos of those oscilloscope tracings were produced to Invensys
`along with Dr. Direen’s October report. These videos (and still shots from those videos) plainly
`show in real-time the data Dr. Direen relied on. The raw data that went directly from the flowtubes
`to the oscilloscope was not captured in any other format, so there was nothing further to produce.
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`Case 6:12-cv-00799-JRG Document 289-1 Filed 02/12/15 Page 4 of 5 PageID #: 9624
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`FOLEY & L ARDN ER LLP
`February 12, 2015
`Page 3
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`October testing of C32. Invensys’s complaint that it did not receive the data Dr. Direen relied
`on for his conclusions that the C32 device did a good job of measuring flow during transitions is
`refuted by the October report itself, which contained six tables of data demonstrating that the C32
`device measured flow rate during the transitions in question. This is the data Dr. Direen relied upon.
`Invensys’s claim that it made “multiple” and “repeated” requests to inspect the test
`equipment used by Dr. Direen is simply untrue. Invensys’s only request to examine any such
`equipment was made orally at the November 20, 2014 deposition of another Micro Motion expert
`and related only to the 9739 flowmeter tested (this was before Dr. Direen’s December report). Micro
`Motion agreed to take that request under advisement, and Invensys never followed up with Micro
`Motion to schedule an inspection.
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`B.
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`Invensys’s Remaining Complaints Go To The Weight, Not The Admissibility, Of
`Dr. Direen’s Report As To The 9739 Device
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`Invensys’s letter brief attacks the reliability of the 9739 testing (not that of any of Dr.
`Direen’s other three tests) because its own expert would have recorded the data shown on the
`oscilloscope screen in a database, rather than relying only on the display on the oscilloscope screen.
`But the point of the 9739 testing was not to determine the precise magnitude of amplitude of each
`oscillation. Invensys successfully argued, at Markman, that “maintaining oscillation” does not
`require that the oscillation be at any specific amplitude; having done so, it cannot complain that Dr.
`Direen’s test data does not show the specific amplitude of each oscillation.
`
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`As shown below, Invensys sets up a straw man when it argues that other data would be
`unreliable. The data Invensys and its expert Dr. Rahn question was data generated by the flowmeter
`electronics – after the digital signal processing of the data from the sensors has been completed by
`the digital transmitter. But Dr. Direen relied on data tracings displayed by an oscilloscope attached
`directly to the flowtube; the data Invensys attack would be consistent with the data Dr. Direen relied
`on. To the extent Dr. Direen and Dr. Rahn may differ in their views of the significance of that other
`data (which Micro Motion also produced), such differences of opinion cannot be the basis to exclude
`an expert’s testimony. Pipitone v. Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir. 2002) (“‘[t]he trial
`court's role as gatekeeper [under Daubert] is not intended to serve as a replacement for the adversary
`system.’ . . . Thus, while exercising its role as a gate-keeper, a trial court must take care not to
`transform a Daubert hearing into a trial on the merits.”).
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`Case 6:12-cv-00799-JRG Document 289-1 Filed 02/12/15 Page 5 of 5 PageID #: 9625
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`Sincerely,
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`
`/s/ Linda E.B. Hansen
`Linda E.B. Hansen
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`
`
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`FOLEY & L ARDN ER LLP
`February 12, 2015
`Page 4
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`cc: all counsel of record (by ECF)