Case 6:12-cv-00799-JRG Document 302-1 Filed 02/20/15 Page 1 of 3 PageID #: 9722
`Case 6:12—cv—00799—JRG Document 302-1 Filed 02/20/15 Page 1 of 3 Page|D #: 9722
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 6:12-cv-00799-JRG Document 302-1 Filed 02/20/15 Page 2 of 3 PageID #: 9723
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`ATTORNEYS AT LAW
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`FOLEY & L ARDN ER LLP
`
`
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`February 20, 2015
`
`
`The Honorable Rodney Gilstrap
`United States District Court for the Eastern District of Texas
`100 East Houston Street
`Marshall, TX 75670
`
`
`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.
`
`4830-0006-4290.
`
`Re:
`
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`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-JRG
`
`
`Dear Judge Gilstrap:
`Micro Motion’s letter brief requesting permission to file a Daubert motion to exclude and
`strike the opinions and testimony of Prof. Jeffrey J. Rodriguez is supported by the law and facts.
`MICRO MOTION DID NOT WAIVE ITS RIGHT TO CHALLENGE PROF.
`I.
`RODRIGUEZ’S REPORT
`Invensys is wrong in its argument that Micro Motion waived its right to challenge Prof.
`Rodriguez’s report because the Court directed Micro Motion to file its letter brief on the subject.
`On November 4, 2014, Micro Motion filed a motion to exclude and strike certain paragraphs of
`the expert report on infringement of Prof. Jeffrey J. Rodriguez. (Dkt. No. 239.) Ruling from the
`bench on November 12, 2014, the Court struck the November 4th motion and directed Micro
`Motion to file a corresponding letter brief (Dkt. No. 243 at 2)—which Micro Motion did on
`January 26, 2014 (Dkt. No. 269-1) in a timely manner pursuant to the Court’s Docket Control
`Order, as amended. (Dkt. No. 258.) Invensys never contended at the November 12th hearing that
`Micro Motion waived its challenge, nor did the Court address waiver in that context. Micro
`Motion’s compliance with the Court’s directives cannot be a waiver.
`None of the cases cited by Invensys, including Orion IP, LLC v. Staples, Inc., 407 F.
`Supp. 2d 815 (E.D. Tex. 2006), addressed the issue of waiver that Invensys now advances.
`Invensys cites no authority that stands for the proposition that Micro Motion waived its challenge
`to Prof. Rodriguez’s testimony, especially where the Court directed such motion.
`INVENSYS’S FAILURE TO SUPPLEMENT ITS INFRINGEMENT
`II.
`CONTENTIONS WAS A VIOLATION OF THE LOCAL PATENT RULES, AS
`INVENSYS ARGUED PREVIOUSLY IN THIS CASE
`Acknowledging that its infringement contentions may be deficient, Invensys attributes
`the deficiencies to Micro Motion for its alleged failure to provide a deposition witness who could
`answer source code questions. If Invensys had an issue during fact discovery regarding source
`code disclosure, the time to raise that issue was during fact discovery or in a motion to compel,1
`not in a responsive Daubert letter brief. The time for Invensys to raise that issue has passed.
`Importantly, Invensys does not dispute that Micro Motion timely produced the source
`code requested by Invensys. Moreover, the discovery provided by Micro Motion was obviously
`sufficient to allow Invensys to put together the Rodriguez expert report. Thus, in addition to
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`1 Invensys filed a motion to compel on June 27, 2014 (Dkt. No. 167) but failed to raise the issue that it now
`complains of.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
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`

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`Case 6:12-cv-00799-JRG Document 302-1 Filed 02/20/15 Page 3 of 3 PageID #: 9724
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`FOLEY & L ARDN ER LLP
`Page 2
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`being contrary to the facts, blaming Micro Motion for deficiencies in Invensys’s infringement
`contentions contradicts the notice function—which is the plaintiff’s burden as to infringement—
`provided by the Local Patent Rules. When a plaintiff is provided with non-public information
`that is relevant to the plaintiff’s infringement case, such as source code, the plaintiff should
`update its infringement contentions as soon as practicable. For example, in American Video
`Graphics, LP v. Electronic Arts, Inc., 359 F. Supp. 2d 558, 561 (E.D. Tex. 2005), the Court
`ordered the plaintiff to supplement its P.R. 3-1 charts “with specific references to the source code
`within 30 days of Defendants depositing the code into escrow.” There was no mention in
`American Video that the plaintiff was entitled to a source code-related deposition before it was
`required to supplement its infringement contentions. Moreover, Invensys admitted that Prof.
`Rodriguez was able to locate the relevant code sections, which means that the real cause of
`Invensys’s failure to supplement its contentions was its own delinquency.
`It bears repeating that the manner in which Invensys disclosed its infringement theories
`diverges from the Local Patent Rules, especially when contrasted with Micro Motion’s
`disclosure of its invalidity theories. Whereas Micro Motion moved for leave to amend its
`invalidity contentions within days of discovering the existence of new information relevant to its
`invalidity case (Dkt. No. 163), Invensys did not seek leave at all upon receiving the Micro
`Motion source code. Whereas Micro Motion served supplemental invalidity contentions during
`the pendency of its motion to amend, Invensys provided no supplemental contentions
`whatsoever. Finally, whereas Invensys challenged (successfully) that Micro Motion’s new
`information should not be added to its invalidity case because of untimely disclosure, Invensys
`now attempts to introduce new information in Prof. Rodriguez’s report that suffers from an even
`more delinquent disclosure. The double standard that Invensys advocates would permit Invensys
`to avoid the same disclosure requirements that it condemned Micro Motion for violating.
`PROFESSOR RODRIGUEZ’S INDIRECT INFRINGEMENT AND CONVOYED
`III.
`SALES TESTIMONY WILL NOT BE HELPFUL TO THE JURY
`In its response, Invensys points to no specialized knowledge of Prof. Rodriguez that
`would assist the jury in determining Micro Motion’s knowledge of the asserted patents. Without
`providing a single example, Invensys merely claims that “[s]ome of those documents may not be
`readily accessible to lay jurors.” Unlike the “scientific articles” relied on in Kershaw v. Sterling
`Drug, Inc., 415 F.2d 1009, 1011 (5th Cir. 1969), however, the documents that Prof. Rodriguez
`cites to are PowerPoint presentations and deposition transcripts, which offer nothing more than
`what Invensys’s lawyers can argue at closing. The same is true for Prof. Rodriguez’s offered
`testimony as to willful blindness and non-infringing uses, which Invensys failed to address in its
`response.
`As for convoyed sales, Invensys concedes that Prof. Rodriguez “will not offer at trial any
`opinion regarding customers’ preferences for different types of Coriolis flowmeters.” Invensys’s
`concession falls short, however, because according to his report Prof. Rodriguez still intends to
`testify that “the infringing features almost certainly drive customer demand for the entire
`Accused Flowmeter . . . ,” an opinion that is conclusory, baseless, and unsupported by any
`established credentials of Prof. Rodriguez.
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`cc: all counsel of record (by ECF)
`
`Sincerely,
`/s/ Jeffrey N. Costakos