Case 6:12-cv-00799-JRG Document 306-1 Filed 02/20/15 Page 1 of 4 PageID #: 9750
`Case 6:l2—cv—00799—JRG Document 306-1 Filed 02/20/15 Page 1 of 4 Page|D #: 9750
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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 306-1 Filed 02/20/15 Page 2 of 4 PageID #: 9751
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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
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`
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`February 20, 2015
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`
`
`The Honorable Rodney Gilstrap
`U.S. District Court for the Eastern District of Texas
`211 W. Ferguson
`Tyler, Texas 75702
`
`Re:
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`C.A. No. 6:12-cv-799-JRG; Invensys Systems, Inc. v. Emerson Electric Co., et al.
`
`Dear Judge Gilstrap:
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`Dr. Direen’s opinions should be stricken. First, Defendants have the burden of proving
`that the 9739 transmitter Dr. Direen tested is prior art, a burden they cannot meet. Second,
`Defendants admit that they did not produce documents relevant to Dr. Direen’s tests of the
`2400S transmitter. Finally, Invensys properly, timely, and repeatedly requested permission to
`inspect Dr. Direen’s facilities and the flowmeters he tested.
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`I.
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`Defendants Cannot Prove the 9739 Transmitter Dr. Direen Tested Is Prior Art.
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`Defendants have the burden of proving the 9739 transmitter is prior art. See Mahurkar v.
`C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) (“By challenging the validity of the ʼ155
`patent, Bard bore the burden of persuasion by clear and convincing evidence on all issues
`relating to the status of the Cook catalog as prior art.” (emphasis added); see also Nordock, Inc.
`v. Sys., Inc., No. 11-C-118, 2013 WL 989864, at *3 (E.D. Wis. Mar. 13, 2013) (precluding the
`use of undated documents as prior art references). Likewise, under the relevance prong of the
`Daubert test, as the party offering Dr. Direen, Defendants must “demonstrate that the expert’s
`reasoning or methodology can be properly applied to the facts in issue.” Johnson v. Arkema,
`Inc., 685 F.3d 452, 459 (5th Cir. 2012) (quotations omitted). Defendants cannot make the
`threshold showing that the 9739 transmitter is prior art, and thus they cannot meet their burden of
`proving that Dr. Direen’s opinions are relevant under Daubert.1
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`Defendants claim that they will present a fact witness to prove that the 9739 transmitter
`Dr. Direen tested is prior art. But Defendants never disclosed such a witness in their Rule 26(a)
`disclosures or produced any documents on this issue. (Tellingly, even in their responsive brief
`Defendants do not identify this witness.) Rule 37(c) precludes Defendants from offering any
`evidence on this subject at trial or in response to Invensys’s motion to strike.
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`1 In contrast, in Micro Chemical, Inc. v. Lextron, Inc., 317 F.3d 1387, 1392 (Fed. Cir. 2003), on
`which Defendants rely, the parties offered conflicting evidence.
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`EAST\90845290.6
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`Case 6:12-cv-00799-JRG Document 306-1 Filed 02/20/15 Page 3 of 4 PageID #: 9752
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`
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Two
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`Moreover, testimony about an allegedly prior use or invention under § 102(a), (b), or (g)
`must be corroborated. See, e.g., Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 740-43
`(Fed. Cir. 2002); Finnigan Corp. v. ITC, 180 F.3d 1354, 1366-70 (Fed. Cir. 1999); Woodland
`Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371-73 (Fed. Cir. 1998). Defendants have
`not disclosed a witness, much less any evidence, corroborating the testimony of that witness.
`Therefore, Defendants cannot prove that the 9739 transmitter Dr. Direen tested is prior art.
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`II.
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`Defendants Failed to Produce Documents Relevant to Dr. Direen’s Tests.
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`In their responsive letter brief, Defendants admit that Dr. Direen generated additional
`data that was not produced because Defendants unilaterally decided that it was irrelevant.2 See
`Defs.’ Ltr. Br. (Direen) at 2, ECF No. 289-1. Likewise, Defendants do not deny that they failed
`to produce the modified source code Dr. Direen used in his tests of the 2400S transmitter.
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`Following standard practice in this district, ¶ 2(B) of the Discovery Order, ECF No. 53,
`requires the parties to disclose relevant documents without waiting for a request for production,
`and ¶ 9 requires the parties to promptly supplement their production. Thus, regardless of
`whether Dr. Direen considered all the data he logged during his tests or the modified source code
`for the 2400S, those materials should have been produced under the Discovery Order. In
`addition, Invensys’s complaints about Defendants’ failure to produce these materials were
`timely. Dr. Direen’s report on the 2400S was not served until December 5, 2014, and Invensys
`filed its letter brief seeking to strike Dr. Direen’s report the following month. Accordingly, any
`opinions to which these documents are relevant should be stricken.
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`III. Defendants Misrepresent Invensys’s Requests to Inspect Dr. Direen’s Test Facilities.
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`Defendants’ assertion that Invensys made only one request to inspect Dr. Direen’s test
`facilities is incorrect. Counsel for Invensys requested an inspection of Dr. Direen’s test facilities
`and the flowmeters he tested at the deposition of Dr. Bose and at the deposition of Dr. Henry.
`Moreover, a legitimate discovery request is not waived simply because the requesting party
`decides not to repeat it ad infinitum. Defendants admit they knew that Invensys wanted to
`inspect Dr. Direen’s facilities and that request did not go away simply because Defendants
`delayed responding in the vain hope that Invensys would forget about it.
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`For the foregoing reasons, and the reasons set forth in its opening letter brief, Invensys
`requests permission to file a motion to strike Dr. Direen’s expert reports.
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`2 Defendants’ characterization of this data as irrelevant is also inaccurate. For example, even
`data that did not relate directly to empty-to-full transitions would still be relevant to
`determining whether Dr. Direen’s equipment was operating properly.
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`Case 6:12-cv-00799-JRG Document 306-1 Filed 02/20/15 Page 4 of 4 PageID #: 9753
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Three
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`Respectfully submitted,
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`cc:
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`All Counsel of Record (via ECF)
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`EAST\90845290.6