Case 6:12-cv-00799-JRG Document 307-1 Filed 02/20/15 Page 1 of 5 PageID #: 9756
`Case 6:l2—cv—00799—JRG Document 307-1 Filed 02/20/15 Page 1 of 5 Page|D #: 9756
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`EXHIBIT A
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`EXHIBIT A
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`Case 6:12-cv-00799-JRG Document 307-1 Filed 02/20/15 Page 2 of 5 PageID #: 9757
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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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`February 20, 2015
`
`
`The Honorable Rodney Gilstrap
`U.S. District Court for the Eastern District of Texas
`100 East Houston Street
`Marshall, TX 75670
`
`Re:
`
`C.A. No. 6:12-cv-799-JRG; Invensys Systems, Inc. v. Emerson Electric Co., et al.
`
`Dear Judge Gilstrap:
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`Defendants do not address Invensys’s infringement arguments, tacitly conceding that
`they infringe claim 23 of the ʼ062 Patent. Defendants’ invalidity arguments, based on a
`hindsight attempt to read generic references onto claim 23 and ignoring the specific limitations
`of that claim, are unavailing. In addition, on February 18, the PTAB declined to institute review
`of independent claim 1 and dependent claim 23, concluding that those claims are not obvious in
`light of Kalotay and Romano, the two primary references Defendants rely on in this case.
`Accordingly, Invensys should be allowed to file a summary judgment motion that claim 23 of the
`ʼ062 Patent is infringed and valid.
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`I.
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`There Is No Dispute That Defendants Infringe Claim 23.
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`Defendants make no attempt to challenge Invensys’s evidence that the accused products
`infringe claim 23 of the ʼ062 Patent. Because Defendants have not raised a fact issue and tacitly
`conceded infringement, Invensys should, at a minimum, be allowed to file a summary judgment
`motion on infringement.
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`II.
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`There Are No Material Fact Disputes Relating to the Validity of Claim 23.
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`A.
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`Defendants Overstate the Teachings of the Generic Prior Art References on
`Which They Rely.
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`On February 18, the PTAB declined to institute an IPR of claims 1 and 23 of the ʼ062
`Patent because Kalotay and Romano did not establish a reasonable likelihood that those claims
`were obvious. Thus, Defendants cannot make out a prima facie case that claims 1 and 23 are
`obvious in light of these references.
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`In addition, as set forth in Invensys’s opening letter brief, none of the references
`Defendants cite mention adjusting the phase of the drive signal to compensate for time delay.
`See Pl.’s Ltr. Br. (Claim 23) at 5, ECF No. 266-1. The PTAB’s decision also confirms that
`Kalotay does not teach using phase adjustment to compensate for time delay, and that it would
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`EAST\93448362.5
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`Case 6:12-cv-00799-JRG Document 307-1 Filed 02/20/15 Page 3 of 5 PageID #: 9758
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`
`
`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Two
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`not have been obvious to a skilled artisan to combine Romano’s use of phase adjustment for
`measurement with Kalotay’s drive function. Astrom is merely a general purpose textbook that
`does not mention phase adjustment or add anything to Kalotay and Romano.
`
`Tellingly, in their letter brief Defendants’ make no effort to show how these prior art
`references read on claim 23, conceding that they do not. Defendants also fail to cite any other
`evidence addressing the use of phase adjustment to compensate for time delay to generate the
`drive signal for a Coriolis flowmeter. Instead, Defendants rely solely on testimony about the
`general need to compensate for time delay in digital systems. None of this evidence relates to the
`specific claims at issue or the technical problem solved by the patented invention. Indeed,
`Defendants’ decision to ignore the limitations of the claims in favor of generic references that do
`not address the specific problem solved by claim 23 indicates the type of hindsight analysis that
`the Supreme Court and the Federal Circuit have consistently condemned. See, e.g., Arkie Lures,
`Inc. v. Gene Larew Tackle, Inc., 119 F.2d 953, 956 (Fed. Cir. 1997) (“Good ideas may well
`appear ‘obvious’ after they have been disclosed, despite having been previously unrecognized.”).
`Because Defendants’ evidence relates only to time delay generally, and does not suggest or
`explain the use of phase adjustment to compensate for time delay when generating the drive
`signal of a digital Coriolis flowmeter, Defendants cannot show that claim 23 would have been
`obvious at the time of the invention. See Motorola Mobility, LLC v. ITC, 737 F.3d 1345, 1350
`(Fed. Cir. 2013); see also In re Giuffrida, No. 2012-1692, 527 Fed. App’x 981, 987 (Fed. Cir.
`July 18, 2013) (per curiam).
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`B.
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`The Use of Two A/D Convertors in Claim 23 Is Not Merely a Design Choice.
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`As an initial matter, Defendants overstate Dr. Bose’s opinions. Dr. Bose merely states
`that “Kalotay inherently discloses the presence of a second analog to digital convertor.” Bose
`Report ¶ 619 (emphasis added). As explained in Invensys’s opening letter brief, a second A/D
`convertor is not necessary to Kalotay, and Kalotay actually teaches away from using additional
`components. See Pl.’s Ltr. Br. (Claim 23) at 5, ECF No. 266-1. Thus, the use of two A/D
`convertors cannot be inherent in Kalotay under established Federal Circuit precedent. See
`Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009); In re Robertson,
`169 F.3d 743, 745 (Fed. Cir. 1999). Defendants completely ignore this issue.
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`Defendants’ remaining argument simply refers to the need to convert analog sensor
`signals into digital form for digital processing. Dr. Henry’s testimony does not address the
`number of A/D convertors to be used or the advantages multiple convertors provide. Likewise,
`Dr. Rahn simply observed that either one or two A/D convertors are possible when using two
`sensors. Contrary to Defendants’ suggestion, Dr. Rahn’s testimony does not indicate that using
`two convertors is merely a design choice, nor does he discuss the significance of using two
`convertors instead of only one.
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`Case 6:12-cv-00799-JRG Document 307-1 Filed 02/20/15 Page 4 of 5 PageID #: 9759
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`
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Three
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`Indeed, using two A/D convertors is not merely an aesthetic design choice as Defendants
`suggest. It is a functional decision that has implications for generating the highly dynamic
`digital drive covered by claim 23. For example, using a single A/D convertor requires adjusting
`the phase of the two sensor signals (as Romano does). This requires additional processor time
`that could be used for other processes (e.g., generating the drive signal). In addition, generating
`a digital drive signal requires data sampled at a much higher rate than does measurement, which
`is more difficult with a single A/D convertor. Once again, Defendants’ decision to ignore the
`critical elements of the claim language and the limited teachings of the prior art cannot create a
`fact issue.
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`III. Defendants’ Arguments Relating to Their Renewed IPR Petition Are Moot.
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`The PTAB has now twice declined to institute review of claim 23, and the PTAB’s
`February 18 denial of Defendants’ IPR petition on claims 1 and 23 negates Defendants’ reliance
`on that petition. Defendants’ reliance on the PTAB’s earlier decision to review claim 1 based on
`alleged anticipation by Romano is also misplaced. The same panel that decided not to institute
`review of claims 1 and 23 based on the combination of Romano and Kalotay will also decide
`whether Romano alone anticipates claim 1. The PTAB’s February 18 decision denying review
`of claims 1 and 23 indicates that since it decided to institute review the panel has become more
`educated regarding the subject matter of claim 1 and Romano as a result of Invensys’s evidence
`and oral arguments. Indeed, it is difficult to see how Romano can anticipate claim 1 if claim 1 is
`not obvious in light of Romano (and Kalotay).
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`Even if the PTAB does somehow conclude that Romano anticipates claim 1, it is black
`letter law that dependent claims may be valid even though the independent claims from which
`they depend are invalid. See 35 U.S.C. § 282(a) (“Each claim of a patent (whether in
`independent, dependent, or multiple dependent form) shall be presumed valid independently of
`the validity of other claims; dependent or multiple dependent claims shall be presumed valid
`even though dependent upon an invalid claim.”). Dr. Bose does not claim that Romano or
`Astrom disclose the dual A/D convertor element of claim 23, and that limitation is not inherently
`disclosed in Kalotay for the reasons discussed previously. See supra Part II.B.
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`For the foregoing reasons, and the reasons set forth in its opening letter brief, Invensys
`requests permission to file a summary judgment motion of infringement and validity of claim 23
`of the ʼ062 Patent.
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`EAST\93448362.5
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`Case 6:12-cv-00799-JRG Document 307-1 Filed 02/20/15 Page 5 of 5 PageID #: 9760
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Four
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`Respectfully submitted,
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`/s/ Claudia Wilson Frost
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`Claudia Wilson Frost
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`cc:
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`All Counsel of Record (via ECF)
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