Case 6:12-cv-00799-JRG Document 311-1 Filed 02/20/15 Page 1 of 4 PageID #: 9783
`Case 6:12—cv—00799—JRG Document 311-1 Filed 02/20/15 Page 1 of 4 Page|D #: 9783
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`EXHIBIT A
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`EXHIBIT A
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`Case 6:12-cv-00799-JRG Document 311-1 Filed 02/20/15 Page 2 of 4 PageID #: 9784
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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
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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:
`
`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’ attempts to defend Dr. Bose’s opinions are unavailing. First, Dr. Bose did
`not limit his interpretation of the term “output module” to a digital-to-analog (“D/A”) convertor
`as required by the Court’s claim construction. Second, Defendants do not even attempt to excuse
`their failure to include Astrom in their Preliminary Election of Prior Art References.
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`I.
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`Dr. Bose Did Not Use the Court’s Construction of the Term “Output Module.”
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`Invensys is not taking the position that Dr. Bose believes an “output module” cannot be a
`D/A convertor, but that throughout his expert report Dr. Bose used that term in a much broader
`sense that was inconsistent with the Court’s claim construction. In ¶¶ 359, 395, 404, 686-89,
`704, and 713 of his report, Dr. Bose discusses the “output module” limitation, but does not
`mention a D/A convertor. For example, in ¶ 713 of his report Dr. Bose opines: “The Model D
`Flowmeter includes: ‘Within the sensor housing, the drive coil, a magnetic device, converts the
`signal from the electronics unit into a force to vibrate the flowtubes’ (Model D Manual, p. 10).”
`(emphasis added). It is undisputed that the “magnetic coil” is not an D/A convertor. In fact,
`these devices are purely analog. The portion of Dr. Bose’s deposition testimony Invensys cited
`in its opening brief is not an isolated occurrence, but reflects Dr. Bose’s consistent failure to
`apply the correct claim construction.
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`Defendants’ efforts to distinguish the cases Invensys cited are similarly misplaced.
`Defendants appear to argue that the relevance of the opinion of an expert who relies on an
`incorrect claim construction somehow turns on the specific nature of the claim construction
`dispute. See Defs.’ Ltr. Br. (Bose) at 2, ECF No. 288-1. But an opinion based on an incorrect
`claim construction will not assist the jury regardless of the nature of the error or the disputed
`term. Such an opinion would merely sow confusion and could even invite the jury to improperly
`reject the Court’s claim construction.1
`
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`1 In addition, Defendants’ reading of the cases Invensys cites is simply wrong. Chicago
`Mercantile Exchange, Inc. v. Technology Research Group, LLC, 782 F. Supp. 2d 667 (N.D.
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`EAST\94017180.4
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`Case 6:12-cv-00799-JRG Document 311-1 Filed 02/20/15 Page 3 of 4 PageID #: 9785
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`**
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Two
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`II.
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`Defendants Offer No Explanation for Their Omission of Astrom from Their
`Preliminary Election of Prior Art References.
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`Defendants do not deny that they failed to comply with the Court’s Docket Control Order
`by omitting Astrom from their Preliminary Election of Asserted Prior Art or explain why they
`disregarded the Docket Control Order. This omission alone is enough to preclude Dr. Bose from
`relying on the Astrom reference. See STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d
`845, 851 (E.D. Tex. 2004). Excusing a party who cannot even offer a plausible explanation for
`failing to meet a deadline would encourage disregard of the Court’s orders, at best, and outright
`gamesmanship, at worst. See id. at 851-52.
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`Defendants also misrepresent the nature of the harm their untimely decision to rely on
`Astrom caused. The purpose of requiring the parties to make a preliminary and then a final
`election of asserted claims and prior art is to gradually focus the issues in the case to make
`discovery, motion practice, and trial more manageable. If a party can use its final election to
`reintroduce claims or references that it previously abandoned, then the preliminary elections
`would be nugatory and the goal of narrowing the issues in the case nullified. Invensys was
`entitled to rely on Defendants’ election of asserted prior art in making its own election of
`asserted claims and setting its litigation strategy. Defendants’ unexcused and belated change of
`direction prejudices Invensys and should not be countenanced.
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`Defendants’ reliance on the IPRs is even more disingenuous. There is no limit on the
`number of references a petitioner may assert in an IPR. Thus, allowing Defendants to use their
`IPR petitions as a substitute for the election of asserted references required by the Docket
`Control Order would also eviscerate the goal of narrowing the disputed issues in the case.
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`For the foregoing reasons, and the reasons set forth in Invensys’s opening letter brief,
`Invensys requests permission to file a motion to strike Dr. Bose’s report and exclude his
`testimony.
`
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`Ill. 2011), was not limited to the meaning of the indefinite article “a.” The parties also
`disagreed about the meaning of the term “principle market maker computer,” and the court
`concluded that the patentee’s expert had used the wrong construction, making his opinions
`irrelevant. See id. at 671-73. Likewise, in Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d
`1209, 1214, 1224 n.2 (Fed. Cir. 2006), the parties were disputing the meaning of the term
`“substantial helical flow.” Finally, Invensys cited Imperium (IP) Holdings, Inc. v. Apple, Inc.,
`No. 4:11-CV-163, 2013 WL 322053, at *4 (E.D. Tex. Jan. 28, 2013), simply to show that a
`motion to strike is a proper procedural vehicle for challenging an expert opinion that relies on
`an incorrect claim construction.
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`EAST\94017180.4
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`Case 6:12-cv-00799-JRG Document 311-1 Filed 02/20/15 Page 4 of 4 PageID #: 9786
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`**
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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\94017180.4