Case 6:12-cv-00799-JRG Document 312-1 Filed 02/20/15 Page 1 of 5 PageID #: 9789
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`Case 6:12—cv—00799—JRG Document 312-1 Filed 02/20/15 Page 1 of 5 Page|D #: 9789Case 6:12—cv—00799—JRG Document 312-1 Filed 02/20/15 Page 1 of 5 Page|D #: 9789
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`EXHIBIT A
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`EXHIBIT AEXHIBIT A
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`Case 6:12-cv-00799-JRG Document 312-1 Filed 02/20/15 Page 2 of 5 PageID #: 9790
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`DLA Piper LLP (US)
`1000 Louisiana Street, Suite 2800
`Houston, Texas 77002-5005
`www.dlapiper.com
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`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
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`Re:
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`C.A. No. 6:12-cv-799-JRG; Invensys Systems, Inc. v. Emerson Electric Co., et al.
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`Dear Judge Gilstrap:
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`Defendants’ arguments are without merit. First, there appears to be no dispute regarding
`the prototypes. Second, dependent claim 13 of the ʼ062 Patent is valid for (at least) the reasons
`independent claim 1 is valid as set forth in Invensys’s letter briefs on claim 23. Third, contrary
`to Defendants’ position, Dr. Bose’s opinion that claim 24 of the ʼ136 Patent is invalid is
`premised on Defendants’ prototypes. Finally, Defendants’ enablement and lack of written
`description defenses are based largely on Defendants’ claim that the patents do not set forth the
`scientific principle on which they operate, which is simply not required by § 112.
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`I.
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`There Is No Reason to Delay Granting Summary Judgment on Defendants’ §§ 102
`and 103 Defenses That Are Based on the Prototypes.
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`Defendants have stated that they “will not rely on the Digital Prototypes as evidence of
`invalidity.” Defs.’ Ltr. Br. (Bose) at 1, ECF No. 288-1. Defendants also seem to tacitly admit
`that without the prototypes they cannot prove invalidity of claim 36 of the ʼ136 Patent, claims 1
`and 20 of the ʼ854 Patent, and claims 1, 4, and 8 of the ʼ594 Patent. Thus, summary judgment on
`Defendants’ §§ 102 and 103 defenses to those claims will be straightforward.
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`II.
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`Claim 13 of the ʼ062 Patent Is Not Anticipated or Obvious.
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`Claims 13 and 23 of the ʼ062 Patent both depend from independent claim 1. In its
`opening and reply briefs requesting permission to file a summary judgment motion of
`infringement and validity of claim 23 (and as now confirmed by the PTAB), Invensys explained
`that none of the prior art references Defendants cite disclose the last element of claim 1. For the
`same reasons, Defendants cannot prove that claim 13 is invalid. See Pl.’s Ltr. Br. (Claim 23) at
`5, ECF No. 266-1.
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`III. Claim 24 of the ʼ136 Patent Is Not Anticipated or Obvious.
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`In his report on claim 24 of the ʼ136 Patent, Dr. Bose relies exclusively on Defendants’
`prototypes for every element except the final limitation of the claim (i.e., a control and
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`Case 6:12-cv-00799-JRG Document 312-1 Filed 02/20/15 Page 3 of 5 PageID #: 9791
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Two
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`measurement system that accounts for aeration), which he asserts is also disclosed in Carpenter.
`Even then, Dr. Bose does not contend that Carpenter anticipates claim 24, but merely that it
`would have been obvious to combine Carpenter with the C32 prototype. See Bose Report ¶ 433.
`Thus, contrary to Defendants’ assertion, Dr. Bose does not provide an invalidity opinion on
`claim 24 that is independent of the prototypes. As discussed above, Defendants have conceded
`that Dr. Bose cannot use the prototypes as prior art references, which precludes Defendants’
`§§ 102 and 103 defenses to claim 24 of the ʼ136 Patent. See supra Part I.
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`IV. Defendants Cannot Support Their Enablement and Written Description Defenses.
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`A.
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`A Patentee Need Not Explain the Science Underlying the Invention.
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`Defendants do not argue that a skilled artisan would be unable to make the patented
`flowmeter, but that skilled artisans would not understand how the invention works. See Defs.’
`Ltr. Br. (Invalidity) at 3-4, ECF No. 288-1. This has no relevance to the validity of Invensys’s
`patents, however:
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`It is certainly not necessary that [the inventor] understand or be able to state the
`scientific principles underlying his invention . . . . He must, indeed, make such
`disclosure and description of his invention that it may be put into practice. . . .
`This satisfies the law, which only requires as a condition of its protection that the
`world be given something new and that the world be taught how to use it. It is no
`concern of the world whether the principle upon which the new construction acts
`be obvious or obscure . . . .
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`Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 435-36 (1911) (citations
`omitted); see also Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1190 (Fed. Cir. 2014)
`(“Nor is it a requirement of patentability that an inventor correctly set forth, or even know, how
`or why the invention works.” (quotations omitted)); Fromson v. Advance Offset Plate, Inc., 720
`F.2d 1565, 1570 (Fed. Cir. 1983) (“[I]t is axiomatic that an inventor need not comprehend the
`scientific principles on which the practical effectiveness of his inventions rests.”). Because
`Defendants’ enablement and written description defenses are premised on a misconception of
`necessary contents of the specification under § 112, Defendants cannot prevail on those defenses
`as a matter of law.
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`B.
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`Dr. Bose’s Opinions on Enablement Are Conclusory.
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`Dr. Bose never claims that a skilled artisan following the teachings in the specifications
`would be unable to make a functional flowmeter meeting the limitations of the asserted claims
`without undue experimentation. In fact, Dr. Bose does not mention the amount of
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`Case 6:12-cv-00799-JRG Document 312-1 Filed 02/20/15 Page 4 of 5 PageID #: 9792
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Three
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`experimentation required to practice the ʼ646 Patent at all. As to the ʼ761 Patent, he only offers a
`conclusory statement that undue experimentation would be necessary without discussing the
`amount of experimentation required. Such conclusory statements that ignore the enablement
`standard are insufficient to raise a fact issue. See Alcon Research, 745 F.3d at 1188-89; Streck,
`Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1290 (Fed. Cir. 2012).
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`C.
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`Defendants’ Written Description Argument Lacks Merit.
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`Contrary to Defendants’ assertion, the specifications expressly show that the patented
`digital drive flowmeter provided improved accuracy under two-phase flow conditions. See, e.g.,
`ʼ646 Pat. 51:38-11. Defendants cannot create a fact issue by misrepresenting the contents of the
`patents’ specifications. In addition, to the extent Dr. Bose opines that the patents’ claims are
`broader than the disclosures, he relies almost entirely on the alleged differences between the
`provisional application and the issued patents. But Defendants fail to cite any authority holding
`that a provisional application impacts the sufficiency of the specification in an issued patent.
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`V.
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`Defendants Have No Excuse for Their Discovery Misconduct.
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`Defendants do not dispute that Richard Maginnis, Defendants’ 30(b)(6) representative on
`the factual bases of Defendants’ affirmative defenses, was unprepared to testify on this subject.
`Instead, Defendants’ claim that Maginnis’s lack of preparation should be excused because they
`objected to this topic. But “[t]he only pre-deposition protest allowed by the Federal Rules of
`Civil Procedure is a motion for a protective order.” Ferko v. NASCAR, 218 F.R.D. 125, 144
`(E.D. Tex. 2003); see also RTC v. S. Union Co., 985 F.2d 196, 197 (5th Cir. 1993) (if a 30(b)(6)
`representative is not prepared to testify “then the appearance is, for all practical purposes, no
`appearance at all”).
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`Nor can Defendants rely on their interrogatory responses. “[R]esponding to written
`discovery is not a substitute for providing a thoroughly educated Rule 30(b)(6) deponent.” Great
`Am. Ins. Co. of N.Y. v. Vegas Constr. Co., 251 F.R.D. 534, 541 (D. Nev. 2008).
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`Finally, Defendants’ allegation that Invensys engaged in the same type of discovery
`misconduct is belied by their own briefing. Defendants argue that “Invensys did the very same
`thing in its deposition with respect to 30(b)(6) topics directed to the legal contentions of the
`parties.” Defs.’ Ltr. Br. (Invalidity) at 5, ECF No. 288-1 (emphasis added). Refusing to answer
`deposition questions related to legal issues is not the same as refusing to answer questions
`relating to the factual bases of a parties’ defenses.
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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 on Defendants’ affirmative defenses.
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`Case 6:12-cv-00799-JRG Document 312-1 Filed 02/20/15 Page 5 of 5 PageID #: 9793
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`The Honorable Rodney Gilstrap
`February 20, 2015
`Page Four
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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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