throbber
Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 1 of 24 PageID #: 1487
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`
`IN THE UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
`
`
`Case No. 12-CV-00799
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`
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`JURY TRIAL DEMANDED
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`
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`
`
`INVENSYS SYSTEMS, INC.,
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`
`
`Plaintiff,
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`
`
`
`
`
`
`vs.
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`
`
`
`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`
`
`
`
`
`
`Defendants,
`
`and
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`MICRO MOTION INC., USA,
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`
`
`Counterclaim-Plaintiff,
`
`vs.
`
`
`
`
`
`
`INVENSYS SYSTEMS, INC.,
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`
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`
`
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`Counterclaim-Defendant.
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`
`
`
`
`
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`MICRO MOTION, INC.’S ANSWER, AFFIRMATIVE DEFENSES,
`AND AMENDED COUNTERCLAIMS
`
`Defendant Micro Motion, Inc. (“Micro Motion”)1 hereby responds to Plaintiff’s
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`
`
`
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`First Amended Complaint (“the Complaint”) as follows:
`
`PARTIES
`
`1.
`
`Micro Motion lacks knowledge or information sufficient to form a belief about
`
`the truth of the allegations in this Paragraph and therefore denies them.
`
`
`1 Invensys Systems, Inc. (“Invensys”) incorrectly identified Micro Motion Inc., USA as a
`Defendant in this action in the Original Complaint. The correct name is Micro Motion, Inc.
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`4832-2902-7348.1
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 2 of 24 PageID #: 1488
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`2.
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`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion.
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`3.
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`Micro Motion denies that its name is “Micro Motion Inc., USA” and affirmatively
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`states that its correct name is “Micro Motion, Inc.” Micro Motion admits that it is a Colorado
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`corporation with its principal place of business being at 7070 Winchester Circle, Boulder,
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`Colorado 80301, and that it is an indirect wholly-owned subsidiary of Emerson Electric Co.
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`(“Emerson”). Micro Motion also admits that certain of its products are sold, offered for sale, and
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`used in this District. Micro Motion otherwise denies the remaining allegations in this Paragraph.
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`JURISDICTION
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`4.
`
`Micro Motion admits that Invensys purports to bring this action under Title 35 of
`
`the United States Code.
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`5.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`6.
`
`Micro Motion admits that it conducts business in Texas and that this Court has
`
`personal jurisdiction over Micro Motion. Micro Motion otherwise denies the remaining
`
`allegations in this Paragraph.
`
`VENUE
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`7.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. Micro Motion admits that because it is subject
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`to this Court’s personal jurisdiction and therefore is deemed to reside in this District, venue is
`
`proper; however, Micro Motion affirmatively states that for the reasons set forth in Micro
`
`Motion’s previously filed motion to transfer pursuant to 28 U.S.C. §1404(a), this Court should
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`4832-2902-7348.1
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`2
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 3 of 24 PageID #: 1489
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`transfer venue to the District of Colorado. Micro Motion denies the remaining allegations in this
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`Paragraph.
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`BACKGROUND
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`8.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. Micro Motion admits that some digital Coriolis
`
`flowmeters provide precise measurements of the mass flow rate of liquids and that some digital
`
`Coriolis flowmeters are used in a variety of industries, including oil and gas, chemical, and food
`
`and beverage. Micro Motion lacks knowledge or information sufficient to form a belief about
`
`the truth of the remaining allegations in this Paragraph and therefore denies them.
`
`9.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks knowledge or information sufficient to form a belief about the truth of the
`
`allegations in this Paragraph and therefore denies them.
`
`10. Micro Motion admits that it is an indirect wholly-owned subsidiary of Emerson.
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`Micro Motion also admits that in or around 2006, it released certain Coriolis flowmeters having a
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`Micro Motion enhanced core processor. Micro Motion otherwise denies the remaining
`
`allegations in this Paragraph.
`
`11.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. Micro Motion denies that it has facilities in this
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`District. Micro Motion lacks knowledge or information sufficient to form a belief about the truth
`
`of the remaining allegations in this Paragraph and therefore denies them.
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`4832-2902-7348.1
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`3
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 4 of 24 PageID #: 1490
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`
`FIRST CLAIM
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`(Alleged Patent Infringement of the ’646 Patent)
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`12. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-11 of the Complaint.
`
`13. Micro Motion admits U.S. Patent No. 7,124,646 (“the ’646 patent”) states on its
`
`face that: (a) its title is “Correcting for Two-Phase Flow in a Digital Flowmeter”; (b) it issued on
`
`October 24, 2006; (c) the named inventors are Manus P. Henry and Maria Jesus De La Fuente;
`
`and (d) Invensys is the assignee. Micro Motion also admits that a copy of what purports to be
`
`the ’646 patent is attached to the Complaint as Exhibit A. Micro Motion denies that the ’646
`
`patent was duly and legally issued. As for the remaining allegations, Micro Motion lacks
`
`knowledge or information sufficient to form a belief as to their truth and therefore denies them.
`
`14.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`15.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`16.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations
`
`4832-2902-7348.1
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`4
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 5 of 24 PageID #: 1491
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`regarding “at least one Information Disclosure Statement[]” in this Paragraph and therefore
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`denies them. Further, Micro Motion denies the remaining allegations in this Paragraph.
`
`17.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`SECOND CLAIM
`
`(Alleged Patent Infringement of the ’761 Patent)
`
`18. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-17 of the Complaint.
`
`19. Micro Motion admits U.S. Patent No. 7,136,761 (“the ’761 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on November 14, 2006; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’761 patent is
`
`attached to the Complaint as Exhibit B. Micro Motion denies that the ’761 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
`
`20.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
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`4832-2902-7348.1
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`5
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 6 of 24 PageID #: 1492
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`21.
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`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`22.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations
`
`regarding “at least one IDS” in this Paragraph and therefore denies them. Further, Micro Motion
`
`denies the remaining allegations in this Paragraph.
`
`23.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`THIRD CLAIM
`
`(Alleged Patent Infringement of the ’136 Patent)
`
`24. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-23 of the Complaint.
`
`25. Micro Motion admits U.S. Patent No. 6,311,136 (“the ’136 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on October 30, 2001; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’136 patent is
`
`attached to the Complaint as Exhibit C. Micro Motion denies that the ’136 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
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`4832-2902-7348.1
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`6
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 7 of 24 PageID #: 1493
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`26.
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`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`27.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`28.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits: (a) U.S. Patent No. 8,063,694 (“the ’694 patent”) states on its face that Micro
`
`Motion is the assignee and the ’136 patent appears among twelve references under the
`
`References Cited section; (b) U.S. Patent No. 7,974,792 (“the ’792 patent”) states on its face that
`
`Micro Motion is the assignee and the ’136 patent appears among eighteen references under the
`
`References Cited section; (c) U.S. Patent No. 7,293,470 (“the ’470 patent”) states on its face that
`
`Micro Motion is the assignee and the ’136 patent appears among twelve references under the
`
`References Cited section; and (d) U.S. Patent No. 6,487,507 (“the ’507 patent”) states on its face
`
`that Micro Motion is the assignee and the ’136 patent appears among twenty-one references
`
`under the References Cited section. Micro Motion denies the remaining allegations in this
`
`Paragraph.
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`4832-2902-7348.1
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`7
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 8 of 24 PageID #: 1494
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`29.
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`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`30. Micro Motion admits that the ’136 patent and U.S. Patent Application No.
`
`2003/0154804 appear among ten references listed in an IDS for the ’470 patent bearing a March
`
`8, 2006 date stamp by the Patent & Trademark Office, and an assignment of the ’470 patent to
`
`Micro Motion was recorded on March 8, 2006. Micro Motion denies the remaining allegations
`
`in this Paragraph.
`
`31. Micro Motion admits that the ’136 patent appears among seven references listed
`
`in the September 11, 2007 IDS for the ’792 patent, and an assignment of the ’792 patent to Micro
`
`Motion was recorded on September 11, 2007. Micro Motion denies the remaining allegations in
`
`this Paragraph.
`
`32. Micro Motion admits that the ’136 patent appears among eight references listed in
`
`the October 15, 2008 IDS for the ’694 patent, and an assignment of the ’694 patent to Micro
`
`Motion was recorded on October 15, 2008. Micro Motion denies the remaining allegations in
`
`this Paragraph.
`
`33.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
`
`this Paragraph and therefore denies them.
`
`34.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
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`4832-2902-7348.1
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`8
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 9 of 24 PageID #: 1495
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`35.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`FOURTH CLAIM
`
`(Alleged Patent Infringement of the ’854 Patent)
`
`36. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-35 of the Complaint.
`
`37. Micro Motion admits U.S. Patent No. 7,505,854 (“the ’854 patent”) states on its
`
`face that: (a) its title is “Startup Techniques for a Digital Flowmeter”; (b) it issued on March 17,
`
`2009; (c) the named inventors are Manus P. Henry and Mayela E. Zamora; and (d) Invensys is
`
`the assignee. Micro Motion also admits that a copy of what purports to be the ’854 patent is
`
`attached to the Complaint as Exhibit D. Micro Motion denies that the ’854 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
`
`38.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`39.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`4832-2902-7348.1
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`9
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 10 of 24 PageID #: 1496
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`40.
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` No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations
`
`regarding “one or more patent applications assigned to Micro Motion” in this Paragraph and
`
`therefore denies them. Further, Micro Motion denies the remaining allegations in this Paragraph.
`
`41.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`FIFTH CLAIM
`
`(Alleged Patent Infringement of the ’594 Patent)
`
`42. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-41 of the Complaint.
`
`43. Micro Motion admits U.S. Patent No. 6,754,594 (“the ’594 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on June 22, 2004; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’594 patent is
`
`attached to the Complaint as Exhibit E. Micro Motion denies that the ’594 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
`
`44.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`4832-2902-7348.1
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`10
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 11 of 24 PageID #: 1497
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
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`remaining allegations in this Paragraph.
`
`45.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`46.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations
`
`regarding “at least one IDS” in this Paragraph and therefore denies them. Further, Micro Motion
`
`denies the remaining allegations in this Paragraph.
`
`47.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`SIXTH CLAIM
`
`(Alleged Patent Infringement of the ’062 Patent)
`
`48. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-47 of the Complaint.
`
`49. Micro Motion admits U.S. Patent No. 7,571,062 (“the ’062 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on August 4, 2009; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’062 patent is
`
`attached to the Complaint as Exhibit F. Micro Motion denies that the ’062 patent was duly and
`
`4832-2902-7348.1
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`11
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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 12 of 24 PageID #: 1498
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`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
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`sufficient to form a belief as to their truth and therefore denies them.
`
`50.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`51.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`52.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits: (a) U.S. Patent No. 8,289,179 (“the ’179 patent”) states on its face that Micro
`
`Motion is the assignee and the ’062 patent appears among sixteen references under the
`
`References Cited section; (b) an assignment of the ’179 patent to Micro Motion was recorded on
`
`November 4, 2009; and (c) a Notice of Allowability with a June 22, 2012 mail date and a Notice
`
`of References Cited with a mail room date of June 22, 2012 posted on the Patent and Trademark
`
`Office database reference U.S. Patent Nos. 7,571,062; 6,917,887; 7,404,336; and 8,000,906.
`
`Micro Motion denies the remaining allegations in this Paragraph.
`
`53.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`4832-2902-7348.1
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`12
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 13 of 24 PageID #: 1499
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`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
`
`this Paragraph and therefore denies them.
`
`54.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`55.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`SEVENTH CLAIM
`
`(Alleged Patent Infringement of the ’906 Patent)
`
`56. Micro Motion repeats and incorporates herein by reference its responses to
`
`Paragraphs 1-55 of the Complaint.
`
`57. Micro Motion admits U.S. Patent No. 8,000,906 (“the ’906 patent”) states on its
`
`face that: (a) its title is “Digital Flowmeter”; (b) it issued on August 16, 2011; (c) the named
`
`inventors are Manus P. Henry, David W. Clarke, and James H. Vignos; and (d) Invensys is the
`
`assignee. Micro Motion also admits that a copy of what purports to be the ’906 patent is
`
`attached to the Complaint as Exhibit G. Micro Motion denies that the ’906 patent was duly and
`
`legally issued. As for the remaining allegations, Micro Motion lacks knowledge or information
`
`sufficient to form a belief as to their truth and therefore denies them.
`
`58.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion admits that Micro Motion makes, offers for sale, and sells, within the territorial
`
`boundaries of the United States, Coriolis meters containing a Micro Motion transmitter with a
`
`4832-2902-7348.1
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`13
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`

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`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 14 of 24 PageID #: 1500
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`Micro Motion enhanced core processor, and the components thereof. Micro Motion denies the
`
`remaining allegations in this Paragraph.
`
`59.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`60.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. Micro Motion admits: (a) the ’179 patent
`
`states on its face that Micro Motion is the assignee and the ’906 patent appears among sixteen
`
`references under the References Cited section; (b) an assignment of the ’179 patent to Micro
`
`Motion was recorded on November 4, 2009; and (c) a Notice of Allowability with a June 22,
`
`2012 mail date and a Notice of References Cited with a mail room date of June 22, 2012 posted
`
`on the Patent and Trademark Office database reference U.S. Patent Nos. 7,571,062, 6,917,887,
`
`7,404,336, and 8,000,906. Micro Motion denies the remaining allegations in this Paragraph.
`
`61.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion lacks sufficient information to form a belief about the truth of the vague allegations in
`
`this Paragraph and therefore denies them.
`
`62.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`63.
`
`No response is required from Micro Motion to the extent that the allegations in
`
`this Paragraph are not directed to Micro Motion. To the extent that a response is required, Micro
`
`Motion denies the allegations in this Paragraph.
`
`4832-2902-7348.1
`
`14
`
`

`
`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 15 of 24 PageID #: 1501
`
`
`DEMAND FOR A JURY TRIAL
`
`64.
`
`The allegations in this Paragraph do not call for a response from Micro Motion.
`
`However, as indicated below, Micro Motion desires a trial by jury on all issues so triable and
`
`respectfully requests the same.
`
`AFFIRMATIVE DEFENSES
`
`65. Micro Motion has not infringed, contributed to the infringement of, or induced the
`
`infringement of any valid and enforceable claim of the ’646, ’761, ’136, ’854, ’594, ’062, and
`
`’906 patents (collectively, “the Invensys patents-in-suit”) either literally or under the doctrine of
`
`equivalents.
`
`66.
`
`The claims of the Invensys patents-in-suit are invalid for failing to comply with
`
`one or more of the statutory requirements set forth in Title 35 of the United States Code,
`
`including at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`67.
`
`68.
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`Invensys’s claims for damages, if any, against Micro Motion are statutorily
`
`limited by 35 U.S.C. §§ 286, 287, and/or 288.
`
`69.
`
`Invensys’s claims are barred from relief under the applicable statute of
`
`limitations.
`
`70. Micro Motion believes that after a reasonable opportunity for further investigation
`
`and discovery, the evidence will show that Invensys’s claims are barred, in whole or in part,
`
`under principles of equity, including without limitation, prosecution laches, laches, waiver,
`
`and/or estoppel.
`
`71.
`
`Invensys is not entitled to injunctive relief because any alleged injury is not
`
`immediate or irreparable, and/or because Invensys has an adequate remedy at law.
`
`4832-2902-7348.1
`
`15
`
`

`
`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 16 of 24 PageID #: 1502
`
`
`72.
`
`By virtue of statements made, amendments made, or positions taken during the
`
`prosecution of the applications for the Invensys patents-in-suit and/or any related patents or
`
`patent applications, Invensys is estopped from construing any claim of the Invensys patents-in-
`
`suit to cover or include, either literally or under the doctrine of equivalents, any of Micro
`
`Motion’s products, systems, or processes.
`
`73. Micro Motion reserves all defenses under the Federal Rules of Civil Procedure,
`
`the Patent Laws of the United States, and any other defenses, at law or in equity, that may now
`
`exist or in the future be available based on discovery and further factual investigation in this
`
`case.
`
`AMENDED COUNTERCLAIMS
`
`
`
`Micro Motion, Inc. (“Micro Motion”) asserts
`
`the following Amended
`
`Counterclaims against Invensys Systems, Inc. (“Invensys”) and alleges as follows:
`
`PARTIES
`
`1.
`
`Micro Motion is a Colorado corporation having a principal place of business at
`
`7070 Winchester Circle, Boulder, Colorado 80301.
`
`2.
`
`Upon information and belief, Invensys is a Massachusetts corporation having a
`
`principal place of business at 10900 Equity Drive, Houston, Texas 77041.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action arises under Title 35 of the United States Code. This Court, therefore,
`
`has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`
`In addition, as shown by Invensys’s First Amended Complaint (“the Complaint”), Micro
`
`Motion’s Answer and Affirmative Defenses, and the Amended Counterclaims raised by Micro
`
`Motion herein, this action presents an actual justiciable controversy with respect to the alleged
`
`4832-2902-7348.1
`
`16
`
`

`
`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 17 of 24 PageID #: 1503
`
`
`infringement and validity of U.S. Patent Nos. 7,124,646; 7,136,761; 6,311,136; 7,505,854;
`
`6,754,594; 7,571,062; and 8,000,906 (collectively, “the Invensys patents-in-suit”).
`
`4.
`
`Invensys has subjected itself to the personal jurisdiction of this Court for purposes
`
`of the Counterclaims against it, and by way of the Original Complaint and the First Amended
`
`Complaint, has asserted that venue is proper in this District.
`
`COUNT I
`
`(Declaratory Judgment of Non-Infringement of the Invensys Patents-in-Suit)
`
`5.
`
`Micro Motion realleges and incorporates by reference, as if fully set forth herein,
`
`the allegations contained in preceding Paragraphs 1-4.
`
`6.
`
`Invensys, as the purported sole holder of the entire right, title, and interest in the
`
`Invensys patents-in-suit, has sued Micro Motion in the present action, alleging infringement of
`
`one or more claims of the Invensys patents-in-suit.
`
`7.
`
`Micro Motion denies that it has infringed, contributed to the infringement of, or
`
`induced the infringement of any valid and enforceable claim of the Invensys patents-in-suit
`
`either literally or under the doctrine of equivalents.
`
`8.
`
`There exists, therefore, an actual justiciable controversy between Micro Motion
`
`and Invensys with respect to the non-infringement of any valid and enforceable claim of the
`
`Invensys patents-in-suit.
`
`9.
`
`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201
`
`et seq., Micro Motion seeks a declaratory judgment that it has not infringed, contributed to the
`
`infringement of, or induced the infringement of any valid and enforceable claim of the Invensys
`
`patents-in-suit either literally or under the doctrine of equivalents.
`
`4832-2902-7348.1
`
`17
`
`

`
`Case 6:12-cv-00799-JRG Document 44 Filed 07/15/13 Page 18 of 24 PageID #: 1504
`
`
`COUNT II
`
`(Declaratory Judgment of Invalidity of the Invensys Patents-in-Suit)
`
`10. Micro Motion realleges and incorporates by reference, as if fully set forth herein,
`
`the allegations contained in preceding Paragraphs 1-9 of these Counterclaims.
`
`11.
`
`Upon information and belief, Invensys alleges that each and every claim of the
`
`Invensys patents-in-suit is valid.
`
`12. Micro Motion asserts that each and every claim of the Invensys patents-in-suit is
`
`invalid for failing to comply with one or more of the statutory requirements of patentability set
`
`forth in at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`13.
`
`There exists, therefore, an actual justiciable controversy between Micro Motion
`
`and Invensys with respect to the invalidity of each and every claim of the Invensys patents-in-
`
`suit.
`
`14.
`
`Therefore, pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201
`
`et se

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