Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 1 of 10 PageID #: 1669
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`JURY TRIAL DEMANDED
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`INVENSYS SYSTEMS, INC.,
`
`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
`
`and
`
`Defendants.
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`MICRO MOTION INC., USA,
`
`v.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Plaintiff, §
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`§§
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`§§
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`Counterclaim-Defendant.§
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`PLAINTIFF AND COUNTERCLAIM-DEFENDANT INVENSYS
`SYSTEMS, INC.’S ANSWER AND COUNTERCLAIMS TO
`DEFENDANT AND COUNTERCLAIM-PLAINTIFF
`MICRO MOTION INC.’S AMENDED COUNTERCLAIMS
`
`Plaintiff and Counterclaim-Defendant
`
`Invensys Systems,
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`Inc. (“Invensys”), hereby
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`answers the amended counterclaims of Defendant and Counterclaim-Plaintiff Micro Motion Inc.
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`(“Micro Motion”) as follows, and denies each of Micro Motion’s allegations except as set forth
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`below.
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`THE PARTIES
`
`1.
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`Invensys lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations in Paragraph 1, and such allegations are therefore denied.
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`2.
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`Invensys admits the allegations of Paragraph 2.
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`EAST\57210829.1
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`1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`C.A. No. 6:12-cv-00799-LED
`
`JURY TRIAL DEMANDED
`
`§§
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`§
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`§§
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`§
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`§§
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`§
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`§§
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`§§
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`INVENSYS SYSTEMS, INC.,
`
`v.
`
`Plaintiff,
`
`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
`
`and
`
`Defendants.
`
`MICRO MOTION INC., USA,
`
`v.
`
`INVENSYS SYSTEMS, INC.,
`
`Counterclaim-Plaintiff, §
`
`§§
`
`§§
`
`Counterclaim-Defendant.§
`
`PLAINTIFF AND COUNTERCLAIM-DEFENDANT INVENSYS
`SYSTEMS, INC.’S ANSWER AND COUNTERCLAIMS TO
`DEFENDANT AND COUNTERCLAIM-PLAINTIFF
`MICRO MOTION INC.’S AMENDED COUNTERCLAIMS
`
`Plaintiff and Counterclaim-Defendant
`
`Invensys Systems,
`
`Inc. (“Invensys”), hereby
`
`answers the amended counterclaims of Defendant and Counterclaim-Plaintiff Micro Motion Inc.
`
`(“Micro Motion”) as follows, and denies each of Micro Motion’s allegations except as set forth
`
`below.
`
`THE PARTIES
`
`1.
`
`Invensys lacks knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in Paragraph 1, and such allegations are therefore denied.
`
`2.
`
`Invensys admits the allegations of Paragraph 2.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 2 of 10 PageID #: 1670
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`JURISDICTION AND VENUE
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`3.
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`Invensys admits that this Court has subject matter jurisdiction over the instant
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`matter.
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`Invensys admits that an actual case and controversy exists with respect to Micro
`
`Motion’s Amended Counterclaims, Micro Motion’s Answer and Affirmative Defenses, and
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`Invensys’ First Amended Complaint.
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`Invensys denies that Micro Motion’s Amended
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`Counterclaims have merit and denies the remaining allegations of Paragraph 3.
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`4.
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`Invensys admits that it filed an Original Complaint and Amended Complaint for
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`infringement of United States Patent Nos. 7,124,646 (“the ‘646 Patent”), 7,136,761 (“the ‘761
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`Patent”), 6,311,136 (“the ‘136 Patent”), 7,505,854 (“the ‘854 Patent”), 6,754,594 (“the ‘594
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`Patent”), 7,571,062 (“the ‘062 Patent”), and 8,000,906 (“the ‘906 Patent”) (collectively, the
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`“Patents-in-Suit”) against Micro Motion. Invensys admits that jurisdiction and venue are proper
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`in this Court.
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`COUNT I
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`(Declaratory Judgment of Non-Infringement of the Invensys Patents-in-Suit)
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`5.
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`Invensys realleages and incorporates by reference its responses to the allegations
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`contained in Paragraphs 1 – 4 as if fully set forth herein.
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`6.
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`7.
`
`Invensys admits the allegations of Paragraph 6.
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`Invensys admits that Micro Motion denies infringement of the Patents-in-Suit, but
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`denies the merits of that denial.
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`8.
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`Invensys admits that Micro Motion filed a purported counterclaim for declaratory
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`judgment of non-infringement of the Patents-in-Suit.
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`Invensys denies that Micro Motion’s
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`counterclaim of non-infringement has merit and denies the remaining allegations of Paragraph 8.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 3 of 10 PageID #: 1671
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`9.
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`Invensys admits that Micro Motion filed a purported counterclaim for declaratory
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`judgment of non-infringement of the Patents-in-Suit.
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`Invensys denies that Micro Motion’s
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`counterclaim of non-infringement has merit and denies the remaining allegations of Paragraph 9.
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`COUNT II
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`(Declaratory Judgment of Invalidity of the Patents-in-Suit)
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`10.
`
`Invensys realleages and incorporates by reference its responses to the allegations
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`contained in Paragraphs 1 – 9 as if fully set forth herein.
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`11.
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`12.
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`Invensys admits that the claims of the Patents-in-Suit are valid.
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`Invensys admits that Micro Motion contends that the claims of the Patents-in-Suit
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`are invalid, but denies the merits of that contention.
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`13.
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`Invensys admits that Micro Motion filed a purported counterclaim for declaratory
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`judgment of invalidity of the Patents-in-Suit. Invensys denies that Micro Motion’s counterclaim
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`of invalidity has merit and denies the remaining allegations of Paragraph 13.
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`14.
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`Invensys admits that Micro Motion filed a purported counterclaim for declaratory
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`judgment of invalidity of the Patents-in-Suit. Invensys denies that Micro Motion’s counterclaim
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`of invalidity has merit and denies the remaining allegations of Paragraph 14.
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`COUNT III
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`(Infringement of U.S. Patent No. 5,555,190)
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`15.
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`Invensys realleages and incorporates by reference its responses to the allegations
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`contained in Paragraphs 1 – 4 as if fully set forth herein.
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`16.
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`Invensys admits that U.S. Patent No. 5,555,190 (“the ‘190 Patent”): (a) is entitled
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`“Method and Apparatus for Adaptive Line Enhancement
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`in Coriolis Mass Flow Meter
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`Measurement”; (b) lists an issue date of September 10, 1996; (c) lists Howard V. Derby, Tamal
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 4 of 10 PageID #: 1672
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`Bose, and Seeraman Rajan as the inventors; and (d) that Micro Motion, Inc. is identified as the
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`assignee.
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`Invensys admits that a copy of what appears to be the ‘190 Patent is attached as
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`Exhibit 1 to the Amended Counterclaims. Invensys lacks knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations in Paragraph 16, and such allegations are
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`therefore denied.
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`17.
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`18.
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`19.
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`20.
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`21.
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`Invensys denies the allegations of Paragraph 17.
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`Invensys denies the allegations of Paragraph 18.
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`Invensys denies the allegations of Paragraph 19.
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`Invensys denies the allegations of Paragraph 20.
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`Invensys denies the allegations of Paragraph 21.
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`COUNT IV
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`(Infringement of U.S. Patent No. 6,505,131)
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`22.
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`Invensys realleages and incorporates by reference its responses to the allegations
`
`contained in Paragraphs 1 – 4 as if fully set forth herein.
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`23.
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`Invensys admits that U.S. Patent No. 6,505,131 (“the ‘131 Patent”): (a) is entitled
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`“Multi-Rate Digital Signal Processor for Signals from Pick-Offs on a Vibrating Conduit”; (b)
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`lists an issue date of January 7, 2003; (c) lists Denis Henrot as the inventor; and (d) that Micro
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`Motion, Inc. is identified as the assignee. Invensys admits that a copy of what appears to be the
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`‘131 Patent is attached as Exhibit 2 to the Amended Counterclaims. Invensys lacks knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations in Paragraph
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`23, and such allegations are therefore denied.
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`24.
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`25.
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`Invensys denies the allegations of Paragraph 24.
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`Invensys denies the allegations of Paragraph 25.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 5 of 10 PageID #: 1673
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`26.
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`27.
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`28.
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`Invensys denies the allegations of Paragraph 26.
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`Invensys denies the allegations of Paragraph 27.
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`Invensys denies the allegations of Paragraph 28.
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`RESPONSE TO MICRO MOTION’S PRAYER FOR RELIEF
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`Although no response is required to Micro Motion’s Prayer for Relief, to the extent
`
`necessary, Invensys denies all allegations contained in Paragraphs 1 through 28 in the Amended
`
`Counterclaims, and further denies that relief should be granted to Micro Motion.
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`ADDITIONAL OTHER DEFENSES
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`In addition to the defenses described below, Invensys expressly reserves the right to
`
`allege additional defenses as they become known through the course of discovery.
`
`FIRST DEFENSE
`
`Micro Motion has failed to state a claim against Invensys upon which relief may be
`
`granted.
`
`SECOND DEFENSE
`
`Invensys does not and has not infringed any valid claim of U.S. Patent No. 5,555,190
`
`(“the ‘190 Patent”) and U.S. Patent No. 6,505,131 (“the ‘131 Patent”) (the ‘190 Patent and the
`
`‘131 Patent collectively referred to as “the Micro Motion Patents”)
`
`literally, directly,
`
`contributorily, by way of inducement, and/or under the doctrine of equivalents.
`
`THIRD DEFENSE
`
`The Micro Motion Patents are invalid for failure to comply with one or more provisions
`
`of Title 35 of the United States Code, including, but not limited to 35 U.S.C. §§ 101, 102, 103,
`
`and/or 112.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 6 of 10 PageID #: 1674
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`FOURTH DEFENSE
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`By reason of the proceedings in the U.S. Patent and Trademark Office during the
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`prosecution of the application which resulted in the issuance of the Micro Motion Patents, Micro
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`Motion is estopped from claiming infringement by Invensys of one or more claims of the Micro
`
`Motion Patents.
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`FIFTH DEFENSE
`
`Micro Motion’s claims are barred by the doctrines of laches, waiver, unclean hands,
`
`and/or equitable estoppel.
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`SIXTH DEFENSE
`
`Micro Motion’s claims for damages for patent infringement are limited by 35 U.S.C. §
`
`287 to those damages occurring only after notice of infringement, and by 35 U.S.C. § 286 to
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`those damages within six years from filing of the Amended Counterclaims.
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`SEVENTH DEFENSE
`
`Micro Motion is not entitled to an injunction because Micro Motion has an adequate
`
`remedy at law and no basis for the grant of equitable relief.
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`COUNTERCLAIMS
`
`Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Invensys Systems, Inc.
`
`(“Invensys”) hereby asserts the following Counterclaims against Micro Motion, Inc. (“Micro
`
`Motion”) and alleges as follows:
`
`NATURE AND BASIS OF ACTION
`
`These Counterclaims seek a declaration pursuant to the Federal Declaratory Judgment
`
`Act, 28 U.S.C. §§ 2201 and 2202, that Invensys does not infringe any valid, enforceable claim of
`
`the Micro Motion Patents and the Micro Motion Patents are invalid.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 7 of 10 PageID #: 1675
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`PARTIES, JURISDICTION, AND VENUE
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`1.
`
`Invensys Systems, Inc. is a Massachusetts corporation.
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`Invensys Systems, Inc.,
`
`through its operating division Invensys Operations Management, has a principal place of
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`business at 10900 Equity Drive, Houston, Texas 77041, and does business in and has facilities in
`
`this District, including an office in Plano.
`
`2.
`
`According to Paragraph 3 of Micro Motion’s Amended Counterclaims, Micro
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`Motion is a Colorado corporation having a principal place of business at 7070 Winchester Circle,
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`Boulder, Colorado 80301.
`
`3.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§ 1331 and 1338 because this case arises under the United States Patent Act, 35 U.S.C. § 1 et
`
`seq.
`
`4.
`
`This Court has personal jurisdiction over Micro Motion by virtue of the fact that
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`Micro Motion has submitted to the jurisdiction of this Court by the filing of the instant Amended
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`Counterclaims. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and
`
`1391(c).
`
`COUNT I
`
`(Declaratory Judgment of Non-Infringement of the Micro Motion Patents)
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`5.
`
`Invensys re-alleges and incorporates by reference, as if fully set forth herein, the
`
`allegations contained in the preceding Paragraphs 1 – 4.
`
`6.
`
`By virtue of Micro Motion’s filing of the Amended Complaint herein, an actual
`
`controversy exists between Invensys and Micro Motion with respect
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`to Invensys’ alleged
`
`infringement of the Micro Motion Patents.
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 8 of 10 PageID #: 1676
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`7.
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`Invensys is entitled to a judicial declaration that it has not and does not infringe
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`directly or indirectly, by inducement or by contribution, literally or under the doctrine of
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`equivalents, any valid, enforceable claims of the Micro Motion Patents.
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`COUNT II
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`(Declaratory Judgment of Invalidity of the Micro Motion Patents)
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`8.
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`Invensys re-alleges and incorporates by reference, as if fully set forth herein, the
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`allegations contained in the preceding Paragraphs 1 – 4.
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`9.
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`By virtue of Micro Motion’s filing of the Amended Counterclaims herein, an
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`actual controversy exists between Invensys and Micro Motion with respect to Invensys’ alleged
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`infringement of the Micro Motion Patents and the validity of the Micro Motion Patents.
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`10.
`
`The claims of the Micro Motion Patents are invalid for failure to satisfy one or
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`more conditions of patentability set forth in Title 35 of the United States Code, including, but not
`
`limited to, 35 U.S.C. §§ 101, 102, 103, and 112.
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`11. Micro Motion is entitled to a judicial declaration and order that the Micro Motion
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`Patents are invalid.
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`PRAYER FOR RELIEF
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`WHEREFORE, Invensys repeats its request for relief as set forth in its First Amended
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`Complaint and further requests judgment that:
`
`A.
`
`B.
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`Micro Motion takes nothing by its Amended Counterclaims;
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`Micro Motion’s Amended Counterclaims be dismissed in their entirety with
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`prejudice and judgment be entered for Invensys and against Micro Motion on
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`each and every count of the Amended Counterclaims;
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 9 of 10 PageID #: 1677
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`C.
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`The Court enter a judgment that (i) the Micro Motion Patents are invalid, and
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`(ii) Invensys does not infringe the Micro Motion Patents, directly or indirectly,
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`literally or under the doctrine of equivalents;
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`D.
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`The Court finds this to be an exceptional case pursuant to 35 U.S.C. § 285 and
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`awards Invensys its reasonable attorneys’ fees; and
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`E.
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`Invensys be granted such additional and alternative relief as this Court deems just
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`and proper.
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`DEMAND FOR A JURY TRIAL
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`Invensys hereby reiterates its demand for a trial by jury as to all issues so triable.
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`Date: August 9, 2013
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`Respectfully submitted,
`
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`
`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
`
`ATTORNEYS FOR PLAINTIFF INVENSYS
`SYSTEMS, INC.
`
`EAST\57210829.1
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`Case 6:12-cv-00799-JRG Document 60 Filed 08/09/13 Page 10 of 10 PageID #: 1678
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing document was filed electronically on August 9, 2013, pursuant
`to Local Rule CV-5(a) and has been served on all counsel who have consented to electronic
`service. Any other counsel of record will be served by first class U.S. mail on this same date.
`
`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`
`EAST\57210829.1
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`10
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