Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 1 of 6 PageID #: 1681
`Case 6:12—cv—00799—JRG Document 61-1 Filed 08/09/13 Page 1 of 6 Page|D #: 1681
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 2 of 6 PageID #: 1682
`
`DLA Piper LLP (US)
`1000 Louisiana, Suite 2800
`Houston, Texas 77002
`www.dlapiper.com
`
`Claudia Wilson Frost
`claudia.frost@dlapiper.com
`T 713.425.8450
`F 713.300.6050
`
`August 9, 2013
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Re:
`
`C.A. No. 6:12-cv-799-LED; Invensys Systems, Inc. v. Emerson Electric Co., et al.
`
`Dear Judge Davis:
`
`Plaintiff Invensys Systems, Inc. (“Invensys”) respectfully requests that the Court deny
`Emerson Electric Co.’s (“Emerson”) premature request for permission to file a motion for
`summary judgment of noninfringement (“Letter Brief”). The proposed motion lacks merit,
`particularly in light of the early stage of this case. Emerson admits that no discovery has yet
`taken place, but insists that Invensys accept its assertions of noninfringement at face value
`without any further investigation. Even setting aside the need for discovery, Emerson’s
`proposed motion presents a straightforward factual dispute inappropriate for disposition on
`summary judgment.
`
`I.
`
`Introduction
`
`Invensys filed its Amended Complaint in this case on January 31, 2013, and Emerson
`answered on February 19, 2013. Within the last two weeks, this Court approved Docket Control
`and Discovery Orders, and the parties served Initial Disclosures. No discovery has been
`produced beyond the parties’ P.R. 3-1 infringement contentions and P.R. 3-2 document
`productions. In accordance with the aforementioned orders, all other document production will
`commence on August 12, 2013 with substantial completion on November 8, 2013, and the
`parties will not make their P.R. 3-4 document production until September 3, 2013. Just today,
`Invensys served its first set of interrogatories and put Emerson and its wholly-owned subsidiary,
`Micro Motion Inc. (“Micro Motion”) on notice of the documents it believes are relevant to the
`claims and defenses in this case.
`
`II.
`
`Emerson’s Proposed Motion Is Premature in the Absence of Any Discovery.
`
`In light of the fact that no discovery has yet taken place with respect to Emerson’s direct
`or indirect infringement of Invensys’s patents, Emerson’s proposed motion is grossly premature.
`Courts in this District have denied permission to file summary judgment motions when discovery
`remains incomplete. See Order at 1, Wellogix Tech. Licensing LLC v. Automatic Data
`Processing, Inc., No. 6:11-cv-401-LED-JDL (E.D. Tex. Feb. 6, 2013), ECF No. 96 (denying
`
`

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`Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 3 of 6 PageID #: 1683
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`The Honorable Leonard Davis
`August 9, 2013
`Page Two
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`request to file summary judgment motion of non-infringement based on extraterritoriality until
`discovery “further illuminate[d] the issues presented”); Order at 2, Wall Cardiovascular Techs.,
`LLC v. Abbott Labs., No. 2:08-cv-289-TJW (E.D. Tex. Dec. 7, 2009), ECF No. 55 (denying
`request to file summary judgment of no joint infringement as premature until discovery was
`complete).
`Invensys performed a thorough presuit investigation and pled a plausible claim for
`patent infringement against Emerson.
`Indeed, Emerson has not challenged the sufficiency of
`Invensys’s pleadings under Rule 12.
`Invensys must now be afforded an opportunity to take
`discovery.
`
`If the court grants Emerson’s request for leave to file a summary judgment motion,
`Invensys will request time to complete additional discovery before responding, pursuant to Rule
`56(d). Rule 56(d) motions are “generally favored, and should be liberally granted.” Stearns
`Airport Equip. Co. v. FMC Corp., 170 F.3d 518, 534 (5th Cir. 1999). When a summary
`judgment motion rests on a highly factual inquiry and discovery is in its earliest stages, a Rule
`56(d) motion should be granted. See Moody v. Aqua Leisure Int’l, Civ. No. H-10-1961, 2012
`WL 1015955, at *2-4 (S.D. Tex. Mar. 22, 2012) (granting a Rule 56(d) motion because
`“additional discovery [was] necessary to test the [defendant’s] declarations”).1
`
`III.
`
`Emerson’s Proposed Motion Lacks Merit.
`
`A.
`
`Invensys’s presuit investigation and Emerson’s own admissions raise genuine
`issues of material fact as to Emerson’s infringement.
`
`Even without discovery, Emerson’s proposed summary judgment motion lacks merit.
`Invensys’s presuit investigation and the admissions present in Emerson’s own Letter Brief
`indicate that material facts relating to Emerson’s alleged infringement remain in genuine dispute.
`See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986) (genuine dispute exists when the
`evidence could lead a reasonable jury to find for the nonmoving party). While Emerson may
`
`1
`
`If required to do so in a Rule 56(d) motion, Invensys will respectfully request discovery of at least the following:
`1) purchase orders, contracts, and agreements for the accused products; 2) price lists, product catalogs, order
`forms, advertisements, and customer solicitations for the accused products; 3) any agreements between Emerson
`and its employees, independent contractors, or other agents that may pertain to sales of the accused products or
`repairs to the accused products undertaken for customers; 4) identification of the entity or entities who
`manufacture the accused products and any agreements between Emerson and those entities pertaining to the
`accused products; 5) identification of the entity or entities importing the accused products into the United States,
`if not manufactured here; and 6) documents beyond Emerson’s own patent filings (at least one of which cites to
`an asserted Invensys patent) evidencing Emerson’s knowledge of Invensys’s asserted patents and Defendants’
`infringing activities. Invensys also intends to seek a deposition of Emerson’s proposed declarant, Dr. Randall D.
`Ledford.
`
`

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`Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 4 of 6 PageID #: 1684
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`The Honorable Leonard Davis
`August 9, 2013
`Page Three
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`claim that it does not sell Coriolis flowmeters, Invensys has uncovered publicly available
`information (including materials from Emerson’s own website) indicating that Emerson is
`actively involved in the sale of the accused products and is liable as a direct or indirect infringer:
`
` Emerson has service centers (some in this district) that work on Micro Motion Coriolis
`See
`New
`I&VS
`Repair
`Center,
`available
`at
`flowmeters.
`Scallon,
`http://scalloncontrols.com/announcements/new-i-vs-repair-center; see also Aro Mfg. Co.
`v. Convertible Top Replacement Co., 377 U.S. 476, 484 (1964) (“Where use infringes,
`repair does also, for it perpetuates the infringing use.”).2
`
` Emerson admits that Micro Motion has included the trademarked name and logo of
`Emerson Process Management (a “business platform” of Emerson, Ltr. Br. at 1) on its
`marketing materials since 2000, indicating that Emerson is the source of these goods or at
`least actively involved in promoting their sale. Ltr. Br. at 3.
`
` Numerous press releases related to Micro Motion products, including ELITE Coriolis
`flowmeters, discuss “Emerson’s Micro Motion products” and describe Micro Motion as a
`“brand” of Emerson Process Management. Others speak in terms of Emerson Process
`Management’s “expansion,” “announcement,” or “upgrades” of Micro Motion products.
`All of these press releases also include a paragraph at the end describing both Emerson
`and Emerson Process Management.
`
` Numerous technical documents for Micro Motion products and several product
`information sheets are marked with both Emerson Process Management and Micro
`Motion logos. These documents reference the accused devices as “Emerson’s world-
`leading Micro Motion Coriolis flow and density measurement devices” and “Micro
`Motion transmitters and controllers from Emerson Process Management.” Other
`documents also state that the “Micro Motion and Emerson logos are trademarks and
`service marks of Emerson Electric Co.”
`
` Emerson is intimately familiar with the Coriolis flowmeter industry, as evidenced by its
`U.S. patent holdings in the area of Coriolis design and technology, including its U.S.
`
`2 Because neither Emerson nor Micro Motion claims to have a license from Invensys, the distinction between
`permissible repairs and infringing reconstruction has no bearing on this case. See id. at 480 (“The reconstruction-
`repair distinction is decisive, however, only when the replacement is made in a structure whose original
`manufacture and sale have been licensed by the patentee, as was true only of the General Motors cars; when the
`structure was unlicensed, as was true of the Ford cars, the traditional rule is that even repair constitutes
`infringement.”).
`
`

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`Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 5 of 6 PageID #: 1685
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`The Honorable Leonard Davis
`August 9, 2013
`Page Four
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`Patent No. 6,606,917, titled “High Purity Coriolis Mass Flow Controller,” which issued
`on August 19, 2003. Indeed, Emerson had knowledge of at least Invensys’s asserted U.S.
`Patent No. 6,311,136, because the ’136 patent is cited on the face of its own ’917 patent.
`Emerson’s knowledge of asserted Invensys patents supports Invensys’s claim that
`Emerson induced infringement by Micro Motion. See DSU Med. Corp. v. JMS Co., Ltd.,
`471 F.3d 1293, 1305-6 (Fed. Cir. 2006) (en banc) (inducement requires both knowledge
`of the patent and acts encouraging infringement).
`
`In view of these facts, Emerson’s alleged lack of involvement with the accused Coriolis
`meters is extremely dubious and far from clear-cut, making summary judgment at this stage
`improper.3 See Manchak v. Rollins Envt’l Servs., Inc., No. 96-37 (SLR), 1996 WL 790100, at *4
`(D. Del. Dec. 18, 1996) (denying as premature a prediscovery summary judgment motion
`claiming that the defendant was merely a holding company and did not engage in any infringing
`activity). Invensys is entitled to take discovery on its claims against Emerson.
`
`B.
`
`Emerson does not explain how it will satisfy Rule 56(c).
`
`“A party asserting that a fact cannot be . . . genuinely disputed must support the assertion
`by . . . citing to particular parts of materials in the record, including depositions, documents,
`electronically stored information, affidavits or declarations, stipulations (including those made
`for purposes of the motion only), admissions, interrogatory answers, or other materials.” See
`FED. R. CIV. P. 56(c). Emerson claims that it does not “make, use, import, offer to sell, or sell
`[the accused] Coriolis meters,” but fails to adequately describe the evidence supporting this
`assertion. Ltr. Br. at 3.
`
`The sole piece of evidence Emerson offers to submit in connection with its motion is a
`declaration from its Senior Vice President and Chief Technology Officer, Dr. Randall D.
`Ledford. Dr. Ledford would declare that “if there was involvement by Emerson in the design
`and development of Micro Motion’s products, he would have been aware of that involvement;
`however, he is unaware of any such activities.” Ltr. Br. at 2. Emerson’s proposed declaration is
`inadequate for a number of reasons. First, the proposed declaration does not indicate that Dr.
`Ledford has made or will make any inquiry or personal investigation to confirm the presence or
`
`3 Similarly, Emerson’s alleged lack of “control” over Micro Motion, see Ltr. Br. at 5,
`to a
`is irrelevant
`determination of indirect infringement. Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1308
`(Fed. Cir. 2012), petition for cert. filed, 81 U.S.L.W. 3438 (U.S. Feb. 1, 2013) (No. 12-960) (“[I]nducement does
`not require that the induced party be an agent of the inducer or be acting under the inducer’s direction or control
`to such an extent that the act of the induced party can be attributed to the inducer as a direct infringer.
`It is
`enough that the inducer causes, urges, encourages, or aids the infringing conduct”) (internal quotation marks
`omitted).
`
`

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`Case 6:12-cv-00799-JRG Document 61-1 Filed 08/09/13 Page 6 of 6 PageID #: 1686
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`The Honorable Leonard Davis
`August 9, 2013
`Page Five
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`absence of Emerson’s participation. Without this predicate, Dr. Ledford cannot affirmatively
`state that Emerson does not participate in the design and development of Micro Motion products.
`
`More fundamentally, Emerson only offers to attest to its lack of involvement in the
`“design and development” of the accused products. As Emerson is well aware, “design and
`development” accounts for only part of its allegedly infringing conduct. While this may be
`relevant to some (but not all) of Invensys’s allegations of indirect infringement, it completely
`ignores direct
`infringement—whether Emerson manufactures (or subsequently repairs or
`rebuilds), uses, sells, offers to sell, or imports the accused devices.
`
`IV.
`
`Veil-Piercing Is Unwarranted at This Stage.
`
`Emerson devotes two pages of its Letter Brief to the citation of irrelevant authority on
`corporate veil-piercing in patent cases. Ltr. Br. at 3-5. Neither Invensys’s Original Complaint
`nor its Amended Complaint contains allegations of vicarious liability or requests to pierce the
`corporate veil.
`Invensys never claims that Emerson is liable for patent infringement only
`“because of the activities of its subsidiary.” Id. at 3. Invensys’s claims are based on Emerson’s
`own acts of direct and indirect infringement, and Invensys is entitled to discovery on those
`claims.
`
`V.
`
`Conclusion
`
`In sum, Emerson offers little more than a conclusory allegation of noninfringement and a
`refusal to provide adequate substantiating evidence. If the parties agree or the Court so orders,
`Invensys would be willing to prioritize limited discovery concerning Emerson’s activities with
`respect to the accused products. At this time, however, Emerson’s request for permission to file
`a summary judgment motion should be denied.
`
`Respectfully submitted,
`
`DLA Piper LLP (US)
`
`/s/ Claudia Wilson Frost
`
`Claudia Wilson Frost
`
`EAST\57018155.2