Case 6:12-cv-00799-JRG Document 65-1 Filed 08/19/13 Page 1 of 5 PageID #: 1735
`Case 6:12—cv—00799—JRG Document 65-1 Filed 08/19/13 Page 1 of 5 Page|D #: 1735
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 6:12-cv-00799-JRG Document 65-1 Filed 08/19/13 Page 2 of 5 PageID #: 1736
`ATTORNEYS AT LAW
`
`
`
`August 19, 2013
`
`777 EAST WISCONSIN AVENUE
`MILWAUKEE, WI 53202-5306
`414.271.2400 TEL
`414.297.4900 FAX
`foley.com
`
`CLIENT/MATTER NUMBER
`087886-0122
`
`
`The Honorable Leonard Davis
`U.S. District Court for the Eastern District of Texas
`200 W. Ferguson, Third Floor
`Tyler, TX 75702
`
`Invensys Systems, Inc. v. Emerson Electric Co. and Micro Motion, Inc.
`Civil Action No. 6:12-cv-00799-LED
`
`
`
`Re:
`
`
`Dear Judge Davis:
`
`
`Even if true, the arguments raised by Invensys in its August 9, 2013 letter, (Dkt. No. 61-1),
`do not provide a legal basis sufficient to support any patent infringement claim against Emerson.
`
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`• Emerson does not make, use, offer to sell, sell, repair, or import any product capable of
`infringing the asserted patents, and therefore cannot be found liable to Invensys.
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`
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`• Micro Motion’s use of the Emerson Process Management trademark and logo is not a
`sufficient basis to support a claim that Emerson infringes the patents-in-suit.
`
`• Emerson’s ownership of a Coriolis-related patent, U.S. Patent No. 6,606,917 (“the ’917
`patent”), that is irrelevant to this lawsuit is not a sufficient basis to support a claim that
`Emerson infringes the patents-in-suit either directly or indirectly.
`
`Invensys claims to have done a “thorough presuit investigation” prior to the filing of this
`lawsuit and has not found any credible evidence that Emerson made, used, offered for sale, sold,
`repaired, or imported any accused product. Discovery is not necessary, as there is no such evidence.
`As explained below, there can be no dispute of material fact: Emerson is not liable for the alleged
`infringement of its subsidiary.
`
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`I.
`
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`EMERSON DOES NOT MAKE, USE, OFFER TO SELL, SELL, REPAIR, OR
`IMPORT THE ACCUSED PRODUCTS
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`Invensys contends that Emerson is involved in the sale and repair of the accused Micro
`Motion products. However, these allegations are not supported by the facts, but instead rely upon an
`announcement from the website of Scallon Controls. There are several flaws in this argument. First,
`Scallon Controls neither repairs Coriolis flowmeters nor is authorized to repair Coriolis flowmeters.
`In addition, nothing in the announcement indicates that Scallon Controls has ever repaired one of the
`accused Micro Motion Coriolis flowmeters. Second, even if Scallon Controls had repaired an
`accused Micro Motion Coriolis flowmeter, it is not authorized to do so. Third, evidence will show
`that Scallon Controls is a separate corporation that is not directly or indirectly owned or controlled
`by Emerson. Fourth, nothing in Scallon Controls’s website indicates that “Instrument & Valve
`Services Repair Center,” whose correct corporate name is Instrument & Valve Services Company
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN DIEGO/DEL MAR
`SAN FRANCISCO
`SHANGHAI
`
`SILICON VALLEY
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`4818-6291-0741.1
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`

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`Case 6:12-cv-00799-JRG Document 65-1 Filed 08/19/13 Page 3 of 5 PageID #: 1737
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`FOLEY & L ARDN ER LLP
`August 19, 2013
`Page 2
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`(“IVS”), is related to Scallon Controls. IVS is part of Emerson Process Management and is a
`separate corporate entity from Scallon Controls and Emerson. Thus, Emerson cannot be held
`responsible for either IVS’s or Scallon Controls’s actions.
`
` A
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` single mention in a separate corporation’s webpage is the sole basis of Invensys’s claim
`that “Emerson has service centers.” From there, Invensys leaps to the conclusion that Emerson must
`therefore repair Micro Motion Coriolis flowmeters. There is no support for this theory. The
`webpage states “For over sixty years, Golden Triangle industrial plants have relied on Emerson
`products such as Fisher® control valves, Rosemount® transmitters, DeltaV™ digital automation
`systems, and Micro Motion® Coriolis flowmeters.” Nothing in the announcement supports a claim
`that Emerson makes, uses, offers for sale, sells, repairs, or imports Coriolis flowmeters. Additional
`discovery would not yield a different result.
`
`As Dr. Randall Ledford’s declaration will make clear, he is the Chief Technology Officer,
`and if Emerson had any involvement in the design, development, manufacturing, repair, and/or
`rebuilding of Micro Motion’s products, he would have been aware of it as a function of his role
`within Emerson. As the declaration of Andrew Dudiak, Vice President of Marketing for Micro
`Motion, will also make clear, Micro Motion controls all aspects of its Coriolis meter products;
`Emerson has no role in the design, development, or manufacture of them and does not control or
`direct sales or any importing of Micro Motion’s accused Coriolis flowmeters. Any deposition of
`either Dr. Ledford or Mr. Dudiak is unnecessary. These depositions would only confirm that
`Emerson lacks any participation in any relevant activities related to the accused Micro Motion
`products.
`
`Invensys argues that Emerson’s proposed evidence is not sufficient to withstand a motion for
`summary. However, Emerson does not have the burden of proof on the issue of infringement, and is
`here in the position of proving a negative. Despite this, Emerson’s evidence shows that Emerson
`does not make, use, offer to sell, sell, repair, or import the accused Micro Motion Coriolis
`flowmeters. Invensys has no evidence to the contrary.
`
`II.
`
`THE USE OF THE “EMERSON PROCESS MANAGEMENT” TRADEMARK AND
`LOGO DO NOT SUPPORT INVENSYS’S ARGUMENT THAT EMERSON
`INFRINGES THE PATENTS-IN-SUIT
`
`Invensys further objects to Emerson’s contemplated motion by arguing that Micro Motion’s
`use of the Emerson Process Management trademarked name and logo supports Invensys’s
`infringement theory against Emerson. (See Dkt. No. 61-1 at 3, bullets 2-4.) Three of the five points
`on which Invensys relies are actually one point, expressed in three ways. Invensys is wrong.
`
`Emerson Process Management (“EPM”) is a business platform of Emerson, and Micro
`Motion is one of the Emerson subsidiaries that operates under the EPM platform. EPM is not
`Emerson, and Emerson is not EPM. Evidence submitted in support of Emerson’s motion will show
`that Emerson and EPM are separate entities. Moreover, even if Emerson and EPM were the same
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`4818-6291-0741.1
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`Case 6:12-cv-00799-JRG Document 65-1 Filed 08/19/13 Page 4 of 5 PageID #: 1738
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`FOLEY & L ARDN ER LLP
`August 19, 2013
`Page 3
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`entities (and they are not), the mere use of the EPM name and logo by Micro Motion does not make
`Emerson liable for any alleged infringement by Micro Motion. See Ronald A. Katz Tech. Licensing,
`L.P. v. Verizon Commc’ns., Inc., No. 01-5627, 2002 U.S. Dist. LEXIS 24117, at *3-4 (E.D. Pa. Dec.
`18, 2002) (dismissing patent infringement claims as against the parent corporation on summary
`judgment even when advertising and other public statements did not delineate between the
`subsidiaries and the parent company). For example, in Mahurkar v. C.R. Bard, Inc., No. 01 C 8452,
`2003 U.S. Dist. LEXIS 2329 (N.D. Ill. Feb. 18, 2003), after noting that the subsidiary used the
`trademark and logo of the parent, and the parent required the subsidiary to clarify for customers that
`the subsidiary was part of the parent, the court determined that to prove infringement, the plaintiff
`was required to show that the parent itself infringed the patent. Id. at *14. The parent could not be
`found liable for the infringement of the subsidiary unless the corporate veil could be pierced. Id.
`Here, as explained in Emerson’s July 16, 2013 letter, (Dkt. No. 45-1), Emerson cannot be found
`liable for any alleged activities of Micro Motion.
`
`III. THE ASSIGNMENT TO EMERSON OF A PATENT RELATING TO CORIOLIS
`FLOWMETERS DOES NOT SHOW THAT EMERSON INFRINGES THE
`PATENTS-IN-SUIT
`
`In a further attempt to prop up its weak case against Emerson, Invensys argues that
`Emerson’s ownership of a single patent relating to Coriolis flowmeters, the ’917 patent, is a
`sufficient basis to withstand a motion for summary judgment of non-infringement. Simply because
`Emerson is the assignee of the ’917 patent, which is not asserted in this case, does not mean that
`Emerson must be aware of Invensys’s ’136 patent, and therefore induces infringement. Even if this
`assumption were somehow supported, induced infringement requires that the alleged infringer must
`act with knowledge that the acts it induces constitute patent infringement. Specific intent is needed
`by an alleged infringer to encourage another’s infringement, and the facts argued by Invensys are
`insufficient to make such a showing. No such intent is present here. See Veritas Operating Corp. v.
`Microsoft Corp., 562 F. Supp. 2d 1141, 1285 (W.D. Wash. 2008) (holding that where the patent-in-
`suit was cited in two patents assigned to Microsoft, such “knowledge” by Microsoft was not
`sufficient to formulate the intent required for inducement of infringement). Additionally, evidence
`will show that Micro Motion, and not Emerson, pays the maintenance fees for the ’917 patent,
`making it even less likely that anyone from Emerson ever looked at the ’136 patent.
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`IV. CONCLUSION
`
`
`
`There is no support for the allegations against Emerson, and they should be dismissed. The
`“thorough presuit investigation” undertaken by Invensys has turned up nothing that can be used to
`establish liability on the part of Emerson; Invensys’s allegations merely parrot those against Micro
`Motion. There is no need for discovery, as there is no evidence to find. The fact that Micro Motion
`uses the Emerson Process Management trademark and logo does not make Emerson liable for the
`sales of Micro Motion. The fact that one of the patents-in-suit was cited in a patent assigned to
`Emerson does not support a claim for inducement of infringement. Invensys filed this lawsuit
`without any evidence that Emerson could be liable, and it should be dismissed as against Emerson.
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`4818-6291-0741.1
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`Case 6:12-cv-00799-JRG Document 65-1 Filed 08/19/13 Page 5 of 5 PageID #: 1739
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` Very truly yours,
`
`
`
` /s/ Linda E.B. Hansen
`
`4818-6291-0741.1
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`FOLEY & L ARDN ER LLP
`August 19, 2013
`Page 4